D&M addresses a wide range of business-related law for its clients, including intellectual property and technology-related issues. In intellectual property and technology law, one area in which we specialize is patent law. D&M’s involvement in the area of patents covers the full legal spectrum, from prosecuting patent applications through representation of clients in patent related litigation. We have experience in counseling regarding conducting patent searches and studies, the rendering of opinions relating to patentability, patent validity, and patent infringement, the preparing, filing and prosecuting of patent applications before the U.S. Patent and Trademark Office (PTO) and foreign jurisdictions, as well as representing clients in other patent-related matters in the PTO and in foreign jurisdictions.
At this time, we would like to provide a brief introduction to some of the concepts of patent law.
A patent search may be performed before an application is drafted. The reason for a search is that the results may indicate that patent protection is precluded or is not economically justified. In addition, if it is determined that a patent application is to be filed, the results of a patent search can prove useful in drafting the application, particularly in tailoring the description of the invention to define it over the prior art. The search results may also provide a reasonably accurate assessment of how broadly the claims of the patent application can be drafted.
Typically, a patentability search is conducted at the PTO. A brief description of the invention and any pertinent drawings are forwarded to our searcher in Washington, D.C. so that he or she may conduct a search of the PTO's files. Since the patents are classified by subject matter, our searcher will focus on particular areas where it is believed the invention may be located. Copies of the most pertinent prior art identified in the patentability search are forwarded to you.
Please note that a search results in only the production of relevant prior art patents. Also note that it is not necessary by law to undertake a patent search. However, if one is performed, an inventor is under a duty to provide the PTO with any relevant prior art that is located, in addition to art of which he or she is already aware, including sources other than patents, such as articles and other publications.
U.S. Patent Rights
An invention that has been described in a printed publication, publicly used, or offered for sale in this country for more than one year is typically precluded from patent protection. These are bars that are imposed under U.S. patent laws and preclude patent protection to an inventor if an invention has already been disclosed to the public or commercialized.
Once a patent application is filed, only minimal rights exist during pendency of the application. Because you will have minimal substantive rights, please treat your invention as confidential. Whether or not you have filed an application, it may be prudent to ask companies to which you submit your idea to first sign a confidential disclosure agreement that states that the company will hold the idea in confidence and will not use or disclose the idea to any third party without your prior express written consent. Any decision to do business with a company that will not sign a disclosure agreement is ultimately yours, but you can take steps to preserve the confidentiality of your invention by clearly marking any drawings or papers that you give to a company as confidential and asking for their return once the company reviews them. In addition, you may want to consider documenting all of your communications with such companies in detail.
The Patent Application
1. Provisional Application
A provisional patent application allows an inventor to obtain a filing date at the PTO, typically in a more expedient and economical fashion than filing a non-provisional application. It includes a written description of the invention, including what has been done in the past, and how the invention is new, different and improves upon known devices. The description must be sufficiently detailed to enable one skilled in the art to understand, make, and use the invention without undue experimentation after reading the description. The description is submitted along with drawings or sketches of the new development.
Filing the provisional application permits one to mark the invention as “patent pending” and further permits the inventor to solicit interest from others in the invention, without forfeiting the right to obtain a patent as described above. Please keep in mind, however, that the provisional application is temporary, lasting only one year from the date of filing. It will not issue into a patent. Before the year ends, the inventor must file a non-provisional application to gain the benefit of the priority date established by the filing of the provisional application. The filing of the provisional application will not shorten the length of the 20-year patent term, which begins only when the non-provisional application is filed. Thus, by filing a provisional application, an inventor may establish a priority date without starting the patent term to run, provided a non-provisional application is filed within a year. It also allows the inventor(s) to continue to develop the invention for up to a year in anticipation of filing a non-provisional application.
2. Non-provisional Application
A non-provisional application is the application that is examined by the PTO for patentability and may be filed initially or within one year after the filing of a provisional application. The non-provisional application has the same requirements as the provisional application and further requires claims, which are the legal limits of the invention. The claims attempt to cover the invention in words by focusing on new, useful, and nonobvious differences relative to prior art structures. If the non-provisional application is filed after a provisional application, much of the disclosure of the provisional application can often be merged into the non-provisional application.
Once the non-provisional application has been placed on file, it may take up to a year or more before an Examiner reviews the application, conducts a search of the prior art, and prepares an Office Action outlining what he or she determines to be patentable or unpatentable. The Examiner compares what is claimed in the application relative to what is shown in the prior art. If a single patent teaches all of the elements as claimed, the Examiner may reject the claims on the basis that the patent anticipates the claims. Alternatively, the Examiner may reject the claims of the application if the differences between the prior art and the claimed invention, based upon one patent or a combination of patents, would have been obvious to one skilled in the art.
An applicant has an opportunity to respond to the Office Action with arguments and/or amendments to the claims. This process can continue one or two more times until the claims have been finally rejected or allowed. If allowed, the issue fee is paid and the application proceeds to issuance. If the claims are finally rejected, an appeal may be filed, a continuation application may be filed in an effort to convince the Examiner of the patentability of the invention, or the application can be abandoned.
In order to preserve patent rights in many foreign countries, an application must be placed on file in the U.S. before the claimed invention is publicly disseminated. Then by treaty, foreign applications must be filed within one year from the U.S. filing date in order to be accorded the benefit of the U.S. filing date. Due to differences between U.S. patent law and the patent laws of other countries, if the invention was publicly disclosed prior to the U.S. filing date, foreign filing rights are oftentimes forfeited. Thus, if foreign filing is contemplated, it is prudent to file a U.S. application (provisional or non-provisional) before the invention is commercialized.
A decision to file in any foreign countries should be made within a few months of your U.S. filing date in order to have sufficient lead time to contact our foreign associates and obtain the benefit of your U.S. filing date.
The Decision to Apply for a Patent
The patent process, from the date of filing to the date of issuance or abandonment, typically ranges anywhere from 1½ to 3 years and often involves a significant expense. Thus, the decision to apply or not apply for a patent is important. In any event, it is your decision to make. While there is considerable time and expense involved in attempting to obtain a patent, there are some distinct advantages should you obtain one. You would have the right to exclude others from making, using or selling your invention after the issuance of the patent, which are the specific rights conferred by patent law. However, these rights must be tempered by the realization that they apply only to the apparatus you have claimed or its legal equivalent, not simply a similar apparatus.