All aspects of life can frequently result in the creation of intellectual property. With proper care, this intellectual property can be cultivated into potentially valuable patent, trademark, and trade secret assets. The following provides some general information on patent and trademark protection. The best course of action frequently depends heavily upon your needs as well as the peculiar details of what has been developed. Contact one of our professionals for guidance that is focused on your needs.
If you have invested time and resources developing something new, or an improvement to something that already exists, the result may be patentable. You will want to take steps to protect your rights. Otherwise, others may benefit from your hard work. A patent, once granted, formalizes the rights of the patent owner in an invention, including the right to exclude others from making, using, selling, or offering to sell your creation. The patent process can be complex and fraught with potential landmines. Our experienced patent attorneys can help you navigate all stages of the process, including good practices for developing inventions, preparation and filing of patent applications, prosecution of your patent application through to grant, and enforcement or licensing efforts.
U.S. Test for Patentability
The requirements for being granted a patent in the United States come from Federal Law. Under the U.S. Patent Act, in order to be patentable, an invention must be new, useful and non-obvious:
- New – invention must be novel, that is, not already publicly disclosed by another person or entity
- Useful - an invention must have practical utility, operability, and beneficial utility
- Non-obvious - the invention must not be obvious in light of what is already known
Different Types of U.S. Patents
U.S. law allows for utility, design and plant patents:
- Utility patents can be used to protect new and useful processes, machines, manufactures, compositions of matter, or improvements and are the most common type of patent
- Design patents can be used to protect a new, original, and ornamental design for an article of manufacture
- Plant patents can be used to protect distinct and new varieties of plant (physical plants and organisms)
The Process for Applying for Patent Protection
To obtain a patent, you must apply to the United States Patent & Trademark Office (USPTO). It is far from automatic that you will get the patent. You must go through an entire process wherein a USPTO patent examiner determines whether the invention as claimed is new, useful and non-obvious.
Before applying for a patent, it may be wise to perform a search to ensure that the details of the invention have not already been disclosed or patented. The search can help to inform a potential applicant as to whether a patent is likely to be granted. Numerous other useful information can also be obtained through a good search, for example identifying potential competitors and seeing their approach to protecting similar subject matter. Patent databases are a very good tool for searching, but relevant information can also be found elsewhere, for example in trade journals, website pages, marketing materials and the like. An experienced patent professional can perform this search.
Some Basics of the Patent Application and Prosecution Process
The patenting process begins with the filing of a patent application. A complete utility patent application includes the following:
- A written description of the invention
- Relevant drawings and illustrations
- An oath that you were the inventor, the patent application is accurate, and that you will disclose relevant information to the USPTO
- One or more patent claims reciting the novel aspects of the invention
- A brief abstract of the invention
While some forms are required, the written description, drawings, claims and abstract are not forms, but instead must be drafted. In this process, an experienced patent professional can be extremely valuable. Many patent applications that are drafted by the inventor, or pro se, will not be effective in providing good protection for the invention. Once the application is completed and filed, it will be assigned to a patent examiner with the USPTO. The examiner will review the application and respond with an official USPTO action that either allows the application or raises problems in granting the application. The patent examination process may be an interactive one. If the examiner raises problems in granting the application, the applicant can respond with amendments to the documents as well as arguments in an attempt to overcome the problems and change the examiner’s position. This process can be repeated several times until the application is allowed or the applicant decide to take no further steps.
If a patent application is twice rejected, the applicant can appeal to the Patent Trial and Appeal Board where a senior panel of USPTO examiners will consider the appeal and decide if the examiner has made an error. If the appeal is not successful, an applicant can further appeal to the Court of Appeals for the Federal Circuit or can file legal action in the United States District Court for the District of Columbia.
Once a patent is granted, it will remain in force for a term that is generally 20 years from the original filing date. However, the USPTO requires payment of maintenance fees through the term of the patent, and if these fees are not paid, then the patent will expire early.
Enforcing Patent Rights
Once a patent is granted, it may be wise to monitor as best as possible what competitors in the market are doing in case something appears to be infringement When a competitor infringes, that is, makes, uses, sells or offers to sell, something that is covered by your granted patent claims, steps can be taken to try to stop this activity. Enforcing patent claims can be a complex and expensive undertaking The advice of an experienced patent professional can be critical in taking the proper actions and steps which could include negotiating with the infringer to bring the activity to a stop or other suitable conclusion, or legal action. Here again, the process is complex and there are many pitfalls, the advice of an experienced patent professional is invaluable.
Why You Need a Patent Attorney
Protecting the fruits of your time and resources invested in research and development should always at least be considered. However, these can be high stakes matters, where inadvertent mistakes can prevent a patent from being granted, or cause the patent to be useless. Our experienced patent professionals engage with you to determine the relevant facts and help you take steps that are designed to accomplish and realize your goals. A sampling of where we can work with you includes:
- Help you determine whether your invention may qualify for a patent
- Perform searching to learn whether the details of the invention are already known
- Draft the patent application, especially the patent claims
- Communicate with the patent examiner throughout the patent prosecution process
- Work with you to enforce your patent if it is being infringed upon
- Assist you with negotiating and drafting license agreements