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Mechanics of US Patents

1) What is a Patent?
  A US Patent is a right to exclude others in the US from making, manufacturing, or selling, a device or a device made according to the claims of the subject patent.  This patent coverage lasts from date of issuance to 20 years from the filing date (if filed after June 8, 1995), or 17 years after issuance (if filed before June 8, 1995).  The most important underlying principle is that a patent is an exchange between the public and the inventor.  In exchange for fully describing the invention and publicly advancing the knowledge of the art of the invention, the inventor is given a monopoly to practice that invention for approximately 17 years (20 years less approximately 3 years of examination at the PTO - Patent and Trademark Office).  This exchange means everything about the invention needs to be fully explained in the specification of the patent.

2) What are the parts of a Patent?
   There are two basic parts of a patent.  The first part is the "Specification", which comprises the drawings and written description of the invention, which includes an optional review of the prior art (what people did to solve the problem before your solution).  The specification is written to explain fully and completely to "one skilled in the art" how to practice the invention to a sufficient level of detail to enable them to build your device from your patent.  This standard of disclosure often bothers inventors, but it is an essential element of the intrinsic exchange of a patent.  The specification is important because new material cannot be added to it during the life of the case.
  The second part of the patent is the "Claims" section, which succinctly describe exactly what is the property of the patentee.  The claims are generally amended and modified during the course of patent prosecution to overcome rejections by the PTO.  The claims must be fully "enabled" by the specification, and terminology used in the claims is understood according to how it was set forth in the specification.  If the claim recites a "transistor" and the specification only describes a bipolar transistor, the claim will likely be interpreted to mean only that particular type of transistor, and not an FET or any other type of device. 
   The inability to amend the specification after filing to enable claims is one of the principal reasons that careful drafting of the specification is critical.

3) What is patentable?
    A machine (device), method or process, method of manufacture, or composition of matter are all statuatory classes for which a Utility patent is permitted.  Patent law is an "opt in" system - any inventor is entitled to a patent unless the invention:
  • was described in a patent or publication more than 1 year ago ( 35 USC 102, 103)
  • was offered for sale more than one year ago (35 USC 102)
  • was invented by someone else (35 USC 102)
  • is obvious to one skilled in the art (35 USC 103)
  • is not properly described in the patent application (defective specification 35 USC 112)
  • was abandoned (see below relating to "continuous reduction to practice")
  • has no utility (perpetual motion machines, for example)
   In contrast with the countries of the rest of the world, where patent priority goes to the first person to file a patent, the US is a "first to invent" country, where the inventor receives priority according to the "date of conception" so long as it is followed by diligent reduction to practice (the invention was not abandoned).  When your later-filed patent is rejected over issued patent prior art, you may file a proper "antidating affidavit" showing first conception and continuous reduction to practice, which will be compared with the filing date of the subject prior art reference.  If successful,  the PTO then removes the prior art reference, thereby allowing your patent to issue.  The PTO does not disturb the earlier issued patent - you merely now have the right to enforce your patent rights on the prior art assignee, which may become quickly complicated as the prior art reference probably didn't invent their device on their filng date, either.  The US is very slowly moving towards a "first to file" system, with patent application publication being the first step in this process.

4) What are the types of patents?
    A Utility patent covers a utility (device, process, method of manufacture, or composition of matter).
    A Plant patent covers a plant which is propagated through asexual reproduction (Mr Lincoln tea rose, for example)
    A Design patent covers "an ornamental design", such as the appearance of the Apple MacIntosh computer.
    A Reissue patent is just a Utility patent that required revision or correction after issuance.
 You can download and view some of these types of patents for free here

5) What are the types of Utility patent applications?
    A) A non-provisional patent application is a complete and proper patent application ready for examination.  Of non-provisional patent applications, there are 4 types:
        1) A regular patent application (referred to as "the parent" if any of the below cases occur).  In general, the below types of "child applications" must be filed during the pendancy of the parent application:
        2) A continuation-in-part (CIP) application is a new patent application where new matter is added to an existing parent patent application.  The new material gets the filing date of the CIP, while the old material retains the filing date of the parent application.
        3) A divisional application is a new patent application filed when the PTO issues a "restriction requirement", generally because the parent application contained more than one invention, and the inventor is being asked to select one invention, and is allowed to file a divisional application on each the other inventions, preserving the filing date of the parent application on each of the divisional applications.
        4) A continuation application is filed when the parent case has had claims twice rejected for the same reason, and the applicant desires to continue prosecution of the original case.  There are several mechanisms to do this, all of which preserve the original filing date as long as new matter is not added to the application - otherwise it becomes a CIP application described above.
    B) A provisional patent application is one that is missing a critical element required to secure a filing date, or was filed specifically as a provisional patent application.   A provisional patent basically sits in a holding tank without being reviewed or considered until it is converted into a non-provisional case, which must be done within one year of filing, or sooner if it was filed with certain types of filing errors.

6) How can I avoid the one year after public use bar?
    Show your device under "non-disclosure", and don't offer it for public use or sale until it is ready to sell.  Then, use this one year after public use interval to sell vigorously, and apply for a patent during this one year window.  Alternatively, if the invention has great value, and an early patent is desired, an early filing may be justified, but this should be done carefully to avoid patenting an idea that doesn't end up in the product.  This "avoid public use until sales start" policy has some problematic implications for networking companies and website companies, for example, where some form of public use is hard to prevent, and non-disclosure is meaningless.

7) Can I use my US filing to file for a patent in another country and visa versa?
    Yes.  The Patent Cooperation Treaty (PCT) is a reciprocal agreement whereby a US patent may be filed abroad after obtaining a foreign filing license (which is customarily printed on the patent filing reciept issued by the PTO 4 months after filing), but prior to one year after the US filing date.  There cannot be a non-publication notice in effect at the time of the foreign filing.  While PCT is a common mechanism to file abroad, the per-country filing fees, verified translation fees, maintenance fees, etc tend to add up quickly.

8) What happens during "prosecution"?
    Approximately 1-3 years after filing, an "office action" is sent by the PTO advising the applicant of the allowability of claims, and this begins a series of correspondence between the inventor or his agent and the PTO.  The claims are being reviewed against the prior art and the specification, and these claims are usually the subject of rejections over prior art or objections over form and presentation.  During patent prosecution, the claims are amended to overcome the prior art, or to better recite the mechanisms described in the specification, after which they become "allowable".  The specification cannot be amended without filing a new patent application (called a "continuation in part" application).  It is essential that the specification of the originally filed application be as complete as possible when it is initially filed.

Why should I want a Patent?

1) What is a patent good for?
  Think of a patent as an expensive fence.  There had better be something really good inside to be worth the expense of building and maintaining the fence.

  •  To an individual who intends to personally own the patent: The patent can actually represent a liability rather than an asset.  In addition to paying many thousands to file and prosecute the patent application to issuance, you then have the privilege to pay thousands more to the PTO to maintain the patent.  For those who have an idea and imagine receiving royalty checks-  it generally doesn't happen except on late night television promotions and under very rare actual life circumstances.  Getting those royalty checks requires expensive ($250K and up) litigation over many years resulting in a settlement in the form of a royalty agreement.  All of the big patent settlements make it into the newspaper headlines, but none of the folks who ran out of money along the way do.

  • To a company that contemplates manufacturing a product based on the patent:  proceed cautiously.  Filing a patent too early can be expensive, as the product development can go in different ways than was described originally in the patent application.  Since the patent specification represents the body of information that future claims can be drawn to, a product change that doesn't make it into the patent represents functionality that cannot be claimed.  Typically, when an early patent application is filed on an undeveloped product, a second patent application follows (often in the form of a Continuation in Part (CIP) application) which covers the actual product, and then two patents issue for the product when one would have sufficed.

  •  To a company that has completed product development and is ready to offer for sale the product containing the invention: you have one year after first public use, first offer for sale, or first actual sale to apply for a patent.

  • If your product has been offered for sale for more than one year and contains the invention - its too late to file!   There is a 35 USC 102(b) on-sale bar preventing the application for a patent.  Future improvements to the product in the form of new inventions are still patentable within the one year window following offer for sale, however. 
2) What is the best use of a patent?
    Patents are most useful in the hands of an entity capitalized sufficiently to fully defend them.  For a startup, this often means building a patent portfolio which covers the products manufactured and sold by the company, and then when sales grow to sufficient levels, the patent portfolio represents one component of Intellectual Property (IP) value as part of protecting the sales of the company against competitors who may copy the protected product features.  In the case of an acquisition, the patents represent  IP value in the form of protection of the current and future sales of the product to the acquirer.

3) What is the worst use of a patent?
    Late night television advertisements convincing inventors to pay for "invention promotion".  See what the USPTO says about them.

Why don't I just Patent it Myself?

1) I read a book that says I can just file my own patent.  Why shouldn't I just do that instead of hiring you?
    You are certainly welcome to do this.  Here is the expressed theory on how this will work:
        1) The inventor does a writeup of his own case, and files it with the USPTO as a non-provisional case. 
         2) After 2-3 years of sitting in the examination queue, the case comes up for examination, and the examiner finds patentable matter among rejectable claims.
         3)  Using a seldom-used section of the MPEP, the examiner "writes claims for the applicant where it is clear that the application contains patentable matter". 
    It would be great if this happened. 
       What actually happens is the patent examiner correctly finds the specification missing essential matter, and issues  35 USC 112 rejections, which are for lack of enablement - the patent does not fully and completely describe the thing it is claiming.  Often, 35 USC 102 prior art rejections are provided as well.  The problem is that the only way to overcome these rejections on a thin or incomplete writeup is to add new material, and the only way to do this is to file a "continuation in part" application, which is a new case with a new filing date, effectively starting the entire patent process over.  The filing fees and effort from the first case are lost, and the case proceeds from a fresh start, years after the original filing.  If the inventor has been selling a product based on this patent application for more than a year, a statuatory one year "on sale" bar prevents filing the required Continuation in Part, and the original case dies a quiet death with irrecoverable 35 USC 112 rejections.

        Surprisingly enough to the filing inventor, this fatal trajectory occurs all the time.  So far, I've been handed 12 of these cases to attempt to rescue after a fatal office action was issued.  All of these cases were irrecoverably flawed at the time of filing, and the inventor didn't find out until they were rejected for 35 USC 112 by the PTO, many years after the initial patent filing.

Why don't I just file a Provisional Patent?

1) What is a provisional patent, and do I want one?
  Provisional patent status used to be the harsh penalty for filing an application which was received by the PTO with one of the following fatal flaws:
  1. Failure to include a specification (pretty hard to do)
  2. Failure to identify at least one inventor
  3. Failure to contain any required drawing
  4. Failure to set forth at least one claim (which is the preferred form of intentionally filing a provisional application)
The penalty for filing a flawed application in this manner is refusal of the PTO to issue a filing date until the fatal defect is remedied.  Until then, no patent examination occurred - the patent sat in repose until the missing element was submitted, upon which it would be accorded a filng date and placed in the examination queue.

2) So what is a provisional patent good for?
  A provisional patent application is valuable in the case where multiple simultaneous inventions take place, but the value of the inventions will not be known until within a year from the initial filing.  The best example is a pharmaceutical company which develops 200 different drugs from a common family, but doesn't know which ones to file patents on, and won't until some initial clinical trials are conducted.  So the pharmaceutical company files provisional patent applications on all 200 drugs, and hope the clinical trials show promise for some subset that they then convert into non-provisional (regular) patent application within the next year.  All the other applications are then abandoned.  An alternative way to do this on the non-provisional track is to simply describe all of the drugs in a single patent application, and then amend the claims in favor of the ones that work.

3) But the USPTO has forms for provisional patent applications!
  If there is urgency to file a patent application, then file a proper non-provisional case, which will get placed in the examination queue.  When non-provisional patent cases are written, they are written complete with claims, and the claims are reviewed against the patent specification to verify that each and every element of the claim is present and fully described in the specification and drawings. In the absence of written claims, it is not possible to test the specification to determine whether it is fully enabling.  Since claims have to be written to perform this 35 USC 112 enablement test,  the entire application might as well be filed as a (regular) non-provisional case!

How much will it Cost?

1) What is the cost for filing a non-provisional utility patent application?
  The preparation fee to prepare the application depends on how clearly written the original writeup is, how complicated the case is, and how crowded is the field of art (number of previous patents and publications on the same topic).  Very generally, patent applications are in the range of $5,000-$9,000 to prepare and file, plus costs for formal drawings and actual PTO fees.  If you provide a complete writeup, we can provide a written quote for your particular case.

2) I don't have the thousands of dollars to file a proper non-provisional patent application.  What should I do?
   Product development is expensive compared to patent expense, and product promotion and sales is very expensive compared to product development.  If the patent expense of the new product represents a large fraction of the operating budget of the company, something is seriously wrong with the execution strategy for the company.  It is probably wiser to spend the scarce resources of the company on building a prototype and making initial sales to verify there is a market for the product.  If you introduce your investors to distributors excited about your product, you'll have no problems raising money for your company.  Just remember to file your patents within a year of first public use or sale.

Disclaimer:  The information on this page is subject to change and review, and is provided for informational purposes only.  The information contained herein is not legal advice. Some content, particularly relating to value judgements on uses of patents and the like, is purely the author's opinion.  The patent practice of is restricted to filing and prosecuting patents before the Patent and Trademark Office.

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