Patents

Patents are essential legal documents for the protection of ideas. Such ideas include both simple and complex breakthroughs in technology and often become the foundation of a profitable business. A government grants patents to inventor(s) who may wish to start their own business, license or otherwise protect their invention. Large corporations often obtain patents to maintain their competitive edge in their industry by protecting their exclusive right to use their innovations or as a defensive mechanism to prevent others from making, using or selling the patented invention for any reason. Many companies obtain patents to license technologies ancillary to their core business as an additional source of revenue.

Although U.S. patents must be applied for in the name of the true inventor(s), the patent rights may (and typically are) assigned or transferred to another, including the inventor's employer.

A patent protects an invention by granting the patent owner the right to prohibit others from making, using, and selling the patented invention within the jurisdiction granting the patent for a period of up to twenty years and provided any periodic governmental fees are paid. These rights are granted in exchange for full disclosure of the invention to the public. Because patents are "territorial," a patent application must be filed in every jurisdiction/country in which protection is desired. Please see our discussion on International protection for strategies and tools for protecting an invention in multiple countries throughout the world.

In the United States, inventors who wish to protect their inventions are encouraged to file patent applications for their inventions without delay. However, U.S. patent laws allow inventors a one-year "grace" period to sell or disclose their invention to the public before filing for a patent. After the one-year period, the invention is in the public domain and cannot be patented. However, this one-year "grace" period is not available in most foreign countries. Therefore, if foreign patent protection is to be considered, a U.S. patent application should be filed before the sale or public disclosure of the invention.

Before granting a patent, the Patent and Trademark Office (Patent Office) of the jurisdiction involved reviews the patent application to be certain that the claimed invention is novel (new), non-obvious (not a minor variation or combination on what has been done before), and clearly described and written in the patent application.

The initial processing of a patent application typically takes two to three years from the time of its filing with the Patent Office. The patent examiner will review the patent application and make an initial determination of the invention's patentability, and will present his or her findings to the inventor's attorney. Our experience is that well over 90% of patent applications are initially rejected, at least in part, by the patent examiner.

After receiving the examiner's report, the inventor, typically through a patent attorney, corresponds and negotiates with the Patent Office (this is often called "patent prosecution") to assure that the scope of the patent rights are consistent with the prior technology, the inventor's needs and the requirements of the Patent Office and patent laws.

Assuming the required governmental patent maintenance fees are paid, Patents generally expire after twenty years from the earliest date the application for patent was filed. Once a patent expires, anyone can make, use or sell the invention. For the most part, a patent cannot be "extended" or renewed.

Although not a requirement for filing a patent application, a patentability search of known technology is a useful tool for determining the best course of business. Following the patentability search, the attorney can advise an inventor as to whether a patent application should be filed and represent the inventor before the Patent Office in the prosecution of an application. A patentability search conducted prior to filing a patent application may also facilitate the prosecution of the patent application and assist in obtaining the broadest possible scope of patent rights for the inventor.

 

Provisional Patent Application

A provisional patent application (available only in the United States) is a very useful tool for obtaining a "priority date" (the effective filing date of a patent) while reducing the formal requirements and initial costs of filing a patent application. Although a full or complete patent application requires many formalities, including most notably the "claims" (which define the legal scope of protection afforded by the patent), a provisional patent application typically is not required to have any claims and has no formal requirement other than to describe the invention in sufficient detail so as to allow others to make and use the invention.

The provisional patent application may consist of a technical paper or papers, pictures, flow charts, presentations or any other printed material that fully describes the invention. While the provisional application does not require claims and is not examined, the application becomes abandoned after 12 months and therefore the inventor must file a full patent application (and any desired foreign patent applications) that claim priority to the United States provisional patent application within that 12-month period in order to receive the benefit of the earlier filing date obtained by the provisional patent application.

One of our attorneys would be glad to review any written material to make an initial determination of whether or not the material is sufficient for filing a provisional patent application.