What does the term “Prior Art” refer to when discussing Patents?
Prior Art is a term used by the USPTO to define similar documents and products that have a priority date of issue earlier than the filing date of the innovation seeking patent protection.
Can I conduct my own Patent Search?
While anyone is allowed to conduct a market-based and USPTO-based Web search to evaluate the viability of their innovation, it can be complex. The real importance is in the analysis of the oftentimes, massive and overwhelming Search results. Thus, to derive the most actionable value from Search results, it is best conducted by a professional who has been trained to identify which results are most pertinent and why.
Conducting a Patent Search is often undervalued or overlooked, leading to costly dead-ends when a Patent application is later denied due to existing prior art.
What is a Patentability Opinion?
A Patentability Opinion is the culmination of relevant Patent Search results identifying and describing patentable distinctions for an invention. Such an Opinion should guide innovators on whether it is in their best interest to file for Patent protection as well as support the validity of IP that has already been granted, so clients know how best to further navigate in the marketplace.
How do I know if something is patent-eligible?
The legal answer is a simple one. An innovation must be novel and non-obvious to be patentable. However, knowing or attempting to discover the meaning of “non-obvious” can be difficult.
What is patentable?
The following are patentable as a Utility Patent:
- Article of manufacture
- Composition of matter
- Improvement of any of the above
The ornamental design of an article of manufacture is patentable as a Design Patent.
Asexually reproduced plant varieties can be patent eligible as either a Design or Plant Patent.
What is not patentable?
Laws of nature
- Physical phenomena
- Abstract ideas
- Inventions which are not useful (such as perpetual motion machines) and/or offensive to public morality.
Literary, dramatic, musical, and artistic works are not patentable, but can be Copyright protected.
Is software patentable?
Yes! The Supreme Court has upheld a two-step framework for determining the Section 101 patent-eligibility of a method or process claim, which the Court previously articulated in the 2012 Mayo decision on the patentability of a diagnostic method, as applied to computer-implemented inventions.
The Two-Part Test is:
- Does the software improve the function or operation of a particular apparatus, or
- Does the software change something in the real world to a different state or thing (the result upon which a human can make a decision or take an action)?
What constitutes Public Disclosure?
Public Disclosure has been defined by the U.S. Patent & Trademark Office (USPTO) as marketing an invention or offering the invention for sale where the details of the invention are described publicly. This includes disclosing 1) the detailed description of an invention in a publicly available document (either in text or Web-based) and/or 2) the details of an invention are given in a presentation in a public forum.
Discussing the details of an invention behind closed doors with individuals who have been informed that the information is confidential AND/or who have signed a Non-Disclosure Agreement is not considered “Public Disclosure.”
What is the impact of Public Disclosure on the Patent process?
When an innovation is disclosed publicly, a twelve-month timeline starts during which period you may file for Patent protection and claim a priority date of the initial public disclosure. If you do not file for Patent protection within this twelve-month period, you may lose the right to do so and your innovation may be considered freely given to the public.
What is the value/importance of a Patent?
A Patent affords you, the owner the right to stop others from making, using, selling or importing your patented innovation. Therefore, a Patent’s value is in the ability to 1) protect your market space by stopping competitors, 2) increase the valuation of the company, and 3) maximize revenue and stop infringement on a company’s innovation(s).
When should I file a Patent application?
As soon as you can describe how to implement your innovation to a lay person, you have reached the “constructive reduction to practice” state. This is the time when you should file for Patent protection.
Should I file for Patent protection prior to releasing my MVP?
It is generally considered a good idea to file for Patent protection prior to releasing an MVP to the market. Releasing an MVP is considered public disclosure (launching a 12-month window of opportunity to file for Patent protection in the US) and such a release prior to filing a Patent application will destroy your ability to file for Patent protection in some jurisdictions (European countries).
What level of disclosure is required in a Patent application?
The U.S. Patent & Trademark Office (USPTO) requires that a person of “ordinary skill in the art” must be able to recreate what you have disclosed simply by following your description and any associated figures.
Should I worry about mobile apps that don’t have Patent protection?
No. Mobile applications that don’t have Patent protection have no rights under IP law.
How long does the Patent process take?
On average, the Patent process can take two to five years to prosecute to completion.
How long does a Patent remain in force?
Utility Patent – 20-year term from date of earliest priority
Design Patent – 14-year term from date of earliest priority
Plant Patent – same as a Utility Patent.
The enforcement term begins from the date of Patent issuance and ends 20 or 14 years respectively, from the date the Patent application (or earliest version thereof) was initially filed.
How do I maintain my Patent?
Maintenance fees are required every 3 to 3.5 years, 7 to 7.5 years, and 11 to 11.5 years after the date of issue to keep all Utility Patents in force.
Design and Plant Patents do not require maintenance fees.
When can holding a Trade Secret be a better protection option?
Not all worthwhile/valuable innovations are patent eligible therefore, Trade Secrets can be a valuable tool for a company to protect itself from competitors.
Remember, a Patent protects an innovation that is useful, new, and not an obvious improvement in the marketplace.
A Trade Secret, if it became publicly known, is considered to be an innovation that would be easily reproduced by a person of “ordinary skill in the art” without undue experimentation. A Trade Secret can be an obvious improvement to a device or product. Once the secret becomes publicly known, it is no longer enforceable under Trade Secret.
What happens after you file a Non-Provisional Patent application?
Once a Patent application is filed, it is placed on a Patent Examiner’s docket for examination. Be prepared (and patient); it can take months for a Patent Examiner to read your application due to heavy case loads. A Patent Examiner is responsible for reviewing the application Specification (description of invention) and Claims to determine if the claims infringe on any publicly available product, method, or apparatus. The Patent Examiner will conduct an independent world-wide prior art search to determine if anyone else has released a product or has published an innovation description that is the same as the claimed invention in your application.
If your claimed invention is found to already be publicly known or patented anywhere else in the world, the Patent Examiner must deny the Claims submitted.
The next step in the process is to respond to a Patent Examiner’s Objections and Rejections in which the inventor is permitted to amend Claims in their application to show how their invention is different than identified prior art so as to overcome an Examiner’s rejection and hopefully, proceed to patentability.
Can I check on the status of my application on my own?
Yes, if you have filed the application on your own, as a Pro Se filer, you many check the status at any time. If you are represented by a Patent professional they can check the status at any time. Once the application has published, usually at 18 months after the date of filing, the application is readily accessible to the public.
What if my Claims are rejected by a Patent Examiner?
In such a case, you as the inventor, are permitted to amend Claims in your Patent application to show how your invention is different than identified prior art so as to overcome an Examiner’s rejection and proceed to patentability.
What is a Notice Of Allowance?
A Notice of Allowance is a notice by a Patent Examiner that the claims you have filed are patentably distinct over all discovered prior art. The Notice of Allowance indicates that you may receive your patent by accepting the Examiner’s reasons for allowance and paying an issue fee to the USPTO.
Can I capture multiple innovations in one Patent application?
Yes. If you have multiple innovations you should definitely capture them in one Patent application in order to permit you to later file one or more Continuations-in-Part (CIPs) to capture different innovations and maintain the priority date linked to the filing of the first or “parent” application.
What is a Restriction Election?
When the United States Patent and Trademark Office (USPTO) identifies more than one distinct invention in the Patent Claims of an application, the inventor is required to choose which of the patentably distinct innovations they wish to restrict and pursue in the current application (thus “Restriction Election”). Other inventions may be pursued in separate Patent applications.
What is a Continuation-In-Part (CIP)?
A Continuation-In-Part is a Patent application that has most elements in common with a parent application, but expresses new innovative material in the Claims of the CIP.
What is a Divisional Application?
If you have a Claim set that has been judged by a Patent Examiner to have two or more innovations in a single set of Claims, the Patent Examiner will require you to select one of them for continued prosecution (Election Restriction). The remaining innovation(s) may then be captured in a Divisional Patent application that has the set of Claims that were not captured in the first application. No new innovative material may be added to the application.
The Divisional application will have the same priority date as the first (Parent) application because the existence of different innovation(s) has already been determined, which prevents a Patent Examiner from rejecting your Divisional application as being the same as the Parent application.
Assignment of Patent Rights to a Company vs. Inventors
Patents have the attributes of personal property.
Per USPTO statute 35 U.S.C. 154(a)(1), “Ownership of a patent gives the patent owner the right to exclude others from making, using, offering for sale, selling, or importing into the United States the invention claimed in the patent.”
“Assignment,” in general, is the act of transferring to another the ownership of one’s property, i.e., the interest and rights to the property. In 37 CFR 3.1, assignment of patent rights is defined as “a transfer by a party of all or part of its right, title and interest in a patent [or] patent application….” An assignment of a patent, or patent application, is the transfer to another of a party’s entire ownership interest or a percentage of that party’s ownership interest in the patent or application. In order for an assignment to take place, the transfer to another must include the entirety of the bundle of rights that is associated with the ownership interest, i.e., all of the bundle of rights that are inherent in the right, title and interest in the patent or patent application.
When Should You File for protection under the Patent Cooperation Treaty (PCT)?
Protection under the PCT must be filed within 12 months of the filing of a U.S. Patent application to maintain priority to the U.S. Patent filing.
What is the Difference between Allowed and Issued?
When an Examiner has determined that a set of Claims in an application are patentable, they issue a Notice of Allowance. To accept the Notice and permit your Patent to become enforceable, the inventor must first pay an Issue Fee. Upon payment of the Issue Fee, the United States Patent and Trademark Office (USPTO) will publish the allowed Patent application and place it in enforceable status by “Issuing” the Patent.
Why Would You Want to Delay Payment of an Issue Fee?
Because of the lengthy patent approval process, inventors often continue to improve upon the innovation originally claimed in their Patent application. Upon allowance an inventor is given three months to pay the issue fee. During this time the patent application is still in prosecution and when an inventor has created an improved version of an allowed Patent application, payment of the Issue Fee may be delayed to the end of the three month window to give the inventor time to file the improvement to the patented innovation as a Continuation-in-Part (CIP). The CIP may use the allowed, but not yet issued, patent application as a parent as long as it remains “in prosecution”.
Can I represent myself as a Pro-Se?
Yes, as “Pro Se” is Latin meaning “for himself.” Under United States law and therefore, before the United States Patent & Trademark Office (USPTO), an Applicant can represent himself/herself/itself.
However, the success of a Pro Se depends on the legal skill of the individual and their understanding and command of the following:
- Defensibility against an allegation of unpatentability
- The durability of the patent
- The scope of rights granted by the USPTO to the Applicant
Note: Patent Examiners are given more leeway in the examination of the applications from Pro Se inventors, up to and including the Patent Examiner assisting in the creation of one Claim with the Pro Se inventor.
What do I do about the release of a competing or facsimile of my product in countries where I don’t have Patent protection?
Patents are geographically oriented and are only enforceable within the country or jurisdiction in which they are allowed. If you hold a U.S. Patent you likely cannot affect the release of a competing product in Japan or China, for example. You may only affect the release of a competing product in Japan or China if you have a Patent allowed and in force in those respective countries.
For more information and resources, please visit USPTO and WIPO.