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In the United States there are three kinds of patent -- utility patents, design patents, and plant patents. A patent permits its owner to exclude members of the public from making, using, or selling the claimed invention. Most countries of the world have patent systems, although the patent terms and types of patents vary.
In the United States, the term of a utility patent depends on when the patent application was filed. If the patent issued from an application filed prior to June 8, 1995, the term is the later of (1) 17 years from the date of issuance of the patent, or (2) 20 years from the first U.S. filing date for the patent. If the patent issued from an application filed on or after June 8, 1995, then the term is 20 years from the first U.S. filing date for the patent.
This complicated rule for the term of a utility patent is the result of the transition from the old term (17 years after issuance) to the uniform term prescribed by GATT (20 years after filing). It applies to all patents still in force on June 8, 1995. (If the details of this situation are important to you, we suggest that you seek the advice of competent counsel.)
Design patents in the United States have a term of 14 years, while plant patents have a term of 17 years.
A common misconception is that the patent gives its owner the right to make, use, or sell the invention. It only gives the owner the ability to exclude others from making, using or selling the invention. The patent owner may be forbidden from using the invention, usually due to the existence of another patent, or sometimes due to other legal restrictions.
To illustrate this principle, consider the following common case: Person 1 patents an invention. Person 2 later patents an improvement to the invention. In order to make, use, or sell the improved invention, one may need permission from 1 (due to the patent on the original invention), and also permission from 2 (due to the patent on the improvement). For example, suppose person 1's patent has a claim covering apparatus comprising a seat and legs (a chair). Suppose person 2's patent has a claim covering apparatus comprising a seat, legs, and two curved rails (a rocking chair). Someone who would hope to make apparatus comprising a seat, legs, and two curved rails will have to get permission from both person 1 and person 2. Another choice is to wait for person 1's patent to expire; then permission is needed only from person 2. Still another choice is to wait for both patents to expire.
The U S Patent Office publishes a good brochure about patents entitled General Information Concerning Patents.
The question "what is patentable" is a complicated one. Here is a simplified answer. In addition, we will discuss some common misconceptions about patentability.
In order to be patentable, an invention must pass four tests:
There is much misunderstanding over what "unobvious" means in the context of U.S. . The level of unobviousness required to render an invention patentable is a function of the particular art area containing the invention. An experienced patent attorney or agent will often be able to give some indication of the likelihood of a particular invention being held obvious or unobvious. In some cases the unobvious part of an invention (the part that renders the invention patentable) is simply identifying the problem, even if the solution is obvious once the problem has been identified.
If one has invented a novel and unobvious algorithm or piece of computer software, and wishes to obtain patent protection, then one's next step should be to consult one or more patent attorneys or patent agents who are experienced in getting patents on inventions having algorithms or software in them. The law (in the U.S.) is settled that the mere presence of software in an invention does not automatically render it unpatentable. It is commonplace for inventors to obtain patents in inventions composed largely or nearly entirely of software. In the opinion of , many of the well-known cases in the Patent Office Board of Appeals, and many of the well-known cases in the Court of Appeals for the Federal Circuit, in which the patentability of a software-related invention was contested, are instances not of inventions that were unpatentable subject matter, but rather are instances in which the parties got caught up in disputes over the wording and style of the pending claims. Our view is that inventors have been getting strong patent protection for software-intensive inventions for decades, essentially by being thoughtful about the wording and claim-drafting style of the patent applications. Prosecution of software-intensive patent applications tends to take longer than prosecution of some other types of patent applications, for the simple reason that the examining groups handling the former tend to have large backlogs. In 1996, the US Patent Office changed its rules, and you can see the final Examination Guidelines for Computer-Related Inventions in plain text format or in word processor format.
Whenever the Patent Office considers the patentability of an invention, it searches the prior art. The starting point for such searches is generally patents that have already issued in the same art area. This approach doesn't work very well in software areas because until quite recently many inventors in the software arts labored under the (incorrect) impression that the software content rendered an invention unpatentable; as a result there are large gaps in the body of issued patents leaving many software areas undocumented by patent. The Software Patent Institute is building a database of information documenting the known software "folklore" to assist the PTO and others in researching prior art in the software arts.
Yes, you can apply for a patent yourself. It is called applying pro se. Perhaps one-fifth of all issued U.S. patents were applied for pro se, and some of them are actually well written. Most inventors find, however, that an experienced patent agent or attorney can add value in many ways in preparing a patent application, both in bringing past experience to bear in drafting claim language, and in assisting the inventor in appreciating all the inventive aspects of the invention. Furthermore, the agent or attorney is likely to be methodical about following and meeting Patent Office due dates, where a pro se applicant might miss a due date at some point during prosecution.
If you wish to explore the possibility of applying for a patent pro se, then a good starting point is Patent It Yourself from Nolo Press, which you can purchase from Amazon Books. The publisher says the book "is a must for any inventor who wants to get a patent--from the patent search to the actual application. Patent attorney and former patent examiner David Pressman covers use and licensing, successful marketing and infringement." The book is, in fact, good reading even for the inventor who plans to hire patent counsel; it helps the inventor to be a more knowledgeable customer.
There are many ways to obtain copies of patents. You can get a copy of a
US patent by sending $3 and the patent number to
Washington, DC 20231
This service takes a few weeks. Many patent offices and private organizations offer quick turnaround of patent copies. See, for example, the European Patent Office and Dialog.
The Paris Convention is a treaty, adhered to by about 110 countries, which helps those who wish to obtain patent protection in more than one country. To illustrate how the treaty helps an applicant, consider the inventor who desires to apply for patent protection in countries A and B (both of which adhere to the Paris Convention). If there were no Paris Convention, then for the best chances of obtaining a patent in both countries, the inventor would have to file in both countries simultaneously or nearly simultaneously because the publication of the patent in country A would bar filing a patent application in country B. Because of the Convention, however, the inventor need only file in one of the two countries, say country A, and may postpone filing in country B for almost a year. When the filing is done in country B the applicant merely "claims priority" from the filing in country A, and the patent office in country B will treat the country-B application as if it had been filed on the date in which the country-A application was filed.
The Paris Convention is thus very helpful to inventors, for several reasons:
The term "priority date" can mean any of several different things, depending on the context. The "priority date" of a patent application is the date which controls what prior art affects its patentability, whether a statutory bar applies, etc. For many patent applications the priority date is the date on which the patent application was filed with the patent office. In some circumstances a patent application will enjoy an priority date earlier than its own filing date. For example, a continuation or divisional application will enjoy the filing date of the application of which it is a continuation or divisional. Another example is the application which claims priority under the Paris Convention from a counterpart application filed less than one year earlier in another country; such an application has a priority date equal to that of the earlier application. Yet another example is the application which claims priority from a provisional application. Finally, an application may enjoy a priority date by virtue of being a national-phase application arising out of a PCT patent application in which the United States was designated. There are other circumstances in which a patent application will have a priority date differing from its filing date.
PCT stands for the Patent Cooperation Treaty, which is adhered to by about 115 countries. PCT patent applications are administered by the World Intellectual Property Organization. The Patent Cooperation Treaty permits an inventor to file what is called a PCT patent application. The Treaty is the result of an effort by many countries to provide some streamlining of patent applications across several countries at once. The US Patent and Trademark Office has additional information about PCT. The World Intellectual Property Organization has a helpful online brochure Basic Facts about the Patent Cooperation Treaty.
What benefits flow from a PCT application?
For an applicant who has filed a patent application in a particular country, a PCT application offers a way to postpone having to make decisions about filing patent applications in other countries. If there were no such thing as the Patent Cooperation Treaty, then the only opportunity to postpone making decisions about foreign filing would be the opportunity provided by the Paris Convention. Under the Paris Convention, someone who files an application in one country is forced to make a decision, within one year, as to whether to file patent applications in other countries which would claim priority from the first application. A PCT application offers a way to extend the time during which a decision must be made about foreign patent filings, for a longer period than the decision-postponement period provided by the Paris Convention. By filing a PCT application, the applicant can postpone for 30 months (rather than 12 months under the Paris Convention) the decision in many countries about whether or to spend the money for foreign patent filings. In addition, assuming that the first application was filed in a country that has adhered to Chapter II of the Patent Cooperation Treaty, it is possible to perform a step called "demanding preliminary examination" which entitles the applicant to receive an International Preliminary Examination Report which may be helpful in assessing the likelihood of patentability.
The PCT process is helpful to those who don't have enough money to file in several countries, but who expect to have enough money at a later time. A PCT application provides a convenient way to keep the options open for foreign filing for up to thirty months.
Applying for patents in several countries through the PCT system nearly always costs more than applying for patents in the same countries without using the PCT system. Thus, the inventor who is sure that she wishes to file in several countries, and who has enough money now to pay for the filings in those countries, will be saving money by filing directly in those countries (through the Paris Convention) rather than through the PCT system.
Why, then, would anyone file a PCT application? The answers are simple.
First, not everyone knows for sure at the time of the first patent filing which, if any, foreign countries should have patent applications filed. After a year or two the inventor may have more information that makes it easier to know whether to do foreign filings. For example, after a year or two the invention may prove to have great commercial potential in some foreign countries and not others. In particular, the inventor who benefits from having filed a PCT application is the one who discovers between, say 12 and 30 months after the filing date, that it is no longer desirable to perform foreign filing. In this case, when the decision is made to drop the foreign filings the inventor will have saved all the money that would have been spent on foreign filings.
Another possible advantage of a PCT application is that it proceeds on a fixed timetable. The applicant may be sure of receiving a Search Report from the International Searching Authority no later than about 15 months after the priority date of the application. If the applicant demands Preliminary Examination, the International Preliminary Examination Report ("IPER") will be received no later than about 26 months after the priority date of the application. An ordinary U.S. patent application, depending on the backlog in the examining group handling the application, can sometimes go for more than two years before a first Office Action is received. The PCT applicant can thus get faster feedback from a patent office.
Still another possible advantage of a PCT application (if the applicant is from the US or any of certain other countries) is that the applicant may specify where the Search Report and Preliminary Examination Report will be prepared. For the applicant who wants to know as much as possible about the relevant prior art, this permits drawing upon the searching and examination expertise of a selected patent office. For example, if the priority application is filed in the U.S., an applicant may choose to file a PCT application designating the European Patent Office (EPO) for the search and for examination. This will permit the applicant to have the benefit of the searching expertise of both patent offices.
Each PCT patent application has to be searched by a competent International Searching Authority. For US applicants, this is generally the US Patent Office or the European Patent Office. The applicant gets to choose the particular ISA that will search a particular PCT application.
In a PCT patent application in which the applicant has demanded Preliminary Examination, the application has to be examined by a competent International Preliminary Examining Authority, generally the US Patent Office or the European Patent Office. The applicant gets to choose the particular IPEA that will search a particular PCT application.
An international patent application is a patent application filed under the Patent Cooperation Treaty. PCT patent applications are administered by the World Intellectual Property Organization. An international patent application does not, however, lead to an "international patent". It merely leads to the ability to file patent applications in designated countries over a wider range of permissible times than if no international patent application were filed. Other tangible results of filing an international patent application include a PCT publication, a Search Report from the International Searching Authority, and optionally a Written Opinion from the International Preliminary Examining Authority.
EPC stands for European Patent Convention. This convention has given rise to what is called the European Patent Office (EPO). The European Patent Office offers a way to file a single patent application which can lead to patent coverage in all the European countries that belong to the EPC. While the European Patent Office has its historical origins in the European Union, it is interesting to note that the European Patent Office formalities can lead to patent coverage in countries that do not belong to the European Union. For example, Switzerland does not presently belong to the European Union, and yet it is possible to secure Swiss patent protection through the European Patent Convention and the European Patent Office.
The countries that belong to the European Patent Office include Austria, Belgium, Switzerland, Germany, Denmark, Spain, France, United Kingdom, Greece, Ireland, Italy, Liechtenstein, Luxembourg, Monaco, Netherlands, Portugal, and Sweden.
For an inventor, the main decision that has to be made is whether to file directly with the country or countries in Europe in which patents are desired, or whether to do a single filing with the European Patent Office. As a first approximation, if it is only desired to get patent coverage in one or two or three countries of Europe, it may be more economical to file directly with the patent offices in those countries. On the other hand, if the number of countries of Europe in which patent protection is desired is much greater than just one or two countries, then it would be probably be economical to file directly with the European Patent Office.
For planning purposes, a rough estimate of the cost of a European Patent Office filing is $10,000.
IBM has established a search site for US patents, and the US Patent and Trademark Office has set up a site, and they are discussed below.
Those who do not find it inconvenient to travel to the United States Patent Office in Crystal City, Virginia, will find that the public search room at the Patent Office, which is available free of charge, can be a very fruitful resource for patent searching. Searching in the public search room of the U.S. Patent Office permits you to see physical patents, complete with the figures. Depending on the technological area being searched, the figures can be very valuable as you attempt to figure out which patents are relevant to your area and which ones are not. The patents are available in physical groupings called "shoes", each of which contains all the patents in a particular subclass. This means that after you have finished looking at one patent you simply flip past it to the next one in the same subclass, without delay. In contrast, some of the other ways of searching patents do not let you look at the figures, and impose considerable delays as you go from one patent to the next.
Another patent searching resource available to the general public may be found in patent depository libraries, located in many major cities around the United States. These libraries contain searching resources that enable you to view the titles of patents located in a particular numerical classification. You can then jot down the patent numbers that might be of interest based on the titles, and then view the patents one by one on microfiche. This approach can be very cumbersome, and runs the risk of missing important patents. For example, there might be a patent that is very important to your research, but that has a title that does not particularly indicate the importance of the patent. Another drawback to depository library searching is that it can be a bit of a waste of time to go through the microfiche slides one by one to find the particular patents on your list.
Yet another way of to do patent searching is through any of several online computer databases. The online pay services offer the advantage that they cover patents issued outside of the US, as well as published patent applications from countries other than the US.
Several databases are available through Compuserve. At Oppedahl & Larson, we tend to do most of our online computer searching through Dialog. In our experience, Dialog tends to have a more powerful search engine than that available with the Compuserve patent files. In addition, it is our experience that an experienced searcher can get exactly what is needed from Dialog at a lower cost than a comparable search on Compuserve.
It should be appreciated, however, that not all types of searching can be done effectively through online databases. After all, many online databases only carry text information and thus do not provide figures. It should also be appreciated that online patent databases differ from one to the next in their geographic coverage, their comprehensiveness, how far back they go, how up-to-date they are, and in other ways.
This is a very frequently asked question in newsgroups. One resource that is free of charge and that many people have found helpful is the IBM patent searching site. The site contains over 26 years of U.S. Patent & Trademark Office (USPTO) patent descriptions as well as images dating back to 1980. The first entries date back to January 5, 1971. You can search, retrieve and study over two million patents. This services also has databases for European and PCT patent documents. The main advantage of this site is that it is free of charge. Sometimes it is quite slow in responding, presumably because of the large number of users. IBM has done a great service to the Internet community by making this information available free of charge.
Another free-of-charge resource is a search site provided by the US Patent and Trademark Office. The site offers one database containing full-page images, and a second database providing bibliographic content (title, inventor, dates, abstract, citations) which can be helpful for some types of searches.
The World Intellectual Property Organization provides free searching of PCT patent applications from 1998 to the present. The European Patent Office provides searchable databases of European (EP) patents, PCT (WO) patents, worldwide patents, and Japanese patents. Many countries of Europe offer patent searching through their own patent offices, and you can see links to the search services.
Of course, people doing patent searching do it to solve any of a range of questions. If a person is doing a "novelty search", which is a search intended to determine whether a concept is novel (and perhaps patentable), it is necessary to have access to patent information going back for a period of time that makes sense given the technical area being searched. This often means that one needs to have patent records going back at least 10 years and in many cases 20 or 30 years. Such a body of patent information is so large that it would not be easy for anyone to provide that information for free over the Internet. At , we often do novelty searches on Dialog, a commercial online database service. Through Dialog we are able to search databases that contain the full text of U.S. patents, the full text of European patents, and abstracts for patents in many other countries. Depending on the database and subject matter involved the information extends from the present back to about 1970.
Another type of search that some people want to do is an infringement search. This is a search which is intended to uncover any patents that might be infringed by particular proposed device or conduct. Since each patent has an expiration date, such a search typically only requires going back far enough in time to cover all the patents that have not yet expired. In the case of United States patents, this typically requires databases going back 17 years or more. (See also How can I determine whether a particular patent has expired?)
There are, of course, some searches for which the free resources may be helpful.
dialog.com. There is a one-time sign-up fee, an annual fee, and online time costs money. Intellectual property databases available on Dialog include the following:
lex.lexis-nexis.com. There is a one-time sign-up fee, an annual fee, and online time costs money. Intellectual property databases available on Lexis include U.S. utility, design, and plant patents in full text.
Q. I am considering selling a product which would infringe on a patent that was issued long enough ago that it might have expired, but not long enough ago that I know that it has expired. How do I determine if this patent is still in force (in which case I would need to license or design around it) or if it has been allowed to expire, in which case I can use it without fear of repercussions?
A. Several online computer databases help to answer this question. For example, you can check Dialog file 345, Inpadoc, which contains the legal status of patents.
You can check Lexis file Patents Util. If the patent has expired for failure to pay maintenance fees, an expiration date will generally be shown.
You can check Shepard's Patent Citator (found in law libraries). If the patent has expired, the expiration will likely have been mentioned in the PTO Official Gazette. The OG citation will be in the Shepard's volume.
Or you could hire a patent professional who is familiar with such things to look it up for you.
A patent may be contrasted with a copyright in several important ways. A copyright typically covers only the expression of a work, and does not do anything to stop people from appropriating clever ideas that happened to be embodied in that work. In contrast, a patent can sometimes be used to stop someone who looks at a copyright work, extracts the clever ideas from it, and creates a new system embodying those clever ideas. It is only a slight oversimplification to say that if there are clever ideas in your software, and if you wish to protect those clever ideas, you are unlikely to be able to do so through copyright, but may be able to do so through patent.
A U.S. patent is obtained only after preparing a very detailed patent application, and then only after a patent examiner has reached the view that the patent application is allowable. Many patent applications are filed that never yield an issued patent. The patent application process typically costs at least a few thousand dollars and sometimes $10,000 or more, including the fees of a patent attorney or agent. (See What does it cost to get a patent?.)
In contrast, a copyright registration is granted almost as matter of course upon filing a relatively simple and relatively inexpensive copyright registration application.
There is a tension between the notion of trade secrets and patents. One approach to protecting intellectual property is to hold everything as a trade secret. The decision to apply for a patent includes necessarily a decision to take some fraction of one's trade secrets and to give them away, in return for the grant of a patent.
The decision to apply for a patent does not necessarily require giving up all of one's trade secrets, however. One might have trade secrets on inventions A, B, and C, and applying for a patent on C might not require giving up the trade secret status of A and B. However, to obtain a U.S. patent on C, it is necessary that the application contain (1) enough to enable one skilled in the art to practice C and (2) the best mode known to the applicant for practicing C. This might require revealing A and B in the application. If so, it would probably make sense to seek patent protection on A and B as well as on C. Depending on the time sequence, one could patent an invention and simultaneously keep secret an improved version of the invention. For example, if a patent application for invention A is filed, and if an improvement A+ is conceived after the filing of the patent application on A, the improvement A+ could be kept secret.
If the only patent being sought is a United States patent, then the decision to give up trade secrets to obtain a patent is not, at present, an irreversible one. The reason for this is that a U.S. patent application is kept secret by the U.S. Patent Office until such time as a patent issues. At any point prior to payment of the issue fee, an applicant could is permitted to abandon the patent application, in which case it would remain secret thereafter.
One should keep in mind, however, that the U.S. Patent Office has announced its plans to start a program of publishing patent applications 18 months after filing, thus coming into harmony with the majority of countries having patent systems. This change, if implemented, puts the U.S. applicant in the same position as applicants in other countries, having to make a decision whether to seek a patent or rely on trade secret protection.
At such time as the patent issues, it reveals to the public any and all trade secrets that are contained within it. To review what was said earlier, recall that at the time the patent application was being drafted, the drafter would have included within the application everything required to enable one skilled in the art to practice the claimed invention. This means that the issued patent application will contain not only the exact wording of the invention, but will also contain such other things as are required to enable someone skilled in the art to practice the invention. In addition, when the (U.S.) patent application was being prepared, it had to include the best mode known to the applicant for practicing the invention. This means the issued patent contains not only that which is necessary to enable someone to practice the invention, but also discloses the best mode known to the applicant for practicing the invention.
As mentioned above, the U.S. patent system presently permits an applicant to "have it both ways" regarding patents and trade secrets. If it turns out (after several years of patent prosecution) that patent protection is not available, the applicant can simply abandon the application and retain the trade secrets therein. It is quite different in most countries outside of the U.S., where each patent application is published 18 months after the priority date. Thus, to give a common example, a patent application might be filed in the U.S. on a particular date, and a counterpart application might be filed outside the U.S., for example in Europe, slightly less than one year afterwards. What happens next is that the European Patent Office notices that the patent application is claiming priority from a U.S. application, and makes a note to publish the application 18 months from the U.S. filing date. Thus, 18 months after the U.S. filing, the European patent application becomes published, and all the trade secrets present in that application are no longer trade secrets.
Again, as mentioned above, the U.S. Patent Office has announced plans to begin publishing patent applications. Before relying on the above discussion, you should find out whether the proposed publication procedures have been finalized.
Depending on the country, there are sometimes ways to withdraw an application in advance of the 18-month publication date, thus protecting its trade secrets. Thus the applicant who wants to pursue patent protection outside of the U.S., and yet who wants to maintain trade secret protection if patent protection proves unlikely, has to make a decision about this before the 18 months are up.
For some applicants the 18-month publication is not as great a drawback as it might seem. After all, some inventions get revealed to the public automatically through sales of the patented product, in which case revelation of the product's secrets through the 18-month publication would not make much difference. In any event, the applicant must consider the possibility of loss of a trade secret through issuance of a U.S. patent or publication of a patent application in a country outside the United States.
It is not inconsistent to seek both copyright and design patent protection, depending on the nature of what is being protected. Design patent protection is, of course, available only on articles of manufacture and then only on the novel and ornamental aspects thereof. Copyright protection is available on most articles of manufacture but also on many other works.
The copyright term (in the US) is 50 or 75 years, while the design patent term (in the US) is 14 years. Copyright protection is available without your even having to ask for it, although of course it is prudent to place a copyright notice on the work and to register the copyright with the copyright office. Design patent protection is available only after filing a design patent application with the Patent Office, and then only if the application is allowed by the Patent Office after examination.
Under 35 USC section 287, a patent owner is required to mark goods embodying the invention with the patent number. The owner's failure to mark the product runs the risk that the patent owner will not be able to collect damages from infringers during the time that the product was distributed without patent markings. (This obligation to mark does not apply to a patent that has only method claims.)
A proper patent marking would the words "U.S. Patent" followed by the patent number. Many manufacturers choose to provide a more detailed patent marking, such as "May be covered under one or more of the following U.S. patents...".
The law is always changing in the area of patent marking, and the application of the law is quite specific to the patent claims and to the goods involved, so anyone who is concerned about a particular marking should seek advice of competent counsel. Patent marking is discussed in Oppedahl & Larson News. Carl Oppedahl has published a law review article on patent marking entitled "Patent Marking of Systems," Santa Clara Computer and High Technology Law Journal, Vol. 11, No. 2, p. 205 (1995).
Laboratory notebooks are important for several reasons. In the U.S., if two applicants are seeking a patent on the same invention, the patent is not necessarily awarded to the one who filed first, but is sometimes instead awarded to the one who was the first to invent. Establishing priority of invention often depends on such documentation as laboratory notebooks. An inventor who fails to keep a laboratory notebook runs the risk of having difficulty establishing the date on which the invention was made, and thus may lose out in a priority contest with another inventor.
Laboratory notebooks are also important for other reasons. For example, when one is accused of taking a trade secret from someone else, if a laboratory notebook shows that one was in possession of the contested information before any access to the adversary's information, this helps to negate a claim that the secret was stolen from the adversary.
Anyone who is going to publish an article, whether it be in a scholarly journal, the trade press, or elsewhere, would be wise to consider whether such a publication would be a bar to patent protection. For example, where is desired to get patents in countries other than the United States, it would be wise consider filing a patent application prior to the publication. If you are quite sure you will not want patent protection in countries outside of the U.S., and if the only patent protection you think you would ever want is protection within the U.S., then you might take some comfort in the one-year grace period offered by U.S. . In such a case you would mark the one-year anniversary of the publication on a calendar and be sure to file the patent application before the year was up.
However, there are many other reasons why it is wise to file a patent application soon, rather than to postpone it. Even if you are sure there is no reason to rush the patent filing, there are reasons why it is wise not to allow almost the entire year to pass, for example because it takes a while to prepare and file a patent application.
There are other reasons not to postpone filing a patent application. For example, the date you file a patent application sets a limit on the prior art available to the Patent Office in rejecting your patent application. The sooner you file the application, the less prior art is available to the Patent Office to be used to oppose your patent application.
Whenever a publication is imminent, it is wise consider possible patent consequences, and to seek the counsel of a competent patent attorney or agent.
Whenever sales of a new product are imminent, attention should be given to the question of whether one or more patent applications should be filed. In particular, if one puts off filing a patent application until after a product has been shipped, this may leave only the U.S. as a place in which patent protection may be gotten, for the reason that many countries other than the U.S. deny patent protection to someone who divulges the invention to the public, prior to filing a patent application.
If you are quite sure you will only want patent protection in the U.S., then you might choose to take some comfort in the one-year grace period offered under U.S. . But there are plenty of other reasons why it may be unwise to postpone filing solely because of the grace period; someone else may be planning to file a patent application on the same invention, for example.
Whenever a sale or offer for sale of the invention is imminent, seek advice of competent patent counsel.
For some technological areas the answer to this question is easy to find, while other technological areas the answer may be very difficult. For example, if a product has been on the market for a very long time, one can have some confidence level that any patent that might have covered it would have long since expired. But the mere passage of a long period of time is not, by itself, a complete assurance that no patent is infringed, for the reason that a patent could issue from a patent application that had been pending before the U.S. Patent Office for a very long time.
Depending on the particular business circumstances, it may be advisable to conduct a patent search for patents that might be infringed, perhaps by searching patents in certain subject areas. Such a search may take place through online public databases, or by an in-person physical search of patents at the Public Search Room at the U.S. Patent Office.
Another way to learn of patents that might require study is to look at patent markings on products made by competitors. (Patent marking is discussed in Oppedahl & Larson News. Carl Oppedahl has published a law review article on patent marking entitled "Patent Marking of Systems," Santa Clara Computer and High Technology Law Journal, Vol. 11, No. 2, p. 205 (1995).)
Sometimes the business circumstances are such that one can be fairly sure that the only patents that would be of concern are patents held by a particular adversary. In such a case the usual first step is to identify and study all patents (and published patent applications) owned by that adversary.
Summary: Anyone who is concerned about the possibility of infringing patents held by others should seek advice of competent patent counsel.
As the term is generally used, an opinion letter is a document representing a legal opinion given by counsel. The opinion might be on any of a wide range of topics.
In the particular area of , one very important category of opinion letter is an opinion of patent counsel regarding a patent held by an adversary. For example, if one has the misfortune to be the losing party in a patent infringement case, the finding that one is the infringer of a valid patent may leave one liable for damages. In addition, if the court decides that the infringement was willful, the damages may be increased by a factor of up to three. This so called "trebling" of damages only occurs if the infringement was found to be willful. If, however, the infringer had a good-faith belief that the conduct was noninfringing or that the patent was invalid, then this state of mind may negate a finding of willfulness, in which case the damages will not be trebled.
For this reason, when a manufacturer encounters a patent for which some argument might be made that it is an infringer, it is prudent for the manufacturer to seek advice of patent counsel. If patent counsel determines that the patent is invalid or that its claims are not infringed, a decision may be made to memorialize this finding in an opinion letter. As described above, such an opinion letter, if well-founded and well-reasoned, may negate a subsequent finding of willfulness and thus may avoid trebling of damages.
Effective June 8, 1995, as a consequence of the adherence of the U.S. to GATT, it is possible to file what is called a Provisional Patent Application with the U.S. Patent and Trademark Office. The Provisional Patent Application is intended to be a relatively low-cost way of postponing the cost and effort of drafting and filing a full patent application. The provisional application need not contain claims, and the filing fee is modest ($160 for large entities, $80 for small entities). The applicant may then wait almost a year before filing a patent application. The twenty-year patent term that runs from the first U.S. filing date does not start with the provisional application, but instead begins only with the date of the subsequent patent application. As a result, one may postpone the start of the 20-year patent term by up to one year by the use of a provisional patent application. The provisional application may serve as a priority document for non-US convention filings.
Under U.S. , the provisional application is subject to the same burdens under 35 U.S.C. § 112 as a patent application. This means that the provisional application must be complete enough to enable one skilled in the art to practice the invention, and means that the application must disclose the best mode known to the applicant for practicing the invention. These requirements are likely to lead to difficulties for those who file sketchy provisional applications. One who files a provisional application (and who fails to satisfy the requirements of § 112) would be making a mistake to sit back and rely on that application as a justification for waiting eleven months before taking the time and trouble to prepare and file a full patent application.
A second potential drawback of the provisional filing is that it postpones, by a year, any hint or clue from a patent examiner as to whether or not the invention is likely to be patentable. No search report or office action will come during the pendency of the provisional application; they will only be received after the filing of the patent application. For the applicant who is considering whether or not to file patent applications in countries outside of the U.S., the use of a provisional application virtually guarantees that no clues to patentability will be received from the U.S. Patent Office that might assist in deciding whether or not to spend the money on foreign filing. The applicant who files a patent application (rather than a provisional application) may, in contrast, receive an Office Action before the year is up for making foreign-filing decisions, and the content of the Office Action may be helpful in deciding what to do about foreign filing.
The advantages and disadvantages of provisional applications are discussed in the Oppedahl & Larson News. The US Patent and Tradmeark Office has prepared a brochure entitled Provisional Application for Patent: What It Is and How to Use It.
A provisional application differs in many ways from an Invention Disclosure Document. Most importantly, a provisional application establishes a filing date which serves as the priority date for a patent application filed within one year. In contrast, an Invention Disclosure Document does not provide a priority date for any later-filed patent application, but merely shows that an applicant was in possession of the contents of the Disclosure Document as of the date the Disclosure Document was filed. A provisional application has a larger filing fee ($160 or $80, as compared with $10).
Note that if the one-year anniversary of the filing of the Provisional Application falls on a weekend or holiday, the Patent Application that is to be filed within one year has to be filed on the preceding day that is not a weekend or holiday. Stated differently, the time limit for filing a patent application claiming priority from a Provisional Application is often actually less than a year.
A Provisional Application, to obtain a filing date in the U.S. Patent Office, has to contain the items set forth in 37 CFR § 1.51(a)(2). The requirements of that Rule are summarized here but the reader is advised to consult the Rule personally and to be familiar with it. The Provisional Application requires a specification satisfying 35 U.S.C. § 112, except that it need not contain claims. In simple terms the specification must enable one skilled in the art to practice the invention, and must disclose the best mode known for practicing the invention. A drawing must be provided if needed to explain the invention, see 37 CFR § 1.81-1.85. The Provisional Application must also identify the inventors who contributed to the subject matter disclosed in the application. The filing fee ($150 or $75) is required. A cover sheet is also required. The applicant is not required to use an official Patent Office cover sheet, but may employ any cover sheet containing the required information, namely the specific identification of the application as a Provisional Application; the name or names of the inventor or inventors, the residence of each inventor, the title of the invention, the name and registration number of the attorney or agent if any, the docket number (if any) used by the applicant, the correspondence address, and the name of the U.S. Government agency and government contract number (if the invention was made by an agency of the U.S. government or under a contract with an agency of the U.S. Government. Suitable Provisional Application cover sheets are available free of charge from the U.S. Patent Office, Washington, DC 20231.
U.S. permits an applicant to file a Provisional Application pro se, that is, without representation by a patent attorney or agent. It is easy to identify some possible pitfalls of failing to consult a competent patent attorney or agent, however. For example, at some later time one would draft claims, for filing in the patent application within the one year period. It might develop, however, that the claims are not supported by the specification of the Provisional Application. To avoid such an unhappy result one might choose to draft the patent claims at the time the Provisional Application is being written, so that one may be sure to include in it whatever is needed to support the claims.
A further pitfall is to wait until the year is nearly expired before consulting competent patent counsel, lulled by a false sense of security from the Provisional Application's one-year duration. It is much wiser to consult competent patent counsel soon after filing the Provisional Application. This permits counsel to review the Provisional Application and, if it is thought to be defective or incomplete another application may be filed promptly, so that one has a filing date that is not too much worse (later) than the filing date of the defective or incomplete Provisional Application.
All patent applications received at the US Patent Office are kept secret by the Patent Office. The most commonly occurring exception to this rule is that when a patent issues, the application file becomes public. (Note that the entire application file becomes public, not just the issued patent itself.)
Another common exception is the Eighteen-month publication rule. The Eighteen-Month Publication of Patent Applications provisions apply to applications (other than for a design patent or provisional applications) filed under 35 United States Code (U.S.C.) 111(a) on or after November 29, 2000, and to applications in compliance with 35 U.S.C. 371 that resulted from international applications filed under 35 U.S.C. 363 on or after November 29, 2000.
The Eighteen-Month Publication provisions provide that, with certain exceptions, applications for patent shall be published promptly after the expiration of 18 months from the earliest filing date for which a benefit is sought under Title 35 U.S.C. and that an application may be published earlier than the end of such eighteen-month period at the request of the applicant.
For more information regarding the Eighteen-Month Publication provisions, see: "Eighteen Month Publication of Patent-Applications" on the U.S. Patent and Trademark Office web site.
The public searching resources contain no information about pending provisional applications.
The law of provisional applications is quite new, dating from just June 8, 1995. It will develop in coming months and years. At present there is no single clear answer to your question. The only answer that is sure at this point is, if a provisional application is to provide a priority date for a claim in a patent application, the application must satisfy 35 USC § 112 with respect to that claim.
There is a world of difference. A patent application has the prospect of leading to an issued patent; the disclosure document does not. It is extraordinarily easy and inexpensive to file a disclosure document yourself, and there is little need to pay someone else to do it for you. A patent application, on the other hand, is not easy to do yourself, and the Patent Office fee is much higher.
Quoting from § 1706 of the Manual of Patent Examining Procedure:
The Patent and Trademark Office accepts and preserves, for a limited time, "Disclosure Documents" as evidence of the dates of conception of inventions.
A paper disclosing an invention and signed by the inventor or inventors may be forwarded to the Patent and Trademark Office by the inventor (or by any one of the inventors when there are joint inventors), by the owner of the invention, or by the attorney or agent of the inventor(s) or owner. It will be retained for two years and then be destroyed unless it is referred to in a separate letter in a related [patent] application within two years.
The Disclosure Document is not a patent application, and the date of its receipt in the Patent and Trademark Office will not become the effective filing date of any patent application subsequently filed. However, like patent applications, these documents will be kept in confidence by the Patent and Trademark Office until a patent is granted.
This program does not diminish the value of the conventional witnessed and notarized records as evidence of conception of an invention, but it should provide a more credible form of evidence than that provided by the popular practice of mailing a disclosure to one self or another person by registered mail.
A Disclosure Document is available to the public when an application which refers to it issues as a patent.
Content of a Disclosure Document
Although there are no restrictions as to content and claims are not necessary, the benefits afforded by the Disclosure Document will depend directly upon the adequacy of the disclosure. Therefore, it is strongly urged that the document contain a clear and complete explanation of the manner and process of making and using the invention in sufficient detail to enable a person having ordinary knowledge in the field of the invention to make and use the invention. When the nature of the invention permits, a drawing or sketch should be included. The use or utility of the invention should be described, especially in chemical inventions.
Preparation of the Document
The Disclosure Document must be limited to written matter or drawings on paper or other thin, flexible material, such as linen or plastic drafting material, having dimensions or being folded to dimensions not to exceed 8 1/2 by 13 inches (21.6 by 33 cm.). Photographs also are acceptable. Each page should be numbered. Text and drawings should be sufficiently dark to permit reproduction with commonly used office copying machines.
In addition to the fee described below, the Disclosure Document must be accompanied by a stamped, self-addressed envelope and a separate paper in duplicate, signed by the inventor, stating that he or she is the inventor and requesting that the material be received for processing under the Disclosure Document Program. The papers will be stamped by the Patent and Trademark Office with an identifying number and date of receipt, and the duplicate request will be returned in the self-addressed envelope together with a notice indicating that the Disclosure Document may be relied upon only as evidence and that a patent application should be diligently filed if patent protection is desired. The inventor's request may take the following form:
"The undersigned, being the inventor of the disclosed invention, requests that the enclosed papers be accepted under the Disclosure Document Program, and that they be preserved for a period of two years."
The Disclosure Document will be preserved in the Patent and Trademark Office for two years and then will be destroyed unless it is referred to in a separate letter in a related patent application filed within the two-year period. The Disclosure Document should be referred to in a separate letter filed in a pending application by identifying the Document by its title, number, and date of receipt. Acknowledgment of receipt of such letters is made in the next official communication or in a separate letter from the Patent and Trademark Office. Unless it is desired to have the Patent and Trademark Office retain the Disclosure Document beyond the two-year period, it is not required that it be referred to in a patent application.
A fee of $10 (37 CFR § 1.21(c)) is charged for filing a Disclosure Document. Payment must accompany the Disclosure Document when it is submitted to the Patent and Trademark Office.
Warning to Inventors
The two-year retention period should not be considered to be a "grace period" during which the inventor can wait to file his [or her] patent application without possible loss of benefits. It must be recognized that in establishing priority of invention an affidavit or testimony referring to a Disclosure Document must usually also establish diligence in completing the invention or in filing the patent application since the filing of the Disclosure Document.
Inventors are also reminded that any public use or sale in the United States or publication of the invention anywhere in the world more than one year prior to the filing of a patent application on that invention will prohibit the granting of a patent on it.
If the inventor is not familiar with what is considered to be "diligence in completing the invention" or "reduction to practice" under the , or if he has other questions about patent matters, the Patent and Trademark Office advises him to consult an attorney or agent registered to practice before the Patent and Trademark Office. A Directory of Registered Patent Attorneys and Agents Arranged by States and Counties titled ATTORNEYS AND AGENTS REGISTERED TO PRACTICE BEFORE THE U.S. PATENT AND TRADEMARK OFFICE is available from the Superintendent of Documents, U.S. Government Printing Office, Washington, D.C. 20402. Patent attorneys and agents may be found in the telephone directories of most major cities. Also, many large cities have associations of patent attorneys which may be consulted.
Patent prosecution means preparing and filing patent applications, and taking the many subsequent steps involved in progressing toward issuance of a U.S. Patent.
A divisional patent application is an application claiming priority from some previously filed patent application (called a "parent application") in which more than one invention was disclosed. The divisional application has claims directed to a different invention than that claimed in the parent application. The most common way that this happens is that the Patent Office rules that your application contains more than one invention, communicating this in what is called a "restriction requirement". The applicant then elects to pursue one of the inventions in that application (the "parent application"), and optionally submits a "divisional application" containing the claims regarding another of the inventions. The divisional application is entitled to the filing date of the parent application as its priority date. It is not uncommon to receive a restriction requirement identifying several inventions, leading to several divisional applications and several issued patents.
Under GATT, if the application was filed prior to June 8, 1995, it is disavantageous to file a divisional application since the divisional application may end up with a shorter patent term. One option, if the application was filed prior to June 8, 1992, is to use a rule under GATT in which the applicant pays a fee (equal to the cost of a new filing fee) to have the extra invention considered in the same application rather than in a divisional application.
Under United States patent practice, a continuation patent application is an application which claims priority from a previously filed application. A continuation application is usually filed when the Patent Office has responded to the parent application with a "final" office action (rejecting the claims in the application), but the applicant wishes to revise the claims again. A continuation application receives the priority date of its parent application. A continuation application is often filed using the file wrapper continuation (FWC) administrative procedure.
A related type of patent application is the continuation-in-part (CIP) application.
Under GATT, if the rejected application was filed prior to June 8, 1995, it is disavantageous to file a continuation application since the result may be a shorter patent term. One option, if the filing date of the rejected application is prior to June 8, 1993, is to use a rule under GATT in which the applicant pays a fee (equal to the cost of a new filing fee) to have the finality of the rejection withdrawn.
Under United States patent practice, it is possible for the owner of a pending patent application to file a what is called a "continuation-in-part" patent application. A CIP patent application is an application which contains some matter in common with a previous patent application (called the "parent" application), and that also contains new matter, and which was filed at a time when the parent application was pending. If such an application issues as a patent, then the patent has a sort of a blurred priority date. It is possible that some claims of the patent enjoy the priority date of the parent application, while other claims might enjoy only the filing date of the CIP application as their priority date.
It is no longer possible to file "File Wrapper Continuation" patent applications. "FWC" is a term specific to the U.S. Patent Office, and was once a type of continuation patent application which claimed priority from a previously filed application. It was easier (from the paperwork point of view) to file than other continuations since it was effectively simply a request that the Patent Office reuse an application file already in its possession. The FWC has been supplanted by the "CPA" or "continued prosecution application".
There are several kinds of searches with varying cost. The only way to know which kind of search to do is to talk with the client and to determine what the client's needs are, of course.
Categories of searches include:
Once it has been determined the category of search that is desired by the client, the next step is to figure out what type of search to do. Types of searches include:
In the United States, the law that governs patents is Title 35 of the United States Code, commonly cited as "35 USC". It incorporates the Patent Cooperation Treaty (discussion, text), and changes made for conformity to the intellectual property provisions of the General Agreement on Tariffs and Trade (discussion, text).
In the United States in the 1800's, there was a requirement that the applicant provide a working model of the invention. The requirement that each applicant submit a model was dropped by the late 1800's, although many of the models may now be seen in the Smithsonian and elsewhere and are a fascinating glimpse into the creative efforts of inventors from the past century.
Examiners in the US Patent Office do, to this day, have the power to require submission of a working model in a particular case, but the requirement is imposed very rarely, usually in cases where an applicant claims to have invented a perpetual motion machine.
An H document is a Statutory Invention Registration (SIR). An applicant for a US patent may, if desired, give up the ability to obtain a patent and instead pay the US Patent Office to publish it as an SIR. The main benefit of this is that it keeps others from getting a patent on the same invention.
An RD document is a Research Disclosure (RD). Anyone who wishes to do so may pay a British company, Kenneth Mason Publications Ltd., to publish an invention disclosure. Some disclosures are anonymous, while others are attributed. Like an SIR, an RD has the effect of keeping others from getting a patent on the same invention.
There is no "standard royalty rate" or "average royalty rate" for a patent. The royalty rate for a particular patent license is simply a function of negotiation between the patent owner and the licensee. One patent license may have a royalty rate of a small fraction of a percent, while another may be ten percent. What must be kept in mind, too, is that the character of a patent license is strongly affected by its definition of the "royalty base" to which the royalty percentage is applied.
For many patent owners, what is desirable is to figure out the "value added" by the patented invention, and to collect a significant fraction of that value through the royalties.
Sometimes it can be helpful, during patent license negotiations, to retain intellectual property counsel with experience in patent licensing.
The traditional answer is, "you can have fast, cheap, and high quality, and you get to pick any two."
There are many circumstances that require preparing and filing a patent application quickly. Examples include:
Patent practitioners are accustomed to occasionally having to prepare and file patent applications in a hurry when it is necessary. But it is much better in every way if the patent practitioner is able to start the work with more time to spare. This permits checking the work, revising the application, detecting errors, and obtaining more information from the client if necessary. Any writing project comes out better if the writer is able to put it down for a while and then come back to it and improve it.
Having said all this, let's try to answer the original question.
Where the subject matter is simple (e.g. an improved mouse trap with three or four moving parts) the preparation of a patent application may take only a few hours. But most patent applications are not simple. A patent application directed to a complicated system of software and electronic hardware may require forty hours of writing, spread out over several weeks. With such patent applications it is essential that the inventors review the draft carefully to see what else needs to be included. It often happens that upon review of the draft, the inventors identify entire additional aspects of the invention that the attorney or agent was not told about. These aspects have to be included in the application which takes more time. At this point the claims are revised, and it is necessary to revisit the question who the inventors are (which is defined with respect to the claims) and a new inventor may be added to the list. That inventor must review the entire application as well, and perhaps more material is identified that needs to be added.
Where complex subject matter is involved, an experienced and knowledgeable patent attorney or agent can nonetheless sometimes prepare and file an entire patent application in a day or two. It is extremely exhausting to do so, and the attorney or agent generally has to take off a couple of days from work afterwards to decompress. But if there is a rush, perhaps for one of the reasons given above, then it has to be done.
For the client that wants to be able to call upon their patent counsel to do such rush-type patent filings, it is imperative to keep the attorney or agent fully informed about all facets of the client's business at all times. This background is necessary for the attorney or agent to do a good job.
A few categories of patent application filing can sometimes be done quickly, within a few days. These categories include the following:
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