By: Chase A. Manuel
A patent is a governmental grant that gives an inventor a limited monopoly to practice their invention including the exclusive right to make, use, and sell the invention for a set term of years. Many aspiring inventors are discouraged from seeking a patent on their inventions when first faced with the United State Patent and Trademark Office (USPTO). To the uninitiated the steps involved in obtaining patent protections can be a daunting and a complex challenge. The patent process is time consuming, much of the time lasting a few years before a patent is issued. The communications from the USPTO are highly technical and require prompt responses and to each and every issue raised. Failure to properly address a rejection many times results in the premature final rejection of the application, requiring the applicant to reapply all over again. The cost of taking an invention from application to patent certificate can be a costly investment.
The United States patent laws provide several hurdles in obtaining patent protections. First, patents may be granted only on a new and useful process, machine, manufacture, or composition of matter or on new and useful improvements thereof. Essentially this means that your invention must be something that doesn’t exist right now. For example, you would have difficulty obtaining a patent for a chair with a seat and four wooden legs seeing as there are chairs and stools which have those qualities.
Secondly, certain conditions for patentability and novelty are imposed by the patent laws. The statutes provide that a person is entitled to a patent unless: (a) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention or (b) the claimed invention was described in an issued patent or in a published application for patent, in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
This can be a sticky condition for aspiring inventors. Many a time a patent was applied for or obtained but the inventor was unable to or unlucky in producing or marketing their product. A quick search of local stores or internet vendors may not reveal what a previous inventor may have patented. This is why with new patent clients we typically suggest that a patent search be performed. As well, the patent office may use the actions of an inventor to reject a patent application. For instance, a disclosure or sale made one year or more before the filing date of a claimed invention can be used to prevent a patent being issued.
Thirdly, in addition to the novelty requirement for a patent, the invention cannot be obvious in view of the prior patents, publications, and knowledge of those skilled in the subject of the invention (also known as “Prior Art”). An invention will be considered obvious if the differences between it and the prior art and the available knowledge in the field are such that the invention as a whole would have been obvious at the time it was made to a person having ordinary skill in the art to which the invention pertains.
The issues of novelty and obviousness are reviewed by the patent office after a patent application is filed. The patent office, not the inventor, must show that the invention is not novel or that it is obvious based upon certain objective standards. The inventor cannot mislead the patent office and does have a duty to disclose to the patent office any invention or evidence of which he has knowledge that may bear on the patentability of his invention. If an inventor fails to disclose such invention or evidence, the patent could be declared invalid and unenforceable if there is a subsequent challenge on those issues.
After a patent application is filed, the process known as the patent prosecution begins. Upon filing, the application will be given a Serial Number and assigned to a patent examiner in the Patent Office for review. It is the examiner’s job to review the application and determine if the invention it describes is indeed new and non-obvious and otherwise meets the legal requirements necessary for a patent to be granted. When the review is completed, the patent examiner will prepare and file a document called an Office Action that will set forth the examiner’s conclusions as to whether or not the invention as claimed is sufficiently novel to warrant the granting of a patent. It may be 18 to 24 months or longer before the patent examiner submits his initial Office Action.
In the Office Action, more often than not, the patent examiner will object to or reject all or some of the claims presented with patent application. With such an occurrence, there is no need for alarm. If the claims are objected to or rejected, the examiner is required to set forth written reasons for the objection or rejection in the Office Action. Objections and rejections to the claims are to be expected and welcomed as we will then have an opportunity to respond to the examiner and, if necessary, amend the application and claims in order to persuade the examiner to withdraw his rejection and allow the application to issue as a patent. Arguments for patentability of your application will strengthen and reinforce the validity of an issued patent. It may take multiple Office Actions before the Examiner and the applicant agree on the form and content of an application. If the applicant and the examiner fail to agree, the applicant may appeal the Examiner’s decisions to the Commissioner of Patents and Trademarks and, if necessary, to the federal courts.
The majority of attorney’s fees and costs will be incurred during the prosecution stage of the patent application. The fees and cost incurred during the prosecution stage will vary depending upon the time required to make a considered response to the Examiner’s comments as presented in the Office Actions.
In the event that a patent on the invention is granted, the term of a patent will extend from the date the patent issues and until 20 years from the filing date of the application. After the patent is issued, periodic maintenance fees must also be paid to keep the patent in force for its full term. An Applicant’s failure to pay any of these fees will result in the abandonment of the patent and loss of the inventor’s ability to enforce the issued patent.
The patent process may be a daunting prospect and any patent applications filed will be subject to rigorous scrutiny as to its compliance with the requirements of statutory subject matter, novelty, and non-obviousness. A patent on the application may not issue at all, or the language of the application may be amended and the claims narrowed.
If you have an idea which you feel is patentable, DMSA’s intellectual property attorneys may be able to provide the needed guidance in obtaining your patent. Whatever the future might bring for the claimed invention, the patent process serves as an invaluable tool for protecting the ingenuity of an inventor’s creativity.