PATENTS AND PATENT ATTORNEY

A patent is one of the most important government issued documents you can receive to protect an invention and its used in commerce.  The United States Constitution gives Congress the power to enact laws relating to patents, in Article I, section 8, which reads, “Congress shall have power . . . to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.” Under this power Congress has from time to time enacted various laws relating to patents.  The patent laws specify the subject matter for which a patent may be obtained and the conditions for patentability. The law establishes the United States Patent and Trademark Office (“USPTO”) to administer the law relating to the granting of patents and contains various other provisions relating to patents.

A patent for an invention is the grant of a property right to the inventor, issued by the United States Patent and Trademark Office. Generally, the term of a new patent is twenty years from the date on which the application for the patent was filed in the United States or, in special cases, from the date an earlier related application was filed, subject to the payment of maintenance fees. U.S. patent grants are effective only within the United States, U.S. territories, and U.S. possessions. Under certain circumstances, patent term extensions or adjustments may be available.  An attorney who prosecutes, drafts, or enforces patents is referred to as a patent lawyer, patent attorney, or registered patent attorney or lawyer.

The right conferred by the patent grant is, in the language of the statute and of the grant itself, “the right to exclude others from making, using, offering for sale, or selling” the invention in the United States or “importing” the invention into the United States. To be clear, a patent does NOT grant any rights to make, use, offer for sale, sell or import, but the right to exclude others from making, using, offering for sale, selling or importing the invention. Once a patent is issued, the patentee must enforce the patent without aid of the USPTO.

There are three types of patents:

1) Utility patents may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof (said another way, a utility patent generally protects the function of an invention);

2) Design patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture (said another way, a design patent generally protects the shape or design of a product); and

3) Plant patents may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant.

“What is the difference between a provisional patent application and a nonprovisional patent application?”

Since June 8, 1995, the USPTO has offered inventors the option of filing a provisional application for patent, which was designed to provide a lower-cost first patent filing in the United States and to give U.S. applicants parity with foreign applicants. Claims and oath or declaration are NOT required for a provisional application. A provisional application provides the means to establish an early effective filing date in a patent application and permits the term “Patent Pending” to be applied in connection with the invention. Provisional applications may not be filed for design inventions.

The filing date of a provisional application is the date on which a written description of the invention, and drawings if necessary, are received in the USPTO. To be complete, a provisional application must also include the filing fee, and a cover sheet specifying that the application is a provisional application for patent. The applicant would then have up to 12 months to file a nonprovisional application for patent as described above. The claimed subject matter in the later filed nonprovisional application is entitled to the benefit of the filing date of the provisional application if it has support in the provisional application. Provisional applications are NOT examined on their merits. A provisional application will become abandoned by the operation of law 12 months from its filing date. The 12-month pendency for a provisional application is not counted toward the 20-year term of a patent granted on a subsequently filed nonprovisional application that claims benefit of the filing date of the provisional application.

A nonprovisional patent application is the “full” application that has required sections, is substantively examined for patentability, and hopefully issues into a patent.  A nonprovisional patent application has generally two sections, a specification section and the “claims.”  The claims of the patent application define your invention in words, and is often the most important part of any patent application.  A nonprovisional patent application is permitted to have up to 20 total claims, with 3 of those 20 written in “independent” form, without additional government surcharges.  Claims that exceed the above amounts are considered “excess claims” for which additional fees are due. For example, if applicant filed a total of 30 claims, including 5 independent claims, applicant would be required to pay excess claims fees for 10 total claims exceeding 20, and 2 independent claim exceeding 3.  If the same applicant later filed an amendment increasing the total number of claims to 35, and the number of independent claims to 6, applicant would be required to pay more excess claims fees for the 15 additional total claims and the 4 additional independent claims.

The specification of the nonprovisional patent application should include: (1) Title of the Invention; (2) Cross Reference to related applications (if any). (Related applications may be listed on an application data sheet, either instead of or together with being listed in the specification.); (3) Statement of federally sponsored research or development (if any); (4) The names of the parties to a joint research agreement if the claimed invention was made as a result of activities within the scope of a joint research agreement; (5) Reference to a ”Sequence Listing,” a table, or a computer program listing appendix submitted on a compact disc and an incorporation by reference of the material on the compact disc. The total number of compact disc including duplicates and the files on each compact disc shall be specified; (6) Background of the Invention; (7) Brief Summary of the Invention; (8) Brief description of the several views of the drawing (if any); (9) Detailed Description of the Invention; (10) A claim or claims; (11) Abstract of the disclosure; and (12) Sequence listing (if any).

The specification must also include a written description of the invention and of the manner and process of making and using it, and is required to be in such full, clear, concise, and exact terms as to enable any person skilled in the technological area to which the invention pertains, or with which it is most nearly connected, to make and use the same.

The specification must set forth the precise invention for which a patent is solicited, in such manner as to distinguish it from other inventions and from what is old. It must describe completely a specific embodiment of the process, machine, manufacture, composition of matter, or improvement invented, and must explain the mode of operation or principle whenever applicable. The best mode contemplated by the inventor for carrying out the invention must be set forth.

In the case of an improvement, the specification must particularly point out the part or parts of the process, machine, manufacture, or composition of matter to which the improvement relates, and the description should be confined to the specific improvement and to such parts as necessarily cooperate with it or as may be necessary to a complete understanding or description of it.

When there are drawings, there shall be a brief description of the several views of the drawings, and the detailed description of the invention shall refer to the different views by specifying the numbers of the figures, and to the different parts by use of reference numerals.

Again, the specification must conclude with a claim or claims particularly pointing out and distinctly claiming the subject matter that the applicant regards as the invention. The portion of the application in which the applicant sets forth the claim or claims is an important part of the application, as it is the claims that define the scope of the protection afforded by the patent and which questions of infringement are judged by the courts. More than one claim may be presented, provided they differ substantially from each other and are not unduly multiplied. One or more claims may be presented in dependent form, referring to and further limiting another claim or claims in the same application. Any dependent claim that refers to more than one other claim is considered a “multiple dependent claim.” Multiple dependent claims shall refer to such other claims in the alternative only. A multiple dependent claim shall not serve as a basis for any other multiple dependent claim. Claims in dependent form shall be construed to include all of the limitations of the claim incorporated by reference into the dependent claim. A multiple dependent claim shall be construed to incorporate all the limitations of each of the claims in relation to which it is being considered.

“What can be Patented?”

Pursuant to the U.S. Patent Laws, “[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”  A patent cannot be obtained upon a mere idea or suggestion. The patent is granted upon the new machine, manufacture, etc., as has been said, and not upon the idea or suggestion of the new machine. A complete description of the actual machine or other subject matter for which a patent is sought is required.

The patent law specifies that the subject matter must be “useful.” The term “useful” in this connection refers to the condition that the subject matter has a useful purpose and also includes operativeness, that is, a machine which will not operate to perform the intended purpose would not be called useful, and therefore would not be granted a patent.  Interpretations of the statute by the courts have defined the limits of the field of subject matter that can be patented, thus it has been held that the laws of nature, physical phenomena, and abstract ideas are not patentable subject matter.

“How do I know whether my invention is patentable?”

One should initially consult with a patent attorney or patent lawyer, but in accordance with the Leahy-Smith America Invents Act, signed into law by former president Barack Obama on September 16, 2011, in order for an invention to be patentable it must be new as defined in the patent law, which provides that an invention cannot be patented if:

“(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention” or

“(2) the claimed invention was described in a patent issued [by the U.S.] or in an application for patent published or deemed published [by the U.S.], in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.”

There are certain limited patent law exceptions to patent prohibitions (1) and (2) above. Notably, an exception may apply to a “disclosure made 1 year or less before the effective filing date of the claimed invention,” but only if “the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed… from the inventor or a joint inventor.”

In patent prohibition (1), the term “otherwise available to the public” refers to other types of disclosures of the claimed invention such as, for example, an oral presentation at a scientific meeting, a demonstration at a trade show, a lecture or speech, a statement made on a radio talk show, a YouTube™ video, or a website or other on-line material.  Effective filing date of the claimed invention: This term appears in patent prohibitions (1) and (2).  For a U.S. nonprovisional patent application that is the first application containing the claimed subject matter, the term “effective filing date of the claimed invention” means the actual filing date of the U.S. nonprovisional patent application. For a U.S. nonprovisional application that claims the benefit of a corresponding prior-filed U.S. provisional application, “effective filing date of the claimed invention” can be the filing date of the prior-filed provisional application provided the provisional application sufficiently describes the claimed invention. Similarly, for a U.S. nonprovisional application that is a continuation or division of a prior-filed U.S. nonprovisional application, “effective filing date of the claimed invention” can be the filing date of the prior filed nonprovisional application that sufficiently describes the claimed invention. Finally, “effective filing date of the claimed invention” may be the filing date of a prior-filed foreign patent application to which foreign priority is claimed provided the foreign patent application sufficiently describes the claimed invention.

Many inventors attempt to make their own search of the prior patents and publications before applying for a patent. This may be done in the Public Search Facility of the USPTO, and in libraries located throughout the United States that have been designated as Patent and Trademark Resource Centers (PTRCs).  Another good resource to search for your invention may be Google Patents.  An inventor may make a preliminary search through the U.S. patents and publications to discover if the particular invention or one similar to it has been shown in the prior patent. An inventor may also employ patent attorneys or agents to perform the preliminary search.  This is the preferred and recommended method to ascertain the patentability of an invention.  This search may not be as complete as that made by the USPTO during the examination of an application, but only serves, as its name indicates, a preliminary purpose. For this reason, the patent examiner may, and often does, reject claims in an application on the basis of prior patents or publications not found in the preliminary search.

Even if the subject matter sought to be patented is not exactly shown by the prior art, and involves one or more differences over the most nearly similar thing already known, a patent may still be refused if the differences would be obvious. The subject matter sought to be patented must be sufficiently different from what has been used or described before that it may be said to be non-obvious to a person having ordinary skill in the area of technology related to the invention. For example, the substitution of one color for another, or changes in size, are ordinarily not patentable.

“Is my patent application open to the public?”

Applications for patents, which are not published or issued as patents, are not generally open to the public, and no information concerning them is released except on written authority of the applicant, his or her assignee, or his or her attorney, or when necessary to the conduct of the business of the USPTO. Patent application publications and patents and related records, including records of any decisions, the records of assignments other than those relating to assignments of unpublished patent applications, patent applications that are relied upon for priority in a patent application publication or patent, books, and other records and papers in the Office are open to the public. They may be inspected in the USPTO Search Room, or copies may be ordered. A nonprovisional patent application, however, gets published 18 months from its effective filing date.

“Who may apply for a patent?”

According to the law, the inventor, or a person to whom the inventor has assigned or is under an obligation to assign the invention, may apply for a patent, with certain exceptions. If the inventor is deceased, the application may be made by legal representatives, that is, the administrator or executor of the estate. If the inventor is legally incapacitated, the application for patent may be made by a legal representative (e.g., guardian). If an inventor refuses to apply for a patent or cannot be found, a joint inventor may apply on behalf of the non-signing inventor.

If two or more persons make an invention jointly, they apply for a patent as joint inventors. A person who makes only a financial contribution is not a joint inventor and cannot be joined in the application as an inventor. It is possible to correct an innocent mistake in erroneously omitting an inventor or in erroneously naming a person as an inventor.

Officers and employees of the United States Patent and Trademark Office are prohibited by law from applying for a patent or acquiring, directly or indirectly, except by inheritance or bequest, any patent or any right or interest in any patent.

“What happens after a nonprovisional patent application is filed?”

After a nonprovisional patent application is filed, it will get examined by a patent examiner, may be subject to one or more “Office Action(s)”, and hopefully will issue into a patent.  For a more detailed summary of the process after a patent application is filed, please see our blog here.

We, at The Intellectual Property Law Firm, would be happy to answer any questions not answered above and/or to assist you with performing any patent-related services.  Please contact us by telephone at (888) 201-8001 or (954) 507-4500, or by email at Info@JohnsonDalal.com.  We look forward to being YOUR intellectual property attorneys.