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Disclaimer | Mickey
Mouse Wins | Palm Drops Graffiti
| European Design Protection Copyright © 1997 - 2003 Peter S. Canelias - Attorney at Law. All
right reserved. |
|
GUIDE TO OBTAINING PATENT PROTECTION The law firm of Peter S. Canelias concentrates in the practice of intellectual property law, an area that encompasses patents, trademarks, copyrights, trade secrets, design protection and litigation, whether to enforce or defend against such intellectual property interests. The firm also counsels clients in the creation and maintenance of patent and patent licensing programs, employee/employer agreements and disputes concerning intellectual property, and provides comprehensive auditing of intellectual property assets and portfolios, whether for internal use or for mergers, acquisitions or financing. The firm provides this guide as an aid to its clients and prospective clients to help guide them through the patent application process, and give them a more clear idea of what to expect and how to budget to achieve maximum strategic protection of a company's products, technology and designs at the lowest reasonable cost. This guide does not, however, give legal advice or create an attorney-client relationship. Please read the Disclaimer at the end of the Guide.
· What Is a Patent? What Is A Patent? A United States patent is a printed document, issued by the United
States Patent and Trademark Office ("PTO"), a division of
the Department of Commerce. The authority of the PTO comes from Congress,
through the 1952 Patent Act, as amended. Congress, in turn, obtains
its authority from the U.S. Constitution, Article I, section 8, clause
8, which gives Congress the power "[t]o 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". The patent document itself must contain an adequate written description of the invention, including, where applicable, sufficient detail to enable a person skilled in the relevant art to make and use it and the inventor's preferred mode of making and using the invention. Also contained in the patent are one or more claims, which define the scope of the invention. Different Types of Patents Under the United States patent system, there are three different types of patents, namely, utility, design and plant patents. This guide will focus primarily on utility patents, with some coverage of design patents. A utility patent is what people usually think of as a patent, i.e., protection for something useful, such as a light bulb. For such "useful" inventions, the patent law provides that "[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." As can be seen from the language, the scope of proper subject matter is very broad, and encompasses almost all useful inventions. Notable exceptions, however, are laws of nature (such as those expressed in mathematical formulas) and pure algorithms. A design patent covers only the appearance or ornamentation of an object. For designs, the law provides that "[w]hoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title." Designs may be two dimensional, such as those for wallpaper or fabric, or three-dimensional, such as those for lamps or vases. It is possible to obtain both a design patent and a utility patent for the same product; the utility patent would protect the new and useful functional aspects of the product, and the design patent would protect the ornamental aspects. However, if the appearance of the product is dictated by purely functional concerns, as opposed to decorative purpose, then no design patent protection is available. Duration Of Patent Protection A utility patent applied for after June 8, 1995 remains in force for
a period of 20 years from the date of application, provided that periodic
maintenance payments are timely made. Utility patents in force or applied
for as of June 8, 1995 remain in force for the longer of 20 years from
the date of application or 17 years from the date of issue, again subject
to maintenance payments. The significance of the June 8, 1995 date relates
to changes made to the patent laws pursuant to the General Agreement
on Tariffs and Trade ("GATT"). There is also a minimum term
of 17 years from date of issue, if any delays are not the fault of the
applicant. Design patents have a term of 14 years from the date of issue
and no maintenance payments are required. In the United States, only the inventor or inventors may apply for a patent, absent very specific, unusual circumstances such as the death or incapacity of the inventor. Each inventor is required to make an oath or declaration that the applicant believes himself or herself (or with co-inventors) to be the original and first inventor of the subject matter of the application, and that the applicant has complied with the applicable provisions of the patent laws. Legal Standards For Patentability To obtain a patent (whether a utility or a design patent), the invention must be both novel (new) and not obvious, as defined in the patent statute, and as interpreted in case law. The requirements for novelty and non-obviousness are complex and are not susceptible of easy or even certain interpretation. Each case must be evaluated according to its particular facts, and even then, certainty of future results is not possible. There are, however, certain requirements of the patent laws of which prospective patentees should be aware. One of the most important is often called the "one year" or "on sale" or "public use" bar to patentability codified in 35 U.S.C. § 102(b). The statute provides that a person may not obtain a patent if "(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 date of application for patent in the United States". Some of the common ways that inventors run afoul of this requirement are (a) merely offering the invention for sale; (b) publicly displaying the invention (even, in some circumstances, to personal friends and acquaintances); (c) writing about the invention or assisting someone else to write about it; or (d) test marketing the invention solely for the purpose of determining consumer acceptance or profitability. Although these are some common examples, determining the precise application of the statute varies from case to case, and you should seek competent legal counsel for an individual situation. Failure to comply with these requirements may result in forfeiture of the right to a patent. Subject to certain exceptions, when one of the prohibited acts occurs, the clock immediately starts to run, and at the end of one year, if the patent application has not been filed, the inventor may be permanently and irrevocably barred from obtaining a patent on that invention. As a practical matter, it is important to remember that a patent application is a complex legal document that takes a great deal of time to prepare properly. You cannot go to a patent attorney and expect an adequate application to be drafted and filed overnight. A good rule of thumb is to allow a month for the application to be prepared and filed. If it is an emergency, contact counsel immediately to determine whether at least some rights may still be protected. A United States patent does not provide any rights in foreign countries. To obtain patent protection in a foreign country, you must (with exceptions for certain treaty rights) file an application in that country within one year of filing the application within the United States (within 6 months for design patents). If an inventor contemplates filing for patent protection outside of the United States, it is important to discuss this with patent counsel from the very beginning to avoid loss of protection in foreign countries. Unlike the United States, most foreign countries have a requirement of absolute novelty, which means that for a variety of prohibited acts, an inventor does not receive a one-year grace period such as that of section 102(b) of the patent statute: Depending on the law of the foreign country, the inventor may be immediately barred from obtaining a foreign patent once the invention is publicly available. The Role Of The Inventor Contacting patent counsel as soon as possible is perhaps the best way of ensuring protection for your invention to the extent that the law allows. Ideally, you should contact counsel as soon as you recognize that you may have made an invention. Preparing an invention disclosure is also a useful step to take in the initial stages. The invention disclosure provides a written record that can be helpful in determining whether you are indeed the first inventor, should that issue arise. The invention disclosure is not a patent application, but rather a witnessed document that will help you establish the date of your invention. There is no special form for an invention disclosure. Simply write a description of your invention, as detailed as necessary to adequately describe it and to show what exactly you believe to be new about it, as compared with similar devices, products, designs, etc. of which you are aware. Include any sketches, drawings or photographs that you may have. Have each sheet signed, witnessed and dated by two persons whom you trust. This process should be repeated when significant changes are made to the invention. Please note that under United States law, it is not necessary to build a prototype of the invention in order to apply for or obtain a patent, although building such a prototype could be evidence of, among other things, successfully completing the invention should the issue arise. One more thing that an inventor should do is to be diligent. Most of
us do not work exclusively on one project from beginning to end without
interruption. We tend to put things aside, even important things, either
to work on something more pressing or because of the lack of funds or
sometimes (more often than we would like) because of mere procrastination.
Despite these natural tendencies, when it comes to patent protection,
diligence in completing the invention and/or applying for patent protection
obtains certain benefits under the law, and by the same coin, certain
penalties for the lack thereof. Delay or procrastination may be fatal
to any potential patent if someone else makes the same or a similar
invention while yours sits idle on the shelf. Before drafting a patent application, a good first step is to conduct a search to find the most closely related "prior art". The term "prior art" entails many complexities, and deciding whether a particular reference is or is not "prior art" should be done with the advice of patent counsel, but a simple definition would be any document or thing, created prior to the date you apply for a patent, that relates in some material way to your invention. Prior art may be used by the PTO (or the defendant in an infringement case) to show that your invention, at the time it was made, was either not new or that it would have been obvious to a person of ordinary skill in the art to which the invention pertains, and thus not patentable, or if patented, such patent would be held invalid. It is important to realize that it is impossible to get assurance in advance that you will be granted a patent, or that any patent you receive will withstand a challenge to its validity in a lawsuit. The extent of any patent search is determined by balancing the cost of the search against the cost of filing and prosecuting an application where there is invalidating prior art available. There is no certainty that a search will uncover all relevant prior art (it is virtually certain that it will not) and there is no obligation on the inventor to search for prior art at all; the obligation on an inventor is to disclose to the PTO all material prior art of which the inventor is aware. It is recommended, however, that at least a search of prior patents in the United States be made, to find patents which could affect the likelihood of obtaining a patent, and thus show avoidable pitfalls in the application process at the lowest reasonable cost. Assuming that some search has been done, and/or the inventor already has some prior art relevant to the invention, the inventor should carefully compare the details of the prior art with the invention to identify the actual differences. The decision whether to seek patent protection should be based on your own comparison and on the advice of patent counsel. If you find that the invention has useful features or attributes not
shown or taught by the prior art (i.e., your invention appears new and
not obvious), promptly (diligently!) instruct patent counsel to prepare
an application and file it, subject to your review, in the PTO. Assist
patent counsel by providing all of the useful information that you have
available. The patent application has two major portions: (1) what is called the "specification", and (2) the claim(s). The specification is the written description of the invention and any drawings accompanying that description. The specification must (a) provide an adequate written description of the invention, (b) provide sufficient information to enable a person who is skilled in the art to which the invention pertains to make and use the invention, and (c) disclose the best mode known to the inventor of carrying out the invention. The claim(s) of a patent are carefully drafted, discrete English sentences which encompass the actual patentable features or elements of the invention, i.e., those elements that are novel and not obvious in view of the prior art. The claims "stake out" the patentable portions of the invention which are disclosed and described in the specification. An important consideration in preparing a patent application is that anything claimed in the claims must be disclosed in the specification, and the specification must provide an adequate written description (be enabling, and set out the best mode) for the subject matter of each claim. Another thing to keep in mind is that although claims may be changed or amended while the application is pending in the PTO (and afterward under certain circumstances), the specification may not be changed if the change introduces new matter into the specification. Once the specification is filed in the PTO, for practical, substantive purposes it is "set in stone", and the PTO will allow only minor (non-substantive) corrections to be made after filing. Once the patent application is complete, it should be filed as soon as possible together with the appropriate filing fee. Examination And Prosecution Of The Application Within about 6 months after the application is filed, a patent examiner reviews the application and conducts his or her own prior art search for prior patents and other references to ascertain whether the invention is patentable. The examiner's decision will be set out in an "office action", a written response setting out any objections to the application and/or rejection of one or more of the claims and the examiner's reason for doing so. The examiner frequently denies patentability for some or all of the claims. The applicant (or patent counsel) then responds by amending or canceling and replacing the claims, and usually by submitting an explanation as to why the examiner is mistaken. This process of give and take between the applicant and the PTO is called the "prosecution" of the application, and may go on for an extended period of time and involve multiple office actions and responses. The average period of time between filing an application and issuance of a patent is 2-4 years. Eventually, a patent is either granted or denied. If denied, the applicant should consider an appeal. If the patent is granted, then subject to paying the fee to issue the patent, the patent will issue and the patentee should prepare to mark its patented products with the patent number, to provide notice to infringers and allow the patentee to collect damages for infringement from the date of marking. |
