PATENTS:
A patent is a grant by the federal government under the U.S. Constitution to the exclusive right to make, use, sell, distribute, and import an invention for twenty years. The federal government grants patents to give inventors an incentive to create tangible things that are good for everyone. Patents benefit everyone because once the twenty-year period expires, the invention becomes public property and public knowledge.
The way the information contained in a patent passes to the public is that the U.S. Patent & Trademark Office ("PTO") publishes every patent application eighteen months after filing. As you have probably seen, actual patents are also published after they are granted. Publication gives other inventors notice of what they cannot use without the patent owner’s permission, and also defines the invention that becomes public property after the patent expires.
Congress has passed several laws governing how patents are issued. To be patented, an invention must be related to the scientific arts, new, and non-obvious. The “relationship to the scientific arts” requirement is very broad such that anything under the sun that is made by man can be patented. The novelty and non-obvious elements require the PTO to search older inventions (called the “prior art”) and to compare the prior art to the invention disclosed in a patent application. Congress also passed laws prohibiting a patent in certain circumstances; the most important prohibition is that you may not receive a patent if your invention was in use or on sale more than one year before the filing of a patent application. Therefore, time is of the essence if you have already disclosed the invention.
The patent application process includes three main steps. The first step is an initial “patentability search” to determine whether the invention is new and non-obvious, which is important for several reasons. First, you should know whether your invention has already been created by someone else. Second, if you find out that another person’s invention precludes the PTO from granting you a patent, you will not waste money on the preparation and prosecution of a fruitless patent application. Third, the information in the prior art is crucial to drafting the language of your own patent for maximum protection. Following the search, we will provide you with a letter setting forth our recommendations on how to proceed.
If you decide to move forward, the second phase of the application process is drafting the application itself. This part of the application requires the most from you, the inventor. At this stage, we will need to learn your understanding of the invention and the background of the industry so that we can put your patent into the proper context. We may ask you for drawings, pictures, memos, and other information that will help us define your invention. We may also ask you to explain the differences between your invention and inventions uncovered by our patentability search. When we have finished drafting the application, we will provide it to you for review and approval. You will then sign the necessary forms and we will file the application. It generally takes at least two (2) years after filing for the application to be processed.
The third phase of the application process is prosecution. Prosecution refers to the actions taken by the PTO and our responses. A patent examiner employed by the PTO reviews the application for compliance with all applicable standards, such as novelty and non-obviousness. The examiner notifies us of any objections to the application in an “office action,” and we negotiate with the examiner on your behalf. Almost every application involves responding to an examiner’s office action, and most applications involve multiple office actions. Prosecution takes at least a few months and can last for several years, depending on the nature of the invention and the amount of prior art in the field.
At the end of prosecution, the PTO ultimately decides whether to grant a patent on your invention. The latest statistics released by the PTO show that approximately 50% of all utility patent applications filed ultimately result in issued patents. If the PTO decides to issue a patent on your invention, your patent will issue upon payment of an issue and publication fee. If the PTO decides not to issue a patent, we can appeal that decision to an appeals board and to various levels of federal courts.