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What Is A Patent?
A US patent is a grant of certain rights to you, an inventor, by the United States government in exchange for disclosing your invention to the public.  It is real property just like a deed to your house.  With your house, you may live in it, you may rent it, and you may sell it.  You may even abandon it at will.  Your heirs may inherit your house.  Similarly, with a patent on your invention, you may make, use, or sell your invention, you may permit or prevent others from making, using or selling your invention, and you may sell your patent.  You may abandon your invention at will.  Your heirs may inherit your patent.

The government’s right to grant patents is written in the Constitution.  It was set up to promote development of technology.  The Founding Fathers believed that if you disclose your invention to the public, others will be able to build on your work.  In exchange for disclosing to the public, rather than keeping your invention secret, you get a patent.  That patent grants you exclusive rights to your invention for a limited time.

Patents are granted and administered by the United States Patent and Trademark Office.  This is a federal agency located in Alexandria, Virginia.

What Can A Patent Protect?
A patent can be used to protect your invention if it is a device, machine, apparatus, or article of manufacture.  It can protect a process, a method, a composition of matter, a newly developed plant, or an ornamental design.  It can protect some living matter such as a micro-organism.  It can protect computer software and methods of doing business.  It can even protect improvements to all of these things.  When asked to define the scope of a patentable invention, Thomas Jefferson said, “anything under the sun that is made by man.”

Necessity is the mother of invention.  If there is a need for something, sooner or later, someone is bound to fill that need.  So, several individuals working independently can invent the same thing.  In order for you to get a patent on your invention, you must be the first inventor.  Also you must not have disclosed your invention to the public or placed your invention on sale more than one year before applying for your patent.

What Can’t A Patent Protect?
A patent cannot be obtained for an idea, a mathematical formula, or a law of nature.  So, Einstein’s Theory of Relativity or his equation E=mc2 is not patentable.  Patentable inventions must be workable.  So, perpetual motion machines are not patentable.  You cannot patent something found in nature, nor can you patent a plant that you produced by sexual reproduction.  Although ornamental designs are patentable when they are associated with manufactured articles, works of art, by themselves, are not patentable.  You may not patent a story, a book, a poem, or a play.

How Do You Get A Patent?
In order to get a US patent, you must send a patent application to the United States Patent and Trademark Office.  Once you file the application, you have a PATENT PENDING.  Your patent application remains pending until you either get a patent or give up trying to get a patent.  Once filed, your application waits for a long while until it is examined by a Patent Office examiner.  The examiner then searches a lot of patent and non-patent literature to see whether you are the first inventor.  If he or she finds something to indicate that you are not, your patent is rejected based on the prior art.  Otherwise, the application will be ALLOWED, and the patent will eventually issue.  The first office action by the examiner is non-final.  To avoid abandonment of the patent application, you are required to respond to every rejection and objection put forth by the examiner.  You may do this by trying to convince the examiner that he or she is wrong, or by changing your application to get around the rejection.  After reading your response, if the examiner is not convinced by your argument or changes, the second office action will normally be a final rejection.  On the other hand, if the examiner is convinced, then the application is ALLOWED, and you get your patent.

What Are The Different Types of Patent Applications?
There are several different types of patent applications:

  • Utility Patent Application - for a machine, apparatus, device, manufactured article, process, method, or composition of matter.  Under this type of application, there are three different applications that are allowable:
  • Provisional Utility Application - gives you a priority filing date and allows you to claim PATENT PENDING.  However, this type of application is never examined.  From the date of filing a provisional application, you must file a non-provisional application on the same invention within one year to preserve your rights.  A provisional application expires one year after filing.
  • Non-Provisional Utility Application - a utility application from which a patent may issue.
  • International Application - a utility application filed under the Patent Cooperation Treaty (PCT) entered into by most countries.  This affords an inventor an opportunity to file a single application that will be recognized by those countries that signed the treaty.  A PCT international application is examined, but, by itself, may never issue as a patent.  Following a prior art search and examination, it must be converted to a patent application in each country where protection is desired.
  • US National Stage Application - equivalent to a Non-Provisional Utility Application.  However, it is a US filing resulting from a PCT International Application.  The International Application must have first been filed designating the US, and the National Stage Application must claim priority to the International Application.
  • Design Patent Application - for an ornamental design of a manufactured product.  It does not protect either the structure or function of the product itself.  However, it can protect the appearance of computer icons and screens.
  • Plant Patent Application - for newly developed plants that are not found in nature and that are produced asexually.

What Are The Elements Of A Patent Application?
All patent applications must at least have a written description of your invention.  This is called a SPECIFICATION, that is a section that discloses your invention in such a way that anyone with ordinary skill may make and use it.  If there are multiple ways of making and using your invention, your specification must at least disclose the best mode.  You cannot keep the best mode secret and hope to obtain a valid patent.  If drawings are necessary to adequately describe your invention, they must be included.  If they are not necessary, then they may be omitted.  Most patent applications have drawings.

As mentioned before, a patent is a contract with the public.  The complete disclosure of your invention is what you give up.  Your protection is what you get.  However, the Patent Office requires you to define exactly what you want to protect in a separate section.  This section is called CLAIMS.  Clearly then, the claims represent the most important part of the patent.  The specification and the drawings are a scientific disclosure of your invention.  The claims legally define the protection to which you are entitled.

When a patent application is examined, the examiner only evaluates the claims.  However, he does look to the specification and drawings to make sure that you have disclosed everything that you claimed.  If you have not disclosed everything in a manner consistent with the claims, the examiner will issue an objection and will give you the opportunity to correct the specification and the drawings.  However, you cannot add new material.

In the examination process, the examiner relies on his search of the prior art, and compares your claims (on a claim-by-claim basis) with the teachings of the prior art.  If the prior art already taught what you claim, then you are not the first inventor, and that claim will be rejected.  It is possible for some claims to be allowable while other claims are rejected.  In a non-provisional or national stage US utility application, a patent will issue only when all claims are allowable.

A PCT international application goes through the same examination process as any non-provisional utility application.  However, no patent ever issues from such an application.  Instead, the International Bureau sends the application along with the results of the search and examination to the patent offices in the countries that you designate.  Patents are issued locally by those patent offices.

A provisional utility application is never examined.  It acts only as a “place holder” so that you may later file a non-provisional application.  Therefore, while claims can be included in a provisional application, they are not necessary.

Do I Need A Licensed Patent Practitioner--Or Can I Obtain A Patent Myself?
Any inventor may represent himself or herself before the Patent Office.  They call it pro se representation.  There are a number of popular books that have been written to help pro se inventors.  One such book is “Patent It Yourself” by David Pressman, published by Nolo Press.  This is an example of one such book, but there are many others.  For those who are fast learners, these books describe how to prepare and file patent applications.  However, the process is complicated, and novices are prone to making mistakes that can cost them dearly in terms of providing them with patent protection.

If you feel that you presently cannot afford legal fees associated with obtaining a patent, you should be encouraged to file a provisional application using the techniques presented in the books.  Since only a disclosure of your invention is required, you will be describing what you know best.  Your drawings may be hand-drawn sketches or photographs.  They do not need to be formal.  However, a word of caution!  YOU MUST DISCLOSE YOUR INVENTION COMPLETELY IN ORDER TO CLAIM THE BENEFIT OF THE PROVISIONAL APPLICATION WHEN YOU FILE A NON-PROVISIONAL APPLICATION.

When you file a non-provisional application, you will be required to correct all informalities, and you will be required to submit claims.  A non-provisional application must contain at least one claim.  These claims are legal instruments.  Of course you may still represent yourself before the Patent Office.  However, ask yourself this question!  If you were entering into sensitive negotiations with a large company regarding your invention, would you draft your own written contract -- or would you hire an attorney?  Writing a good “iron clad” contract to protect your interests is the job of an experienced attorney.  Similarly, writing a non-provisional patent application with its claims is the job of an experienced patent practitioner.  You can do it yourself.  However, you could end up with a worthless patent.

What Is Patent Prosecution?
Once your patent application is received by the Patent Office (either by mail or electronically), it is reviewed and checked for completeness by OIPE (Office of Initial Patent Examination) in the case of a utility, design, or plant application, or it is reviewed by the PCT Group in the case of an international application.  At this point, a Patent Office file wrapper is created which permanently contains all documents relating to your patent application.  The reviewing organizations look to see whether there are any missing pages, whether the drawings are readable and refer to the specification, whether claims are present, and whether all of the filing fees have been correctly paid.  If anything is missing, the reviewing organization will issue a notice of missing requirements.  You will be given a short time period to remedy the situation -- usually one to two months.  Once the application is complete, the reviewing organization will select a technology center art group to examine your application.  The art group handles all inventions similar to your own.  In this way, an examiner assigned to your case should fully understand your invention and be familiar with the prior art.  Your application will sit and wait there for further action.

After a period of time, your application will be assigned to a particular examiner.  It will then wait again.  Finally, the examiner will search the prior art and will issue a first office action.  Theoretically, only fourteen months should elapse between the filing date and the first office action.  In reality, several years could pass.

            A first office action is always non-final.  In that action the examiner could do the following:

  • A single patent may protect only one invention.  The examiner may rule that your patent application claims more than one invention.  In that case, he or she will define the various inventions contained in the application.  You will be required to elect only one invention from the group.  You may file additional patent applications on the non-elected inventions.
  • The application could receive a first office action allowance.  In that case, with the payment of additional fees, your application will issue as a patent.  However, first office action allowances are very rare.
  • The application could receive an Ex parte Quayle action.  This means that it is allowable if certain formalities are corrected.  The usual requirement is that the drawings need correction.
  • One or more claims could be rejected.  The grounds for this could be that your invention is anticipated by a single piece of prior art or it could be obvious over a single piece of prior art or a combination of more than one piece of prior art.  Another grounds for rejection would be that the written description or enablement requirements were not met.  In addition, one or more claims could be objected to.  Normally, claim objections may be removed by amendment.

Once you receive an office action, you are required to respond to it in order to avoid abandonment of the application.  To be complete, your reply must respond to every rejection and objection put forth by the examiner.  Failure to submit a complete reply could result in abandonment.  In your reply, you may argue that the examiner’s grounds for rejection are in error.  This is called a traversal.  However, if you believe that the examiner is correct, you may amend your claims to remove the examiner’s rejections.

A second office action on the merits is usually final.  The examiner will either issue a notice of allowability, an Ex parte Quayle action, or a final rejection.  Upon receipt of a final rejection, you may either request reconsideration, file a request for continued examination (along with an appropriate fee), or appeal the examiner’s decision to the Board of Appeals and Interferences (BPAI).  There is a reasonably high success rate in being able to overturn the examiner’s rejection on appeal.

Is It Necessary For You (Or Your Practitioner) To Search The Prior Art?
You are not required to perform your own search of the prior art.  However, if you do search, the results of the search needs to be reported to the Patent Office.  If you do not perform your own search, the examiner will search the prior art.  If he or she finds nothing material to patentability, your application will be allowed, and your patent will issue.  So, why would any inventor want to perform a search?
 
You should not only be concerned with obtaining a patent.  You should want to get a strong patent that would hold up in court if someone else steals your invention.  If you sue a company or an individual for infringement, the defendant will then search the prior art to prove that your patent is invalid.  If a new piece of prior art is discovered which the examiner did not consider, then your patent could be declared invalid by the courts.  However, if the examiner considered any piece of prior art and granted your patent after such consideration, the probability is very small that the courts will reconsider that art to prove invalidity.  Therefore, the more information you provide to the examiner, the stronger your patent will be.

In addition, if the examiner discovers prior art on your invention, the action you may take is very limited.  Usually you must amend the claims.  Amending the claims makes your patent weaker.  However, if you know of the prior art prior to filing your patent application, you can design around the prior invention to make your patent stronger.

How Much Does It Cost To Get A Patent?
Fees for preparing, filing, and prosecuting a patent application need to be negotiated with Patents Group LLC.  However, the cost of obtaining a patent will usually be on a cost plus fixed fee (CPFF) basis.  With some exceptions, Patents Group will usually perform its work for a fixed fee.  In this way, you should have a reasonable idea before beginning how much it will cost you to prepare, file, and prosecute your application.  The COST component includes any out-of-pocket expenses incurred by Patents Group as well as Patent Office fees.  Current Patent Office fees can be found at the Patent Office website:
http://www.uspto.gov/web/offices/ac/qs/ope/fee2005jul18.htm

If you inquire, you will probably find that the fees charged by Patents Group are considerably lower than those charged by other patent law firms.  Also, very few patent firms would be willing to quote a fixed fee that will extend to patent prosecution.  In exchange for Patents Group doing this, the FIXED FEE must be paid in advance as a non-refundable retainer before work begins.  COSTS including Patent Office filing fees must be paid before they are spent.  Patents Group does not advance any of these expenses.



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