PATENTS
What is a Patent?
A patent is the grant of a property right to the inventor. In the United States, patents are issued by the United States Patent and Trademark Office (USPTO).
Generally, the term of a new patent is 20 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. U.S. patents are effective only within the United States, U.S. territories, and U.S. possessions. Patent protection may also be obtained in foreign countries if a timely application is made.
The right conferred by the patent is “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. In other words, what is granted is not the right 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, it is up to the owner of the patent to enforce the patent. A patent owner may be entitled, in cases of infringement, to an award of damages, and, in some cases, attorney's fees.
James Ray & Associates is experienced in both U.S. Patent filings and patent prosecution as well as international patent filing and prosecution.
Types of Patents:
There are three types of patents.
A Utility Patent may be granted to the inventor(s) of any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof. Another way to put it is that utility patents protect the way an article is used and works as well as the article itself.
A Design Patent may be granted to the inventor(s) of a new, original, and ornamental design for an article of manufacture. In other words, a design patent protects the way an article looks, but not the functional features of the article.
A Plant Patent may be granted to the inventor(s) or discoverer(s) of any distinct and new variety of plant which such inventor(s) or discoverer(s) have asexually reproduced.
In order to obtain a patent in the United States, an application must be filed with the United States Patent and Trademark Office (USPTO). The application will be examined by an examiner at the USPTO. If the application is allowed then a patent will be issued. If the decision made by the examiner is adverse to the applicant, steps may be taken to amend the application and/or present arguments to attempt to overcome the adverse decision.
Applications made for the above types of patents are known as non-provisional applications. A provisional application is a separate application which is shorter than a non-provisional application and which is essentially a tool to obtain an early filing date. Provisional applications are discussed in greater detail under the heading “Provisional Applications.”
What can be patented?
In the language of the patent statute, any person who “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,” subject to the conditions and requirements of the law.
The word “process” is legally defined as a process, act or method, and primarily includes industrial or technical processes.
The term “machine” used in the statute requires no explanation.
The term “manufacture” refers to articles that are made, and includes all manufactured articles.
The term “composition of matter” means chemical compositions and may include mixtures of ingredients and new chemical compounds.
These classes of subject matter taken together include practically everything that is made by man and the processes for making the products.
Laws of nature, physical phenomena, and abstract ideas are not patentable subject matter.
A patent cannot be obtained upon a mere idea. In order to obtain a patent a complete description of the actual invention or other subject matter for which a patent is sought is required.
Conditions for obtaining a Utility Patent:
Novelty
In order for an invention to be patentable it must be new. This means that an invention cannot be patented if: (a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or (b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country more than one year prior to the application for patent in the United States.
If the invention has been described in a printed publication anywhere, or has been in public use or on sale in this country more than one year before the date on which an application for patent is filed in this country, a patent cannot be obtained. In other words, if the invention is described in a printed publication or is used publicly, or placed on sale, the inventor must apply for a patent in the U.S. before one year has gone by otherwise any right to a patent will be lost. Additionally, the inventor must file on or before the date of public use or disclosure if the inventor wants to preserve the ability to seek patent rights in most foreign countries.
Usefulness
In addition to being new, an invention must be useful in order to obtain a utility patent.
Non-Obviousness
A patent will not be granted if the invention would be obvious considering the prior art. Prior art includes any relevant knowledge, acts, descriptions, published patent applications, and patents which predate the invention in question. In other words it was previously “known”.
Thus even if the invention sought to be patented is not exactly shown by the prior art, and involves at least one or more differences over the most 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 different enough from what has been previously used or described that it qualifies as non-obvious to a person having ordinary skill in the area related to the invention.
How will I know if I can obtain a Patent?
It isn’t always clear if an invention meets the requirements to be considered patentable. What might seem new to one person may already be known to another. Therefore, a good starting point would be to have a “patent search” performed on the invention to discover if anything similar exists. A patent search consists of a search of existing patents, published applications, and other sources to determine if the invention itself or other relevant prior art exists.
If the results of the search indicate some similarities between prior art and the invention then a “patentability opinion” may be desired. A patentability opinion is performed by a patent attorney or patent agent and is based on the results of the patent search. Each result is carefully scrutinized and compared with the invention to determine if the invention has novel features and if, in the opinion of the patent attorney or patent agent, the invention would be considered non-obvious in view of the patent search results.
Who may apply for a Patent?
Only the inventor(s) may apply for a patent, with certain exceptions.
If two or more persons make an invention jointly, they must apply for a patent as joint inventors.
Exceptions may apply in certain instances, for example, death, insanity, and absence of a joint inventor.
If a person who is not the inventor and who does not fall within a recognized exception applies for a patent, the patent, if it is obtained, is invalid. The person applying in such a case who falsely states that he/she is the inventor would also be subject to criminal penalties.
Provisional Application for a Patent:
Since June 8, 1995, the United States Patent and Trademark Office (USPTO) has offered inventors the option of filing a provisional application for a patent as a means for providing a lower cost first patent filing in the United States. Provisional applications may only be filed for utility inventions.
A provisional application has fewer parts than a utility application, costs less, and provides a means to establish an early effective filing date in a patent application.
A provisional patent also permits the applicant to use the term “Patent Pending” in connection with the invention. However, after filing a provisional application, if the applicant wants to continue working towards obtaining a patent then the applicant has up to 12 months within which to file a non-provisional application for patent and/or international application. (Please refer to the “Types of Patents” section for more information).
The claimed subject matter in the later filed non-provisional 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 and never become patents.
The 12-month pendency for a provisional application is not counted toward the 20-year term of a patent granted on a subsequently filed non-provisional application which claims benefit of the filing date of the provisional application.
The United States Patent and Trademark Office:
Congress established the United States Patent and Trademark Office (USPTO) to issue patents on behalf of the government.
The USPTO administers the patent laws, examines applications for patents to determine if the applicants are entitled to patents under the law, and grants patents when they are so entitled.
The USPTO publishes most patent applications at 18 months from the earliest filing date and also publishes issued patents and various other publications concerning patents.
Another function of the USPTO is to record assignments of patents, maintain a search room for the use of the public so the public may view issued patents and records, and to supply copies of records, etc., to appropriate parties.
Publication of Patent Applications:
Publication of patent applications is required by the American Inventors Protection Act of 1999 for most plant and utility patent applications filed on or after November 29, 2000.
An applicant may request that his or her application not be published, but only if the invention has not been and will not be the subject of an application filed in a foreign country that requires publication 18 months after filing (or earlier claimed priority date) or under the Patent Cooperation Treaty (the law which governs filing in foreign countries).
As a result of publication, an applicant may assert provisional rights. These rights provide a patentee with the opportunity to obtain a reasonable royalty from a third party that infringes a published application claim if actual notice is given to the third party by the applicant, and if a patent ultimately issues from the application with a substantially identical claim. In other words, damages for pre-patent grant infringement are now available.
The term of the patent shall be generally 20 years from the date on which the application for the patent was filed in the United States. However, under certain circumstances, if the application contains a specific reference to an earlier filed application then the patent term shall run from the date the earlier application was filed.
What else can I do with a Patent?
A patent is personal property and may be used to secure a loan; it may be bequeathed by a will; and it may pass to the heirs of a deceased patentee.
Patent law provides for the transfer or sale of a patent, or of an application for patent in writing. The document is an assignment and may transfer some or the entire interest in the patent. When the patent is assigned, the assignee (the person who is receiving the ownership interest) becomes the owner of the patent and has the same rights that the original patentee had.
How to get started:
A patent can be an excellent way to protect your ideas and increase the value of your business. A patent can not only protect your invention from infringement, but can also be a great marketing tool to attract manufacturers, investors, and licensees. Let us help you get started by performing a patent search to determine if there is someone else who has already patented or attempted to patent your invention or something similar. Once the patent search is complete our experienced staff members will provide you with the advice you need to choose your next step.
If you are interested in learning more about how to protect your rights regarding your invention or other intellectual property, we look forward to talking with you. For more information on how we can serve you, contact James Ray & Associates toll free at (888) 692-7303 to speak with an experienced member of our staff today.