What is a patent?

Differences in structure, function or operation may be the basis for seeking patent protection. A patent is a property right granted by the Government of the United States of America to an inventor "to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States" for a limited time in exchange for public disclosure of the invention when the patent is granted.

What is a utility patent?

A utility patent is provided for a new, non-obvious and useful: process, machine, article of manufacture; composition of matter; and an improvement of any of these. A patentable invention must be novel, non-obvious, adequately described and enabled (for one of ordinary skill in the art to make and use the invention) and claimed in clear and definite terms.

What cannot be patented?

Following cannot be patented: laws of nature; physical phenomena; abstract ideas; literary, dramatic, musical, and artistic works (these can be Copyright protected); inventions that are not useful (such as a perpetual motion machine); and inventions that are offensive to public morality.

Term of a Patent:

For applications filed on or after June 8, 1995, utility and plant patents are granted for a term, which begins with the date of the grant and usually ends 20 years from the date you first applied for the patent subject to the payment of appropriate maintenance fees. Patents in force on June 8, 1995 and patents issued thereafter on applications filed prior to June 8, 1995 automatically have a term that is the greater of the twenty-year term discussed above or seventeen years from the patent grant.

Only a non-provisional application, when examined and approved at the Patent Office, results in a patent. However, under certain circumstances, filing a provisional application may be beneficial.

What is a provisional application?

A provisional application for patent is a U. S. national application for patent filed in the USPTO under 35 U.S.C. § 111(b). It allows filing without a formal patent claim, oath or declaration, or any information disclosure (prior art) statement. A provisional application is not examined and does not result in the grant of a patent. It provides the means to establish an early effective filing date in a later-filed non-provisional patent application filed under 35 U.S.C. § 111(a). It also allows the term "Patent Pending" to be applied in connection with the description of the invention.

What is a non-provisional application?

Applicants are entitled to claim the benefit of a provisional application in a corresponding non-provisional application filed not later than 12 months after the provisional application filing date. Under the provisions of 35 U.S.C. § 119(e), the corresponding non-provisional application would benefit in three ways: (1) patentability would be evaluated as though filed on the earlier provisional application filing date, (2) the resulting publication or patent would be treated as a reference under 35 U.S.C. § 102(e) as of the earlier provisional application filing date, and (3) the twenty-year patent term would be measured from the later non-provisional application filing date.

A provisional application for patent (provisional application) has a pendency lasting 12 months from the date the provisional application is filed. The 12-month pendency period cannot be extended. Therefore, an applicant who files a provisional application must file a corresponding non-provisional application for patent (non-provisional application) during the 12-month pendency period of the provisional application in order to benefit from the earlier filing of the provisional application. In accordance with 35 U.S.C. § 119(e), the corresponding non-provisional application must contain or be amended to contain a specific reference to the provisional application within the time period and in the manner required by 37 CFR 1.78.

Pros and cons of filing a provisional application and converting it to a non-provisional application:

Once a provisional application is filed, an alternative to filing a corresponding non-provisional application is to convert the provisional application to a non-provisional application by filing a grantable petition under 37 CFR § 1.53(c)(3) requesting such a conversion within 12 months of the provisional application filing date. However, converting a provisional application to a non-provisional application (versus filing a non-provisional application claiming the benefit of the provisional application) will have a negative impact on patent term. The term of a patent issuing from a non-provisional application resulting from the conversion of a provisional application will be measured from the original filing date of the provisional application.

By filing a provisional application first, and then filing a corresponding non-provisional application that references the provisional application within the 12-month provisional application pendency period, a patent term endpoint may be extended by as much as 12 months.

Strategies for protecting your patentable IPs:

Completing an audit will assist you in finding new products and services that can enhance your growth potential. Further, knowing when inventions were created and disclosed to the public or sold is very important. You may not be able to get protection on your invention in the United States if it was publicly disclosed or offered for sale more than one year before the filing date of the application. Finally, not knowing when an invention was disclosed or offered for sale may prevent you from getting a patent in other countries since most other countries have an absolute novelty requirement and thus do not allow any disclosures prior to filing of the application. Having a system for documenting new inventions will allow you to more easily write the patent application or assist your attorney or patent agent in writing the patent application. It will also assist you with proving when you created the invention and other ownership issues. It will assist you in tracking the contributions that were made by each of your employees. This is important since any patent that issues must name the actual inventors. Patent misuse may be found where the patent owner forces a licensee to purchase additional and usually unnecessary products as a condition for obtaining the license for the patented invention. An example of this would be contractually requiring a licensee to buy a license for patents to manufacture CDs along with the license for a patent to make a vaccine.

Antitrust issues are a concern here because the patented invention is tied to an unpatented product. Additionally, false marking may be a misuse of the patent. Either labeling a product or process as patented or patent pending when it is not may result in the imposition of a monetary penalty. If the patent has expired or the patent application is abandoned, the safest course to take is to discontinue using the phrases "patented" or "patent pending" as quickly as practicable.

For additional Information, visit:

http://www.uspto.gov/patents/process/index.jsp - A flow chart that describes the process for obtaining a Utility Patent.

http://www.uspto.gov/inventors/iac/ - The Inventors Assistance Center (IAC) provides patent information and services to the public. The IAC is staffed by former Supervisory Patent Examiners and experienced Primary Examiners who answer general questions concerning patent examining policy and procedure.

http://itunes.apple.com/us/podcast/uspto-intellectual-property/id303531158?ign-mpt=uo%3D4 - Podcasts from USPTO that discuss basics of patents and trademarks.