What is a patent, and how do you obtain one for your work?

A patent is an Intellectual Property right granted by the government to an inventor. A United States Patent provides the owner of the patent the right to exclude others from making, using, selling, or importing the patented product for a specific time period in exchange for public disclosure of the invention. Consequently, this patent may represent a significant commercial and/or financial advantage to individuals and businesses in the related technical field.

The following is a brief summary of the patent application process. Please note this information is merely exemplary and intended only to provide some insight into the application process. The filing and prosecution of a Patent Application is a very complicated process, and we encourage our clients to work closely with our attorneys during the entire process. Consequently, should you have any questions regarding the Patent Application process, the strategy behind filing different types of Patent Applications, or any other matter relating to our services, please do not hesitate to contact us.

Patentability Searches

A recommended first step in the evaluation of an invention is to have a patentability search performed to determine whether an invention is likely patentable. This can be done either through a preliminary search or comprehensive search. A preliminary search is often completed in just three weeks and is generally a search of the United States Patent and Trademark Office (“USPTO”). Though preliminary searches are done by professional patent searchers and the results are generally reliable and accurate, it is important to note that there can be patent references that exist but are not found during this search. The USPTO archives currently include over six million issued patents so it is exceedingly difficult to be more than reasonably certain that the most pertinent patent art has been located. A comprehensive search is a very detailed review of the prior art, including textbooks, industry periodicals, and publications. This search can take six to eight weeks to complete.

Filing of the Application

An initial conference with our attorney will provide an opportunity for the client to describe the details and features of the invention and have the attorney develop some initial sketches and notes. The attorney and client may also decide which type of patent application is most appropriate given the type of invention involved and the client’s long term business goals and interests. Provisional, utility and design patent applications are typically filed by our clients.

The preparation of the application for a Provisional Patent includes the drafting of the patent application, including a background of the invention, an overview of the current state of the art and a detailed technical disclosure of the invention, including drawings. Unlike a Utility Patent application, no claims are necessary; however, the same level of technical disclosure is necessary in order to fully benefit from the filing date of a Provisional Patent application. Once prepared, the application is reviewed by the inventor for accuracy and then filed with the USTPO. A Provisional Patent application will not be substantively examined by the USPTO, it will only be examined to make sure all formal requirements are met. It will expire one year after the filing date and will not mature into a United States Patent. However, a Provisional Patent application serves to establish a priority date for a later filed Utility Patent application and is typically filed early on in the development of an invention to establish the earliest filing date possible to secure patent protection for the invention.

The preparation of the application for a Utility Patent includes the drafting of a patent application, including a background of an invention, an overview of the current state of the art, a detailed technical disclosure of the invention including drawings, and several claims which specifically set forth the invention. Once prepared, the application is reviewed with the inventor for accuracy and then filed with the USTPO.

The preparation of the application for a Design Patent includes the drafting of a patent application, including detailed drawings of the invention, and a brief description of those drawings. Once prepared, the application is reviewed with the inventor for accuracy and then filed with the USTPO. Because of the importance to the examination of a Design Patent application, detailed formal drawings are almost always prepared and filed with the application.

Prosecution

Approximately one month after the filing of a patent application, a filing receipt is received which identifies the applicant’s serial number, the title of the invention, the filing date and other pertinent application information. The filing receipt will be reviewed and reported in a letter to the client. The applicant also has to file an Information Disclosure Statement (IDS) in which all known references that are relevant and material to the patentability of the invention are disclosed to the USPTO. Once a non-provisional patent application has been received by the USTPO, the application is delivered to a patent examiner in the proper group art unit within the USTPO for examination. Once the initial examination is completed, the examiner then issues an Office Action which is a written document that summarizes any rejections of the claims filed in the application, as well as any informal concerns with the application. The Office Action will be reviewed and reported in a letter to the client, along with any suggestions for responding to any rejections. Once the client has had the opportunity to review the Office Action and the attorney’s letter reporting it, the client must specifically instruct the firm to respond to the Office Action.

International Patent Applications

An International Patent Application may be filed with a claim of priority to a pending United States Application, or the international application may be filed directly with a non United States country. In order for the international application to claim the benefit of priority to the filing date of a United States Patent application, the international application must be filed within one year of the filing date of the earliest United States Application. This deadline is non- extendable, so it is critical to evaluate whether or not to file international applications prior to the one-year deadline. Please notify our office as early as possible if international patent protection is of interest.

For more information on Patents and the Patent Application process, please contact our office.