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PATENT

CERTIFICATE

 A patent is a government license that gives the holder exclusive rights to a process, design or new invention for a designated period of time.

 

Applications for patents are usually handled by a government agency.

 

PATENTS

 

 

 

 

 

 

We handle all phases of domestic and foreign patent prosecution, licensing and post-grant registration and maintenance. Outlined below are essential topics for new innovators: 

 

Patents – General Concepts

What Rights Does a Patent Give?

What Rights Does a Patent Not Give?

First to File vs. First to Invent

Who Can File a US Patent Application?

How Long Does a Last?

What You Can Patent and What You Can’t

How an Application Becomes a Patent (“Patent Prosecution”)

What are the Legal Standards Required to Get a Patent?

Utility Patents, Design Patents, and Plant Patents

Provisional and Non-Provisional Patent Applications

The Patent Cooperation Treaty (PCT)

Finding the Laws and Rules (35 USC, 37 CFR & the MPEP)

The Filing Date

Structure of a Patent File

Docketing

Invention Disclosures

The United States Patent System

                

Under the visionary guidance of Thomas Jefferson, The United States Patent and Trademark Office (“USPTO”) was established by Congress in 1790 as part of the Federal Government within the Department of Commerce. The USPTO administers the patent laws, which are interpreted by the Federal Courts, with the United States Supreme Court as the ultimate authority on all patent matters. The aim of the patent system was (and is) to encourage people to invent new and useful items or processes that ultimately benefit our economy and our society. It was hoped that by fostering the inventiveness of its citizens, the fledgling nation would grow into a mighty industrial power. In return for inventing something and making it public (all patents are published by the government), the inventor would be granted a sort of monopoly on the invention for a certain period of time – a patent. Jefferson’s vision certainly seems to have worked! Today, the citizens of the United States file more patent applications than the citizens of any other nation, and the USA is amongst the most advanced industrialized nations in the world.

 

Patents – General Concepts

 

 A patent is a form of intellectual property right granted by the government to an inventor.  Like other kinds of property it can be bought or sold or leased out (“licensed”).  A patent gives the owner certain legal rights, generally to stop other people making, using and selling or importing his/her invention.

 

What Rights Does a Patent Give?

 

A patent allows its owner to prevent others from making, using, selling, offering for sale, or importing the patented invention. If anyone wants to make or use (etc.) the invention, they have to have a license from the patent owner, which usually means paying license fees. The patent lasts for a number of years (called the patent term – see below), and then expires. After the patent term expires, anyone can use it freely, without paying a license fee to the inventor. The patent term can never be revived, and the invention can never be patented again.

 

What Rights Does a Patent Not Give?

 

A patent is a “negative right.” Although a patent allows the owner to stop others making and using the invention, it does not necessarily mean that the patent owner can make and use his own invention. This is because someone else may have a patent that the owner needs in order to practice his invention. Sounds confusing? Here’s a simple example: Able is awarded a patent on a new type of glow-in-the-dark baseball bat, for nighttime games. It’s a wonderful bat, but each one has to be hand-made at great expense. Then Cane invents a new method for cheaply manufacturing Able’s baseball bat. Cane is awarded a patent on his method. Can Cane then set up a factory and start manufacturing the bats using his own, patented method? No, because he would be making Able’s bat, and therefore infringing on Able’s patent. What would Cane have to do? He would have to get a license from Able to make Able’s bat. This is basically all there is to licensing – the rest is simply negotiation and contract law.

 

First to File vs. First to Invent

 

In 2011, the USA has done away with the “First-to-Invent” to a “FIRST-TO-FILE” patent system.

In the old system, a patent is awarded to the first person who invents a thing, not to the first person to file a patent application. Most of the rest of the world uses a “FIRST-TO-FILE” system, where a patent is given to the first person to file an application for the invention, whether or not they invented it first.

Now, the US has adopted a FIRST-TO-FILE system which makes dispute resolution simpler. 

Note:  On March 16, 2013 the U.S. became the first “First to file” country (under the ‘America Invents Act’ of 2011). Patents filed on or after March 16, 2013 will be subject to first-to-file rules. Publication, public use, sale, and other disclosures (anywhere in the world) before the filing date will be bars to a patent. There will, however, be a limited one-year grace period if the inventor (or anyone who obtained the subject matter from the inventor) made certain disclosures of the claimed invention.

 

Who Can File a US Patent Application?

 

Anyone can. You don’t have to be a US citizen or resident. However, you have to be a “natural person” to apply for a patent in the US. A corporation cannot apply for a patent in its own name. A patent must be applied for in the name of the inventors. This is not the same abroad, where a corporation can be named as an applicant and inventor.

 

How Long Does a Patent Last?

 

The life of a patent is called the patent term. The patent term is different depending on when the patent application was filed.

 

If filed on or after June 8, 1995, the patent term is 20 years from the filing date of the earliest U.S. application to which priority is claimed (excluding provisional applications)

 

If filed before June 8, 1995, the patent term is either 17 years from the issue date or 20 years from the filing date of the earliest U.S. or international (PCT) application to which priority is claimed (excluding provisional applications), whichever gives the longer term.

 

The basic patent term can be adjusted by the “Patent Term Adjustment” (PTA).  Days may be subtracted from the basic term for delays in examination caused by the patent applicant, for example by responding late to an office action. Days can also be added to the basic term for delays caused by the Patent Office, for example if the Patent Office delays sending out an office action or other notice to the applicant.

Under the Patent Term Extension rules (35 USC 155 and 156) the patent term may be increased (but never decreased) from the standard term by up to a maximum of 5 years, under certain conditions, usually in connection with delays caused by government regulatory agencies, such as the Food and Drug Administration (FDA).

 

Sometimes, for various reasons, a patent may last for less time than the standard term, because the applicant has been required to give away a part of the end of the patent term. This process is called terminal disclaimer, and is discussed later.

 

What You Can Patent and What You Can’t

 

You can only get a patent on things that the US Congress tells you are potentially patentable; this is the so-called “Statutory Subject Matter.” At one time, the list was fairly restricted, and things like software and genetically engineered organisms were excluded, but now you can patent almost anything. As the US Supreme Court has stated, Congress intended patentable subject matter to include “anything under the sun that is made by man.” However, to be eligible for patent protection, the claimed invention as a whole must accomplish a practical application. That is, it must “produce a useful, concrete and tangible result.” Patentable subject matter includes new and useful machines, compositions of matter and processes. A machine, for example, would include a new wrench, a flat panel TV screen, or a baseball bat. A composition of matter would include a drug, a new type of plastic, or a new semiconducting material. A process would include a method of making something, such as a new method of making a baseball bat or drug. A process also includes methods of using a thing, such as a new method of using a drug to treat disease. Living things have also been considered patentable since 1980 (after the Supreme Court decision in Diamond v. Chakrabarty). Patentable living things now include genetically engineered plants, animals and microbes, even new genes and proteins. So, for example, if you invent a new drug to treat heartburn, you could get a patent for the drug itself (the composition of matter), a patent for a method of treating heartburn by administering the drug to a patient, and a patent for the process of making the drug.

 

There are still a few things that you cannot patent. You cannot patent the laws of nature; e.g., the Laws of Relativity or Gravity cannot be patented. And you cannot patent things that occur naturally (not “made by man”); e.g., you cannot patent a new mineral discovered in the earth or a new plant (with certain exceptions) or bacterium found in nature. But you can patent something that, although derived from nature, has been isolated and purified so that it is now in a form “made by man” that would never be found in nature. Thus, if you discover a certain protein that occurs in a bacterium, you cannot simply patent that protein, but you can patent the isolated or purified protein, because it would never occur in an isolated state except by the hand of man. Some legal scholars have a great deal of trouble with this concept.

 

How an Application Becomes a Patent (“Patent Prosecution”)

 

In order to obtain a patent, the inventor (the applicant) must file a patent application with the USPTO. At the USPTO, the application is examined by a Patent Examiner (though more accurately they should, perhaps, be called “Patent Application Examiners”). Patent Examiners are experts in a particular scientific field, and have been trained by the USPTO to determine if a patent application meets the standards legally required to become a US patent. Examination of a patent application often takes two years or more. Examination will eventually conclude in either a patent being issued, or in the application being abandoned. The long and complex process by which the patent is examined, with correspondence going back and forth between the examiner and the applicant (or the applicant’s patent agent or attorney) is called patent prosecution. It is the job of the patent paralegal – your job – to make sure that everything runs smoothly from filing of the application, through patent prosecution, to issue (hopefully) and beyond.

 

What are the Legal Standards Required to Get a Patent?

 

For a patent application to become a patent, the invention has to have the characteristics of novelty, non-obviousness, and usefulness. The meaning of these terms is the subject of endless debate, and we will not attempt to define them here.

 

Let us simply say that for an invention to be found novel means that it has never been made or described in a single publication before (or the method has never been practiced or described). To find that an invention is not novel, the patent examiner must show that the exact invention already existed, or was fully described in a publication, before the applicant claims he or she “invented” it.

 

To say that an invention is non-obvious means that a person skilled in the technical field of the invention (“one of skill in the art”), without reading the patent application, would not have found the invention obvious to make or to do – so that there was a flash of inventive thought that deserves a patent. An invention that is novel (i.e., was not actually made or fully described before) can still be obvious, and therefore unpatentable.

Utility simply means usefulness. A fairly low level of utility is needed for this requirement to be satisfied, and practically any reasonable utility is generally considered sufficient to meet this requirement.

 

Utility Patents, Design Patents, and Plant Patents

 

Most likely, you will be dealing with utility patents. These are the “normal” kinds of patents that cover machines, compositions of matter and processes, as discussed above. There are also two other types of patents, and we’ll just briefly mention them here. They are Plant Patents and Design Patents, and these have their own rules, which are considerably simpler than the rules for Utility Patent applications.

 

Plant Patents cover asexually reproducing plants, such as a new rose variety grown by taking a cutting. Only one claim is allowed and the application must be filed in duplicate. The term of a plant patent is 20 years from filing. To see an example of a plant patent, simply go to www.USPTO.gov then click on “Patents” and use the search engine to look for a patent with the word “Chrysanthemum” in the title field – you’ll find hundreds.

Design patents cover the ornamental features of a manufactured item (not the functioning features) and have more in common with copyright protection than with a utility patent. A design patent has only one claim, and the term of a design patent is 14 years from the date of grant. To see an example of a design patent, use the search engine to look for a patent with the word “ornamental” in the title field.

 

Provisional and Non-Provisional Patent Applications

 

A US patent application can be filed in one of two ways: as a Provisional Patent Application or as a Non-Provisional Patent Application.

 

A non-provisional application is the usual type of application that is subjected to examination by the USPTO to determine patentability. As you will see later on, the filing of a non-provisional application involves numerous formalities. 

 

A provisional application acts as a quick and simple placeholder, allowing the applicant, for minimal cost and work, to get an application officially filed with the USPTO and obtain a filing date. Getting the earliest filing date possible is often very important, of course, because the first person to file an application for an invention will have a significant advantage over people who try later. A provisional application is cheaper to file as the fee is less than half that for a non-provisional application. Also, the documents you have to file are less numerous and less complex, and therefore the attorney fees are often lower than for a non-provisional application.

The provisional application is not examined; it simply acts to only hold your place for one year. After that time, if you do not file a non-provisional application for the invention, you lose your early filing date and have to start again at the beginning. When you file the non-provisional application, you have to explicitly tell the patent office that you are filing the non-provisional on the back of the provisional and are “claiming the benefit of” the provisional application. This is also called “claiming priority” to the earlier application.

Both utility and plant patent applications can claim priority to a provisional application. A design patent application, however, cannot claim priority to a provisional application.

The Patent Cooperation Treaty (PCT)

Just like the US, each country has its own patent system and its own laws, but the Patent Cooperation Treaty (PCT) provides a reciprocal system under which countries can coordinate the filing of patent applications, allowing national patent systems to coexist in harmony with one another. The PCT system also helps applicants by allowing them to file a single patent application, in a single language, and have that application examined before having to decide whether to file separate applications (at considerable expense) in each of the national patent offices. In this way the applicant can get an idea of how well prosecution is going before spending a lot of money to “go national.”

 

Finding the Laws and Rules (35 USC, 37 CFR & the MPEP)

 

There are a couple of government publications with which you should be familiar. These publications are written in a legalistic style that makes them hard to read, but they can be very useful, and it is important to know how to use them. You can only really become comfortable with these publications by repeated use, and this will happen slowly with experience.   The three publications are called: 35 USC, 37 CFR, and the M.P.E.P. You can find links to them from the USPTO web site.

 

The United States Code, Title 35 (35 USC) sets out the patent laws as passed by Congress.

The Code of Federal Regulations, Title 37 (37 CFR) reiterates the Laws and adds some practical detail. For example, it will list the fees that are required to be submitted with various communications and to which addresses they should be sent. As a patent paralegal, you will probably be using 37 CFR quite frequently.

The M.P.E.P. (Manual of Patent Examining Procedure) is the book published by the USPTO to help patent examiners. It usually comes in a large loose-leaf binder, or bound as a thick, soft cover book, and looks very imposing, but it has a fairly good index. It contains almost everything you ever need to know about patent procedures.

 

The Filing Date

 

This is a critically important concept. It’s the official date when the USPTO agrees that a patent application (and the description of the invention set out therein) was received. The Filing Date can be very important for patentability, and later on, in litigation. To get a filing date, you have to follow certain USPTO-mandated rules and send in certain properly prepared documents. Making sure that all these rules are followed will be a major part of your responsibility.

 

Structure of a Patent File

 

Most law firms and corporations still print out paper documents and maintain paper files. This is useful not only for day to day record keeping but also in case of litigation. Some firms are paperless and simply keep all records electronically. Either way, it is hard to over emphasize the importance of a well-kept patent file. A properly organized patent file helps you work efficiently and accurately. A poorly kept file can be a nightmare of complexity that will increase the stress of your work and can lead you to make serious errors. Make sure you have a system, and stick to it. Generally, a patent file comes as a three-part folding paper file. On the outside cover there are spaces for writing information about the application, such as title of the invention, filing date, etc. Keep this information up to date. A common way to arrange documents inside the file is the following:

On the left hand side, have an itemized, chronological index of the correspondence that you’ve put on the right hand side. This helps you see at a glance what’s been done and how far along the patent application is in the prosecution process. In the middle, put the patent application as filed with copies of all its filing documents and the filing receipt. On the right hand side, put all correspondence to and from the USPTO, chronologically arranged and separated with numbered tabs. Whatever system you use, organization and consistency are the keys to success.

 

Docketing

 

Good docketing is absolutely vital! When docketing goes wrong, deadlines get missed, applications become abandoned.   Docketing refers to the practice of entering information and due dates in a database to automatically generate action dates. This list of action dates is referred to as “the docket“. The docket should be printed out and reviewed weekly. Each patent application you deal with will have its own docket number, which is a unique internal tracking number used to identify the application. The filing of a patent application sets the clock running for a number of important actions that the applicant may take, e.g., foreign filing.

 

Correspondence from the USPTO will require a response from the applicant within certain time from the date that the correspondence was mailed (the Date Mailed date). This date will be clearly stamped on the USPTO document and is the date from which all docket dates should be based (not the date that it was received in your office!).

 

Invention Disclosures

 

An Invention Disclosure is an internal document that describes the invention. It is not a document that is sent to the Patent Office. The inventor(s) will generally fill out and submit an invention disclosure to the patent attorney (or agent) so that the attorney can assess the invention for patentability, i.e., determine if it may meet the requirements for novelty, non-obviousness and usefulness. There is no standard invention disclosure document, and it is not a USPTO form, but generally it’s a list of questions and answers (name, address, citizenship, date the invention was conceived, etc.) followed by a detailed description of the invention. The important thing to remember about invention disclosures is to make sure that they are signed and dated by all the inventors, and to keep them safe and well documented. It’s also a good idea to get them notarized. If you do not have a standard procedure for completing, documenting and storing invention disclosures, it might be a good idea to set one up with your attorney.

 

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