A patent confers exclusive rights in the invention to the owner of the patent for the life of the patent. A patent’s life is typically 20 years from the
date if was filed. During this period, the patent owner can stop others, i.e. cheaters or infringers, from making, selling or practicing the invention. A
patent, therefore, can be an effective offensive and defensive tool for commercial purposes.
Initial Consultation with Patent Attorney
The patent process begins with your initial consultation with a patent attorney. This initial consultation is free.
CONFIDENTIALITY:
Our Registered Patent Attorneys are licensed to practice before the USPTO. They are legally bound to strict confidentiality
regarding disclosures from clients. We will not share or use a client’s invention-related materials in any manner without the client’s prior permission.
The patent attorney will need to understand the details of your invention, it’s advantages and benefits, etc. Based on this initial consultation, the
patent attorney will advise you of your options. You should then be able to make a decision on how you wish to proceed based on your budget and your interest
in pursuing a patent.
Patentability Search
A patentability search is an optional step before filing a patent application. Many inventors choose to get one because it
exposes what else is out there. The search results can help inventors decide whether to spend the time and money pursuing a patent. They can also help the
patent attorney in his efforts to get the broadest patent protection for the invention.
The Patent Application
Preparing the patent application is arguably the most significant part of the patenting process. Here is where the patent
attorney’s skills make critical contributions.
a) Specification - A Patent Application’s specification must meet certain legal criteria, but its essential purpose is to describe the invention in
proper detail and its advantages. The detailed description typically includes professional drawings. The specification must meet certain legal standards,
which the patent attorney ensures are met.
b) Claims - The claims define the intellectual property rights granted by the patent to the patent owner. Drafting claims is a complex art and an
experienced patent attorney is skilled at it. It is important that the claims be drafted to maximize the property rights the invention is entitled to.
The Patent Examination Process
The USPTO assigns new patent applications to Examiners who examine the patent applications. An Examiner typically
issues an Office Action advising reasons, if any, why a patent application is not eligible for issuance. The applicant can respond to the Office Action
through his patent attorney with amended claims and arguments to overcome those reasons, or ‘rejections.’
Eventually the Examiner either allows the patent application to issue as a patent or finally rejects it. The applicant can appeal the rejection, although an
appeal is an expensive and lengthy process.
Provisional vs Non-Provisional patent applications
When filing a new patent application, the applicant may file a provisional or a nonprovisional
patent application.
A) Provisional - A provisional patent application is a comparatively cheaper option to achieve a filing date, or priority date, for an invention
while also gaining the right to use ‘Patent Pending’ for the invention. Although a provisional patent application has lower requirements, it must disclose the
details of the invention and support the claims in a future non-provisional patent application.
A provisional patent application needs drawings to support the details of the invention, but the drawings can be informal. A provisional application does not
need claims, however. These informalities help reduce the cost of filing the patent application, which can be helpful for new entrepreneurs or businesses that
want to test the commercial viability of a new invention before spending more money on it.
A provisional patent application is not examined by the USPTO, and it has a life of only 1 year. The applicant must either convert the Provisional application
to a Non-Provisional within that 1-year period, or else it expires. If a Provisional application expires, the applicant must file a whole new patent
application and get a new filing date, the priority date of the initial Provisional application is no longer available.
It is important to note that a Provisional patent application will never issue as a patent. It must be converted to a Non-Provisional during its 1-year
lifespan and examined by the USPTO in order to issue as a patent.
B) Non-Provisional - A Non-Provisional patent application is a complete patent application, with formal drawings and a proper set of claims. It is
formally examined by the USPTO.
If and when the claims of a Non-Provisional patent application are deemed patentable by the USPTO, the Non-Provisional patent application issues as a patent.
Design Patents versus Utility Patents
There are 2 types of patents issued by the USPTO, utility patents and design patents.
A) Utility Patents - Utility patents are the most common type of patent applications filed with the USPTO.
A utility patent covers the functional aspects of an invention. They usually result in broader protection for the invention the a design patent.
B) Design Patents - Design patents cover the ornamental design of an invention. They do not protect any functional aspect of the invention. As a
result, design patents generally provide narrower patent protection.
Design patents are not very common. They are much cheaper to prepare and file as compared to a utility patent, and they are examined or processed by the USPTO
much faster than a utility patent. However, because of their narrower patent protection inventors prefer filing a utility patent. That is, unless, the
ornamental design of the invention is what the inventor seeks to protect.
Patent Issuance and Maintenance
When a patent is granted, the USPTO requires an issuance fee.
Additionally, periodic maintenance fees must be
paid during the life of the patent. A patent attorney can assist with more details about your specific patent.
Notice of the patent to the public
When your patent application is filed, provisional or non-provisional, you can begin marking your product as
patent pending, sometimes abbreviated as ‘Pat. Pend.’
After your patent issues, you must mark your invention with its patent number to give notice to the public that it is protected by your patent. This is done
by marking the item ‘US Pat. No. xxxxxx.’
However, some items are too small to be marked with the patent number, or cannot be marked for another reason. In such cases you may mark the item’s packaging
instead. Note though that you must mark the item with its patent number or else you may not be able to collect damages against an infringer
Foreign patent coverage
Inventors seeking patent protection overseas must apply for a patent in each respective country. There is no such thing as
an international patent where an invention receives patent protection globally.
Seeking patent protection in foreign countries can be an expensive and timeconsuming process. For that reason the applicant must choose countries carefully.
The patent application will need to be prosecuted separately in each respective country, often requiring assistance from local patent counsel in the
respective country.
An alternative for US applicants seeking overseas patent protection is the Patent Cooperation Treaty (PCT). PCT applications can be filed in the USPTO, which
gives the applicant 30 months for foreign filing. The applicant can designate a certain country’s IP office to do the search, such as the USPTO, and then file
national patents in the designated foreign countries. The countries must be members of the PCT, which has new countries joining all the time.
