Patents

What is a patent?

A patent for an invention is the grant of a set of exclusive property rights to the patentee (inventor), issued by a country for a fixed period of time in exchange for the public disclosure of details of an invention.

What is the legal effect of a patent?

A patent provides the right to prevent or exclude others from making, having made, using, selling, offering to sell or importing the claimed invention. The rights given to the patentee do not include the right to make, use, or sell the invention itself. In some instances, the new patentee may be required to obtain licenses from other patent holders in order to make use of, or “practice”, the patentee’s own invention.

What is patent “prosecution”?

Patent prosecution is the process of drafting, filing, and negotiating with the US Patent and Trademark Office for the grant of a patent. Patent prosecution includes drafting a patent application and filing the application with the Patent Office. Typically, it is also necessary to present persuasive arguments on behalf of the applicant and to negotiate with the Patent Office Examiner for an allowable set of claims. Patent prosecution is distinct from patent litigation, which relates to legal proceedings for infringement of a patent after it is granted.

Are there different types of patent applications?

In the United States there are two types of patent applications: 1) provisional and 2) non-provisional.

What is a provisional patent application?

A Provisional Application for Letters Patent is a U. S. national application for a patent that is filed in the US PTO. A provisional patent application includes a written description and, where necessary, a drawing of the invention. The application is given a filing date and patent-pending status, but is not examined by the Patent Office.

Provisional Applications, which do not mature into patents, provide a one-year time period for the inventor-applicant to determine whether the invention will be commercially viable. As an example, an applicant might use the time to explore manufacturing or licensing the invention. The formal requirements for a Provisional Application are considerably less stringent than for a regular U.S. utility patent application, and the filing fee is lower. The applicant is also permitted to use the term “Patent Pending” during the one-year pendency period. The Provisional Application must be converted to a regular U.S. utility patent application, if at all, within one year or the ability to file a patent application claiming the invention may be lost.

What is a regular U.S. utility patent application?

Compared to a Provisional Patent Application, a regular U.S. Utility Patent Application includes a far more detailed written description of the invention, together with what are known as formal drawings. A regular utility patent application contains a detailed specification describing the invention, and “claims” that describe the ‘metes and bounds’ of the invention in legal terms. The claims identify the invention that will be protected by the patent when the patent issues.

The Patent Office Examiner examines the application and its claims to determine whether the claims are allowable over any “prior art”. The process from filing to issuance of the patent can take from 18 months to three or more years, depending on the backlog at the Patent Office.

Are there different types of patents?

In the United States there are three types of patents: 1) Utility, 2) Design, and 3) Plant.

What is a Utility Patent?

Utility patents may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof. A utility patent offers an invention the broadest protection, covering the structural and functional features. Generally, the term of a utility patent is 20 years from the date on which the application for the patent was filed in the United States. Periodic “maintenance fees” are required by the U.S. government during the life of the patent to maintain the patent in force.

Note also that, in the event an applicant has publicly disclosed, offered for sale, or sold the invention, a patent application must be filed within one year of the disclosure to obtain a valid patent.

What is a Design Patent?

Design patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture. The design patent protects only the appearance of an article. It does not protect structural or functional features. A design patent currently has a term of 14 years from grant, and no fees are necessary to maintain a design patent in force.

What is a Plant Patent?

Plant patents may be granted to anyone who invents or discovers, and asexually reproduces, any distinct and new variety of plant. The term of a plant patent is 20 years from the date on which the application for the patent was filed in the United States.

What can be patented?

Any new, useful, and non-obvious process, machine, manufacture, composition of matter, or improvement thereof may be the subject of a patent.

What is a “process”?

A “process” is defined as an act or method, and primarily includes industrial or technical processes.

What is the definition of “manufacture”?

The term “manufacture” refers to articles that are made, and includes all manufactured articles.

What is a “composition of matter”?

The term “composition of matter” relates to chemical compositions and may include mixtures of ingredients as well as new chemical compounds.

Who may apply for a patent? 

With certain limited exceptions, only the inventor(s) may apply for a patent. If there is more than one inventor, all inventors must participate as applicants. Patent applications may be, and frequently are, assigned to the company where the inventor(s) work.