While the patent application process can be lengthy, it is entirely necessary in order for inventors to protect their valuable intellectual property. This article is the first in a series of four from the associates of the law firm Panitch Schwarze Belisario & Nadel LLP.
by Bijal Shah-Creamer
PATENTS ARE ESSENTIAL to an inventor for protection of property rights in an invention. Just as individuals or companies would not leave their physical property unsecured, they should avoid leaving their intellectual property unprotected.
A patent for an invention is the grant of a property right to the inventor, issued by the United States Patent and Trademark Office (USPTO). A patent provides the patent holder with exclusive and negative rights; i.e., the right to stop others from making, using, importing, selling, or offering to sell the patented invention in the United States (some activities abroad can also be implicated). A patent essentially gives the patent holder a monopoly over the patented invention for the life of the patent, which provides inventors with an incentive for discovering, researching, creating, and developing new inventions, and also encourages public and detailed disclosure of new inventions. As it says in the Constitu-tion, rights are secured to inventors "to pro-mote the Progress of Science and Useful Arts."
Design Patents and Utility Patents
Two primary types of patents that may be obtained from the USPTO and that are discussed in this article are design patents and utility patents. Design patents have an effective term of 14 years from the issue date of the patent and cover "any new, original, and ornamental design for an article of manufacture" (35 U.S.C. § 171). They do not protect any of the functional features of the article. A design patent may, however, protect computer-generated icons as long as the icons are contained in an article of manufacture, such as a computer screen, monitor, or other type of display panel. For example, it is possible to obtain design patent protection for the appearance of a software program's graphical user interface.
Utility patents are the most common type of patents. They have an effective term of 20 years from the application filing date (though the exact terms can vary) and cover the functional or useful aspects of an invention. Utility patents may be granted for any "new and useful machine, manufacture, or composi-tion of matter, or any new and useful improve-ment thereof" (35 U.S.C. § 101). Abstract ideas, laws of nature, and physical phenomena are not eligible for patent protection.
The first step in the patent process is to assess whether the invention constitutes "patentable subject matter." To be available for patent protection, inventions must also be useful, new, and non-obvious to "one of ordinary skill in the art." In other words, an invention cannot have been an obvious development to a person with average levels of skill and knowledge in the field of the invention. One of ordinary skill in the art is not an expert, but is also not a person with no knowledge in the field.
To be deemed useful, an invention must be developed and have a practical value or application. The usefulness issue does not often figure into the patent process.
An invention is considered new (or novel) only if it is truly innovative and was not previously publicly known or used. For novelty and non-obviousness determinations, the invention must be analyzed in view of the prior art, which is information that was publicly available prior to or at the time of the invention. Prior art may take several forms, such as a tangible publication (e.g., a patent or published patent application), a public presentation, or a public use or application. If each claimed feature of the invention is disclosed in a single prior art reference, the invention is deemed as being anticipated by, or not novel compared to, that single prior art reference, and thus the invention will not be patentable. If it would have been obvious to one of ordinary skill in the art to combine different aspects of two or more prior art references, and the combination has each of the claimed features, the invention is considered as being obvious based on the combination of these prior art references.
Next Steps: A Study and the Application
Before filing a patent application, a company should have its patent attorney conduct a patentability study. This study entails a search of the prior art for disclosures relating to the invention and an evaluation of the identified prior art to determine if the invention is new and non-obvious. The study may also be helpful in homing in on any particular aspects of the invention that may be patentable, even if other aspects are found to have already been publicly known. The patent attorney will then provide an opinion on whether or not any features of the invention may be entitled to patent protection. A patentability study is not a prerequisite to filing an application, but is generally a wise step considering the relatively high costs associated with filing and prosecuting a utility patent application.
If the patentability opinion is positive, the next step in the process is preparing and filing a patent application with the USPTO. Drafting a patent application is a collaborative effort between the inventor and his or her patent attorney. Specifically, the patent attorney needs the inventors' technical knowledge of the invention in order to draft the application, but the patent attorney's legal and technical knowledge is also necessary for development of a robust and legally sound application.
A provisional or a non-provisional application may be filed. A provisional application is less formal and detailed than the latter. However, a patent will not issue from a provisional application and further discussion of a provisional application is not warranted here. A non-provisional utility patent application must include certain components in order to be considered complete. For example, each application must include a title, a description of the background of the invention, a detailed description of the invention, drawings (if necessary), and claims. The application must be sufficiently detailed and comprehensive enough to convey to one skilled in the art how the invention may be made and used. A patent applicant may not secure a valid patent while keeping secret an important aspect of the invention. The application must also set forth the best mode of carrying out the invention as contemplated by the inventor.
The claims are the most important part of the application. They define the scope of coverage of any patent that may issue from the application. Though the application as a whole may provide great detail about an invention, only the features recited in the claims are entitled to patent protection. Thus, whether or not a patent is infringed is determined by looking at the claims. Great care and thought should therefore be put into their drafting and phrasing. It is often estimated that almost half of the time spent in preparing an application is spent on the claims.
Applicants should also take care to properly identify who exactly should be named as an inventor. Any individual who conceived and developed any of the claimed features of the invention must be named as an inventor. Since the conception and development of an invention is often a collaborative effort, many patents name joint inventors. The decision as to who should be named as an inventor should be discussed in detail with the patent attorney because inventorship is a legal question that could have a significant impact on the strength of a patent for the invention. For example, if the wrong individuals are named as inventors or if all of the legitimate inventors are not identified, the patent may later be challenged and possibly invalidated by a third party desirous of making, using, or selling the patented invention.
The Application Review Process
Filing a patent application with the USPTO does not mean that applicants will receive a patent for their invention. There is still a long road ahead. The filed application is assigned to a patent examiner and the prosecution stage of the patent process begins. The examiner will evaluate the application to determine whether or not the application meets all of the criteria for patentability and will conduct an independent search of the prior art. The inventor and/or the patent attorney are obligated to inform the examiner of all information known to them that bears on the patentability of the invention (commonly known as the "duty of disclosure"). If the examiner immediately determines that the claimed invention is patentable, which is very rare, he/she will issue a notice of allowance, which means that the application has been allowed.
More likely, however, upon an initial review of the application, the examiner will find that the claimed invention is not patentable in view of the prior art and will issue an office action in which some or all of the claims are rejected in view of the prior art. In an office action, the examiner may also object to the application for formal matters, such as for not providing an enabling disclosure. The patent applicant, working with his or her attorney, must then respond to the office action. Throughout the entire prosecution stage, the patent attorney works with and under the direction of the applicant to prove to the examiner that the claimed invention is novel and would not have been obvious in view of the prior art. A response to an office action may include technical and/or legal arguments, as well as revisions (or amendments) of the claims in an effort to overcome the prior art rejections and the objections. Because of these possible amendments to the claims, the scope of the claimed invention may change during prosecution of the application. The prosecution process typically involves many such back-and forth communications between the examiner and the patent attorney.
Because the examination of an application is subjective to an extent, based on the views and interpretation of the examiner, the prosecution process varies across the board. The prosecution of one application will never progress exactly as another. Also, the prosecution process may take several years to complete, depending upon the complexity of the invention, the amount of relevant and material prior art, etc. (see Fig. 1 for a timeline of the overall patent process).
Fig. 1: The patent application phase (top) typically lasts from about a year and a half to two and a half years. Once the patent is granted (bottom), a series of maintenance fees must be paid throughout the life of the patent.
If the examiner ultimately finds that the claimed invention is useful, novel, and non-obvious, the examiner will then issue a notice of allowance and the patent will issue once the issuance fee is paid. During the life of a utility patent, there are also maintenance fees that must be paid at specific time intervals.
Patents clearly play a significant role in all industries, particularly technology-based ones, and can give companies and individuals the competitive edge they need to be successful. Much time and expense goes into developing an invention for commercial sale, and companies and individuals need to make the effort to protect their valuable investments. Patent holders have the significant advantage of being able to protect their patented inventions from infringement by their competitors and usually have the upper hand in competitive situations. Those who do not protect their inventions by securing patents will often find that their inventions are vulnerable to exploitation by competitors, and that they are left without any recourse to protect their hard work and investments. Thus, while the process of getting a patent may sometimes feel long and drawn-out, it is important to keep in mind the end goal of a patent and all of the associated advantages and rights to which the patent's holder will be entitled. •