US Patents and US Patent Applications

US Patent Law Overview

Generally, a patent is a property right granted by the United States to an inventor to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States for a limited time in exchange for a full public disclosure of the invention.

Invention Disclosure Document and Meeting

Typically, we ask the inventor to fill out an Invention Disclosure Document to aid us in understanding the invention and to have relevant information for filing purposes.  Due to time constraints, the inventor may not have time to fill out the invention disclosure document.  Thus, in those cases, we move to the next stop of the patenting process by conducting an invention disclosure meeting, where we meet with the inventor to discuss the invention and any disclosure documents regarding the invention.

During the invention disclosure meeting, we initially ascertain the familiarity of the inventor with the US patenting process.  Depending on the inventor’s knowledge, we go through the substantive and procedural requirements of a patent application that the inventor may not be aware of so that the inventor understands the requirements under the US patent law.

Next, after the inventor understands the patent law requirements, we ask the inventor to

• review the background of the invention and any prior art;
• disclose the objectives of the invention, how the invention works, any embodiments of the invention, and any advantages of the invention;
• review any disclosure documents, including any detailed descriptions of the invention and any figures; and
• explain the differences between the prior art and the invention.

Finally, once we have a working understanding of the invention, we work with the inventor to

• identify patentable features of the invention by analyzing the novelty and obviousness of the invention; and
• draft claims to cover the patentable features of the invention.

During the identification of patentable features, we often challenge the inventors by arguing against the patentability of the invention in order to strengthen the quality of the patent application and to withstand attacks by third parties (including competitors and USPTO Examiners).  The draft of the claims helps us focus the written description of the invention and allows the inventor to provide feedback regarding the scope of the claims and subject matter of the claims.

US Patent Application Overview

There are two main categories of patent applications, one is a provisional patent application and the other is a non-provisional patent application.  A provisional patent application is a reservation of patent rights and is not examined; whereas, a non-provisional patent application is examined by the USPTO to determine whether an invention is patentable.

Provisional Patent Applications

A provisional patent application (not applicable for design patents) is a place holder of sorts and reserves a filing date for an invention.  The reservation of the filing date only lasts for one year.  In order to preserve the filing date of the provisional patent application, the inventor must file (or convert to) a non-provisional patent application within one year from the filing date of the provisional patent application.  If the inventor fails do this, the priority date of the provisional patent application is lost.

The requirements for filing a provisional patent application are the same in terms of substance to a non-provisional patent application.  In particular, the provisional patent application must contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.  However, the provisional patent application does not have to have a claim, nor does the provisional patent application have to meet the many formality requirements that a non-provisional patent application must meet.

Non-provisional Patent Applications

A non-provisional patent application is what is commonly referred to as a patent application or a regular patent application.  The notable differences for a non-provisional patent application when compared to a provisional patent application is that a non-provisional patent application is examined, must have at least one claim, and must meet formality requirements under the US patent law.

In order to obtain a patent for an invention, a non-provisional patent application for the invention must be filed with the United States Patent and Trademark Office (“USPTO”).  The non-provisional patent application includes an abstract of the invention, a background of the invention, a fully enabling disclosure of the invention, figures (if any) to provide visual illustrations, and a listing of claims that state the legal boundaries of the invention.  The non-provisional patent application must be filed within one year of the first public disclosure of the invention (if any), otherwise the applicant may lose their patent rights with respect to the invention.

Upon meeting the USPTO filing requirements for the non-provisional patent application, the USPTO examines the non-provisional patent application to determine whether the disclosed invention meets the substantive and procedural requirements of US patent law.  The most important requirements of US patent law are that the invention must be novel, nonobvious, adequately described and enabled in the disclosure, and claimed in clear and definite terms.  Typically, the USPTO issues an office action rejecting the non-provisional patent application due to failing to meet any of these requirements.  We work closely with the applicant to overcome the rejections.  Generally, it may take several office actions and amendments in response to the office action before the USPTO is persuaded to grant a patent for the invention.  The time span from the filing date of the patent application to the granting of the patent (if any) can be anywhere from 3 – 5 years.

Types of US Patents

There are three types of patents: (1) a utility patent; (2) a design patent; and (3) plant patent.

A utility patent protects new, nonobvious, and useful inventions.  An invention for a utility patent must fall under one of the following subject matters to be patentable under US law:

• a process;
• a machine/apparatus;
• an article of manufacture;
• a composition of matter; and
• an improvement of any of the above.

A design patent protects the ornamental design of an article of manufacture.  For instance, if you have a new and not obvious ornamental design for a cellular phone (or any other manufactured product), then you can apply for a design patent to protect that ornamental design.

A plant patent protects asexually reproduced plant varieties.

Terms of Patents

Utility Patent – begins on the date the patent is granted and usually ends 20 years from the filing date of the patent application.

Design Patent – begins on the date the patent is granted and ends 14 years from that patent grant date.

Plant Patent – begins on the date the patent is granted and usually ends 20 years from the filing date of the patent application.