Venture Best

By: Edward J. Evans

What is involved in the process of preparing a patent application?
It is important to know that an issued patent begins life as an application that is filed with the U.S. Patent and Trademark Office (USPTO), which examines the application to determine whether it is entitled to be granted as a patent under U.S. patent law. It is not guaranteed that an application will eventually be granted as a patent. It is also not guaranteed that the scope of patent protection desired at the time of filing the application will be available to the applicant at the conclusion of prosecution of the application.

By rule, a patent application must include a specification in which the invention is described, at least one drawing of the invention if it lends itself to illustration, and at least one claim defining what the inventor considers to be the invention. If analogized to a real property setting, a “claim” is like a legal description of the invention, and can be visualized as a fence demarcating the invention from the known art in the public domain. The greater the area surrounded by the fence, the broader the scope of the inventor’s claim, making the patent more valuable.

An application filed with the three above-mentioned elements is considered complete and is entitled to a filing date. The filing date of a patent application can be analogized to the inventor’s “stake” in the ground at which time the inventor was in possession of the invention.

Although an applicant is not required to perform a patentability search prior to filing a patent application in the United States, it is almost always a good idea for the applicant to do so. A patentability search, in essence, is a preliminary assessment of the likelihood of obtaining patent protection on an invention. More specifically, a patentability search involves studying a sampling of prior-art patent or non-patent documents in the same technical field within which an invention might be classified. After understanding the relevant prior art, an inventor may make a more informed decision whether it’s worthwhile to proceed with a patent application, the cost of which is typically many times that of a patentability search.

What happens after a patent application is filed?
It is also important to know that the U.S. patent system is not based on registration. In other words, submission of a patent application to the USPTO is not the end of the process. Rather, it is only the beginning of a process, known as “prosecution,” in which the applicant (or, their patent attorney) is actively involved in advocating for the patentability of the invention described in the application.

After an application is filed, it sits in an examiner’s queue awaiting examination. To commence examination, the examiner conducts a search in the USPTO database for prior art that could be used to “reject” one or more of the inventor’s claims in the application. A “rejected” claim is a definition of the invention that, as alleged by the examiner, is wholly included in the prior art. These allegations are communicated to an inventor in an “office action,” initiating prosecution of the application.

Of course, the examiner’s claim rejections may be rebutted by submitting arguments based on fact and legal precedent. Alternatively, the inventor may decide to amend the claims in the application to address the examiner’s claim rejections. This process of negotiation continues until the examiner either agrees that the claims in the application are allowable in view of the prior art of record or closes prosecution of the application if agreement cannot be reached. Continued prosecution may be requested by the inventor with payment of additional fees.

What happens after a patent is issued?
Only after a patent is issued can it be enforced against a potential infringer in the marketplace. However, for a patent to eventually be enforced, the patent owner must actively monitor the marketplace to identify potential infringers. The USPTO is not responsible for identifying potential infringers of patents that are issued by the office.

It is also important to know that the fee paid to the USPTO to obtain issuance of a utility patent will only maintain the patent in force for up to four years after issuance. Additional fees, known as “maintenance fees,” are due at the 3-1/2 year, 7-1/2 year, and 11-1/2 year intervals after issuance to ensure that a utility patent remains in force for its entire 20-year natural term. The maintenance fee for each interval progressively increases to encourage patent owners to let their patents lapse, thereby dedicating the technology covered by the patent to the public.

Design patents do not require the payment of maintenance fees to remain in force throughout their natural 14 year term.

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By: Edward J. Evans

To first-time inventors, effectively navigating the patent system in the United States might seem like a daunting task. It is the author’s experience dealing with first-time inventors that, oftentimes, the difficulty lies in knowing where to begin and what questions to ask. This article is intended to assist inventors and entrepreneurs, who are in the midst of their first experience with the patent system or who are otherwise unfamiliar with the patent system, in gaining a working knowledge of the patent system in the United States.

What is a patent?
A patent is a legal document that grants its owner(s) the right to exclude others from making, using, selling, or offering for sale a patented invention within the United States for the term of the patent. A U.S. patent also grants its owner(s) the right to exclude others from importing the patented invention into the United States.

A U.S. patent does not grant a right to use the patented invention. It is within the realm of possibility that a patent owner may be precluded from making, using, selling, or offering their patented invention for sale because the technology upon which it is based is covered by an earlier patent owned by another party. Such a situation may arise when a first party is issued a patent covering an improvement on a base technology, while the patent covering the base technology (issued to a second party) remains in force. So, under U.S. patent law, the first party is entitled to exclude the second party from making, using, selling, or offering for sale any products incorporating the improvement to the base technology, while the second party is entitled to exclude the first party from making, using, selling, or offering for sale any products incorporating the base technology.

A patent owner, however, may convey to another an exclusive or non-exclusive right to make, use, sell, offer for sale, or import the patented invention by granting a “license” covering the patent. Otherwise, unauthorized manufacture, use, sales, offers for sale, or importation of a patented invention is known as “infringement.”

Furthermore, pending patent applications and issued patents have the attributes of personal property and can be bought or sold (i.e. “assigned”). The assignment, however, must be memorialized in a written document.

What subject matter can be patented?
Any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof may qualify as patentable subject matter.

Most individuals associate patents with a consumer product, which traditionally would be considered a “machine” or an “article of manufacture” for purposes of patentability. However, the process used to create a consumer product, or a material used in creating a consumer product, may also qualify for patent protection.

What types of patents are available?
The two most common forms of patents include a “utility” patent and a “design” patent. A utility patent defines an invention in terms of its structure and function. In contrast, a design patent defines an invention in terms of its ornamental appearance, rather than its function.

Therefore, the scopes of protection afforded by a utility patent and a design patent, respectively, are largely independent of each other and do not overlap.

What is the term for each type of patent?
Generally, the term of a utility patent begins on its date of issuance and ends 20 years after the filing date of the application on which the patent is based. The term of a utility patent is generally non-extendable, though some exceptions apply.

The term of a design patent is 14 years, beginning on its date of issuance. The term of a design patent is non-extendable.

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