Patent Eligibility and Discovery
There is often uncertainty surrounding what rises to the level of patentability and non-obviousness is not always straightforward. We work closely with clients to discover their patentable innovations and develop a strategy to best protect their assets.
Types of Patents
Governed by the U.S Patent and Trademark Office (USPTO), three types of Patents exist:
- Utility Patent is for an invention or discovery of a new and useful process, the machine, manufactured item, or composition of matter. A Utility Patent is enforceable for 20 years from the date of earliest priority.
- Plant Patent is for an invention or discovery of a distinct plant that does not exist in nature and has been created by ‘the hand of man.’ A Plant Patent is enforceable for 20 years from the date of earliest priority.
- Design Patent is for an invention or discovery of a new and original design for a manufactured item where the Design Patent covers only the ‘look and feel’ of the new and original design. A Plant Patent is enforceable for 14 years.
Provisional vs. Non-Provisional Patent Considerations
Utility and Plant Patent Applications may be prepared and filed either as a Provisional or Non-Provisional Patent application.
A Provisional Patent is a priority placeholder, existing for only one year before expiring, thus beneficial in securing a filing date. The application must include a Specification (description of the invention), an Abstract, an Oath/Declaration of Inventorship, and Drawings when appropriate. Because a Provisional Patent Application does not require Claims, it cannot mature into a Patent because it does not undergo review and analysis by a Patent Examiner.
As Provisional Patents can be used as priority documents for later Patent filings, the one-year priority period can be effectively used to further develop or improve the innovation. Additionally, a Provisional Patent permits an inventor to place ‘Patent Pending’ on their invention for marketing purposes during the one-year priority period.
For these reasons, Provisional Patents can form important strategic building blocks in the construction of a Patent Portfolio.
A Non-Provisional Patent is what innovators generally reference when they talk about ‘getting a Patent.’ Officially, a Non-Provisional Patent Application, whether Utility, Design or Plant, covers an invention that is useful, novel, and non-obvious.
The Non-Provisional Patent Application must include an Abstract, Description, a full set of Claims, Oath/Declaration of Inventorship, Drawings when appropriate, and may also claim the benefit of priority to an earlier-filed Patent application.
The drafting and prosecution of a Non-Provisional Utility Patent Application is a complex process requiring expertise in patent law, infringement Claim review, proper documentation, and deep skill/experience in identifying the viability and Claim scope of an innovation.
Claims are the essential part of a Non-Provisional Patent Application. The art of drafting Claims involves pointing out the distinguishing elements of an innovation through one or more Claims, referred to as the Claim Scope. The goal is to obtain the broadest Claim coverage possible without infringing on others to garner the greatest commercialization opportunity.
It is important to work with a Patent Attorney who thoroughly understands your innovation so as to deftly find the often narrow pathway to advance your Patent Application to defensible IP protection. While it is exciting to receive a granted Patent, if the Claims are too narrow, the Patent’s commercial value can be severely limited.
Once granted, a Non-Provisional Patent is enforceable in a court of law for the claimed invention against infringement by others.
Working with Patent Examiners
Patent prosecution is the process of review and examination of a Non-Provisional Patent Application by a Patent Examiner at the U.S. Patent and Trademark Office (USPTO). The role of a Patent Examiner is to ensure that Patent Applications meet all USPTO requirements and to identify whether the Patent Claims infringe on any previously existing described or patented invention or existing product in the marketplace.
At any point during prosecution, an interview with a Patent Examiner can be requested to clarify Claim scope and Claim elements to assist the Examiner in understanding the invention.
The filing of a Non-Provisional Patent Application guarantees an inventor the minimum of a First and Final Office Action from the presiding Patent Examiner during the prosecution phase.
A First Office Action frames the negotiation of Claim scope for a Patent. While the USPTO prefers a narrow Claim scope, inventors need a broad Claim scope to protect their industry segment stake and to protect against possible future litigation.
A Final Office Action indicates that a Patent application has received the level of examination by a Patent Examiner associated with a single USPTO filing fee.
If further prosecution is warranted past a Final Office Action, the payment of an additional USPTO Examination fee will provide the inventor with a minimum of two more Office Actions. This provides the inventor with additional opportunities to arrive at patentable Claim scope.
Remember, Patents are allowed based on a determination by a Patent Examiner of non-infringement over relevant existing products and/or other inventions.
Notice of Allowance
Receiving a Notice of Allowance from the USPTO indicates that the applicant is entitled to a Patent, which is a happy event! The final step to the issuance of a Patent is to pay the USPTO Issue fee to secure enforceability of your Patent. It is this step that transforms a Patent application into a Patent.
However, before the Issue fee is paid, it is very important to conduct a close review of the Claims and Specification to ensure that no mistakes have crept in along the way. Correcting errors later in issued Patents becomes much more costly and time-consuming.
Assignment of Ownership Rights
Inventorship and Ownership of a patentable invention are separable. At any time after filing, an inventor(s) may assign the full right and title to the Patent application or Patent to another person or entity. This change in ownership is accomplished through an Assignment of Ownership Rights from the inventor to the person or entity who has acquired the right of ownership.