To
be patentable, an invention must be "new,
useful and nonobvious". The application
consists of a full description of the invention
and background materials relating thereto sufficient
to enable one of ordinary skill in the art to
make and use the invention. The application
also includes drawings, a discussion of the
prior art, a detailed description of the preferred
embodiment and claims. The claims define
the monopoly the inventor would like granted
to him or her by the government in exchange
for a full disclosure of the invention.
Conducting
a Preliminary Patentability Search
prior to filing a utility patent application
is recommended. Such searches typically
take one month to complete. Even if no
"prior art" is located during the
search which might have a significant bearing
on the patentability of an invention, experience
shows that the cost of the search is often recovered
during prosecution of the application. Claims can be tailored much more closely to
the scope needed to avoid the prior art, and
thus the prosecution process in the Patent and
Trademark Office is often shortened, which results
in decreased prosecution fees.
An
Office Action from the USPTO
is usually received six to eight months following
the filing of the application. When an
Office Action is received, it is probable that
some or all of the claims will be rejected. This does not mean that the invention is not
patentable, but is rather just part of the process
of securing a patent. Upon receipt of
the Office Action, there is an opportunity to
amend the claims and/or submit argument distinguishing
the invention from the prior art via a Response. Eventually, hopefully, the application will
be allowed. At that time an issue fee
is payable to the USPTO and the patent will
issue approximately four months later.
After
a patent has issued, Maintenance Fees
are due six months before the 4th, 8th and 12th
anniversaries of the patent issue date. The amounts of these fees depend on possible
qualification of the applicant as a "small
entity." The fee schedule is also
subject to revision every three years by USPTO.
Priority
of filing dates is always important, and sometimes
crucial, especially in cases of interference
or litigation. Furthermore, the application
will be barred from filing if the invention
has been publicly disclosed, either by publication,
by public use or by offer of sale, more than
one year before the actual date of filing in
the USPTO. Another important consideration
is that if patent rights in certain foreign
countries are desired, the U.S. application
must be filed before any such public disclosure.
Provisional
Patent Applications
An
alternative to filing a utility application,
but still securing an early filing date, is
to file a “provisional” patent application.
Provisional applications may be filed in an
informal format, and do not require patent claims.
The provisional application must be followed
by a regular utility application within one
year in order to claim the benefit of the provisional
application filing date. It is often desirable
to file a provisional application as a first
step and later file a “utility”
application if the invention warrants it.
One
advantage of a provisional application is that
the term of twenty years from the filing date
will mark from the filing date of the “utility”
application, while prior art will be defined
by the filing date of the provisional application.
On the other hand, for filing priority, related
foreign applications will need to be filed within
one year of the provisional application filing
date.
For
general information on Patents,
click
here.
For information on Foreign Patents,
click
here.
