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Stephanie Larrowe CEO and designer for Cake Inc., Glendale California

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Patent FAQs

What is a patent?

A patent is a document that grants the exclusive rights in an invention to its owner.  The bundle of rights granted by a patent include the right to exclude others from making, using, offering to sell, selling, or importing the invention into the US.  Inventors should remember that patents confer negative rights.  A patent doesn’t grant the right to make and use an invention, but rather the right to stop others from doing so.

Inventors without a patent may still make and sell their inventions if no other rules prevent them from doing so.  If an inventor makes an invention public however without seeking a patent­ ­the invention may become public domain.

Patent rights are property rights.  They may be transferred, licensed or assigned by the owner just like other forms of property.  Although these rights only accrue upon issuance, inventors may sell future patent rights to others during examination.

What are the different types of patents?

Utility Patents

  • Utility patents protect new, useful, non-obvious machines, materials or processes.  Utility patent applications describe inventions in terms of function and functional improvements.  Compositions of matter such as chemical compounds, new useful processes or methods, and new machines may all be covered by utility patents.
  • Utility patent applications may also be filed provisionally.  For a reduced fee, an inventor may file an invention description with the Patent Office as a provisional application.  The Office does not examine these applications, but will grant a filing date which a subsequently filed utility application may claim.

Design Patents

  • Design patents cover new, original ornamental designs for manufactured articles, protecting only the decorative aspects of a design.  Examples of design patent subject matter include the tread pattern on a shoe (if nonfunctional); the shape of a lamp, or a stained glass design.

How long does a patent last?

Utility Patents are generally valid for twenty years from the application filing date.  Design Patents are valid for 14 years from issuance.  In some circumstances such as a delayed examination or abandonment, the patent term may be increased.

What happens when the patent term expires?

When a patent expires, the invention enters the public domain. The owner of the patent may no longer prevent others from making, using or selling the invention.  Expired patents continue to serve as prior art references in subsequent examinations however.

How do patents, trademarks and copyrights differ?

Patents are issued by the U.S. Patent & Trademark Office (PTO), a branch of the Department of Commerce.  They confer exclusive rights in an invention of a useful object or design for the duration of the patent.

Trademarks are also issued by the PTO and are typically words, names or symbols identifying a product’s source, and rendering a unique identity to the product.  A service mark identifies and distinguishes the source of a service.  While trademarks and service marks prevent others from using similar marks, they cannot prevent others from making or selling the same product under a different mark.

Copyrights are issued by the U.S. Copyright Office.  Copyrights cover creative works fixed in tangible media, such as images on film, sound on a computer, or a story on the pages of a book.  Copyright owners have the exclusive right to reproduce, copy, perform, or display their copyrighted works.

Who can apply for a patent?

In the U.S. the actual inventor or inventors must apply for patent protection, although employee inventors commonly assign inventions to their employers.  Internationally, in Patent Cooperation Treaty applications and in most foreign countries, a non-inventor entity may apply for patent protection.

Can an Idea be Patented?

Ideas and abstract concepts cannot be patented.  Likewise, mere mathematical algorithms and laws of nature may not be patented.  Patents only cover non-obvious inventions and describe them with particularity.  To qualify for patent protection, inventions must be new, having never been invented before.  They must also be useful for utility patents, or ornamental for design patents.  Above all, they must be non-obvious in light of prior inventions alone and in combination.

What does the term “novel” mean in patent law?

“Novelty” refers to the requirement that an invention is new, not having been invented before.  In particular, if an invention was known or used by others in the U.S., or if it was patented or described in a printed publication anywhere before invention by an applicant, it cannot be patented.  Additionally, if an invention has been publically disclosed, in use, or on sale in the U.S. for more than a year, the invention has gone into the public domain.

What is non-obviousness?

In general, “non-obviousness” means that an invention must not have been obvious to a person having ordinary skill in the art to which the invention pertains.  If an application claims an invention consisting of small, insignificant improvements, the more likely it will be rejected as obvious.  Additionally, improvements easily reached by combining two or more prior art references are more likely to be found obvious.

Obviousness rejections are the most common rejections issued by the Patent Office.  Many applications will receive at least one Office Action rejecting an applicant’s claims as obvious in view of a combination of references.

What happens if an inventor starts selling an invention without filing a patent application?

If an inventor describes an invention in a printed publication, uses it publicly, or offers it for sale without filing for a patent, novelty can be affected.  In the U.S., an inventor must apply for a patent within one year from the first date of public disclosure or the invention will become public domain.  In most foreign countries, all patent rights are lost if an inventor publishes an invention without first seeking patent protection.  This is called the “absolute novelty rule.”  Because of this rule, applicants should file for patent protection before publishing or selling an invention to preserve their patent rights abroad.

Why Do I Need a Patent Attorney?

While inventors may draft and prosecute patent applications personally, preparing a patent application and conducting proceedings before the U.S. Patent Office requires an understanding of detailed patent laws, Patent Office practices and procedures, and the ability to describe inventions in a way that claims the broadest coverage while still remaining patentable.  Most inventors employ the services of registered patent attorneys or agents.  Since the prosecution history of a patent application can limit the scope of a patent, familiarity with claim drafting is particularly important.

How Do I Choose a patent attorney?

Patent attorneys may be referred by other attorneys, recommended by local bar associations, and usually have websites or advertisements for their services.  Like other attorneys, patent attorneys are prohibited from soliciting business directly.  Patent attorneys should be experienced and among the listed members of the USPTO register of attorneys and agents. Persons who are not recognized by the USPTO for this practice are not permitted by law to represent inventors before the USPTO.

What is a provisional application for a patent?

Provisional patent applications allow applicants to obtain priority filing dates for their inventions.  A provisional application should contain a complete description of an invention, including any drawings necessary to understand the invention.

Provisional applications last for one year, and cannot be extended or renewed.  If a “regular” (non-provisional) patent application is filed on the same subject matter while a provisional application is pending, the non-provisional application may claim the filing date of the provisional.

A provisional application can be an inexpensive way of obtaining a filing date and the right to the phrase “patent pending.”  There are drawbacks to provisional applications however.  First, provisional applications are not examined and therefore lengthening the total examination period of the application.  Also, since the utility patent term is 20 years from filing, the provisional reduces the life of the patent.

Provisional applications are not permitted for design applications, and a provisional application, in and of itself, will not result in an issued patent.

Are all patent applications made public?

No.  By default, the Patent Office publishes all applications 18 months from the priority date.  An inventor may request non-publication however, and the patent office will not publish the application, with the possible loss of foreign rights.  Since provisional applications expire after one year, they are never published.  All issued patents are published.

How does the USPTO examine patent applications?

After a preliminary examination for format compliance, all non–provisional patent applications are assigned to technology centers for examination based on the technology area to which they pertain.  Assigned examiners analyze applications for compliance with the legal requirements for patent.  Examination includes searching U.S. patents and published applications to determine whether an application meets the requirements of novelty, usefulness and non-obviousness.

Qualifying applications receive notices of allowance instructing the inventor to pay an issue fee.  Once paid, the patent will issue on a predetermined date.  During examination, applicants frequently must respond to rejections in the form of Office Actions and amend their applications.

What is an “Office Action”?

Office Actions are written communications from patent examiners regarding pending applications, advising applicants of actions being taken by the Patent Office concerning their applications.

An office action may be adverse, such as a rejection of the claims or content of an application based on improper form, a claim rejection based on non-patentable subject matter, a claim rejection based on an inadequate description, or a claim rejection based on novelty or obviousness in light of prior art references.  Combinations of these rejections are also possible.

In the event of an adverse office action, the reasons for the Patent Office’s objections or rejections will be stated.  An applicant has a limited time to correct the application by amending, adding or dropping claims, presenting arguments to distinguish the claims from prior art references, or submitting affidavits to overcome prior art references (for instance demonstrating that the date of invention occurred prior to the reference, or producing factual evidence of patentability from testing or research).

Some office actions are not adverse.  Notices of allowance are one such type of action.  Once an application has been examined and found patentable (usually after responding to one or more adverse office actions), a notice of allowance is issued.  Applicants have a limited time to pay issue fees to cause the Patent Office to issue an applicant’s patent after receiving an allowance notice.

What are the chances of getting a patent without an adverse office action?

For simple inventions, only about 10% of patents are granted without claim amendment, and even more rarely without argument.  For complex inventions the percentage of non-amended applications is below one percent.  Applicants receiving patents without office actions should be wary of the limited protection afforded by overly narrow claims.

What about foreign patents?

As international trade increases, obtaining foreign patents have become more important in developing an IP portfolio.  Since each country issues Patents individually, there are no truly international patents.  There are, however, treaties and institutions in place to help patentees obtain foreign protection more easily.

In the U.S., patentees have one year from a patent priority date to seek foreign protection.  Although it can be difficult to know with certainty where to file, most countries are members of the Patent Cooperation Treaty (PCT).  If an applicant files a PCT application prior to the one year priority date expiration, the PCT application grants a period of thirty (30) months from the priority date.  By extending the national stage requirement from one to two and a half years, applicants can plan a more accurate filing strategy.  In addition, the foreign patents will benefit from the priority date of the U.S. case.

Not all nations are PCT signatories.  To the extent possible, patentees should take care to learn about a target country prior to filing for patent protection.  Additionally, not all countries follow the same PCT rules.  Some jurisdictions require applicants to file multiple phase applications.  Inventors intending to seek foreign patent protection should speak with a patent professional as early as possible in the process.

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