You have an idea for a new invention. How do you keep other people from using it without your approval or without compensating you for your creativity? Many times, the answer is to get a patent on your new invention.
What is a patent and what does It do?
A patent is a grant from the U.S. government, issued by the Patent and Trademark Office (PTO), that gives the patent owner the right to exclude others from making, using, selling and importing the patented invention for a limited period of time. With some exceptions, this limited period of time is 20 years from the date the patent application is filed. In exchange for this right to exclude, the inventors provide a detailed disclosure of the invention.
The scope of a patent is determined by the patent’s claims, which define the invention’s outermost property line. Patents that are narrow and weak (i.e., relatively easy to design around) frequently offer no substantial patent protection, and the expense of seeking them must be justified on secondary values other than patent protection.
The value of a patent is influenced only in part by factors of breadth and strength. The commercial value of the invention that the patent protects, of course, underlies all other patent evaluation factors. While many broad and strong patents do not earn the cost of obtaining them, sometimes a narrow and weak patent may be worth much more than it costs because the narrow feature that it protects has great commercial value or because of its secondary values.
The decision to file or not to file an application for patent should be based not only on the patentability of the invention, but also on the commercial potential of the invention itself, the various different values of the particular type of patent that can be obtained and the uses to which the patent may properly be put in the industry to which the particular invention relates.
What is patentable?
Almost anything can be patented, including medicines, devices, materials and processes. Subjects that are not patentable include mathematical formulas, mental processes and laws of nature (e.g., gravity). Patents do not protect ideas in the abstract but rather protect tangible or identifiable structures and methods.
In addition, patentable inventions also must be new, useful and nonobvious and cannot have been publicly known before filing for a patent application. This means inventors should take care to seek patent protection before publishing or otherwise disclosing the invention publicly. Useful inventions serve some purpose and actually work for their intended purpose. This requirement is relatively easy to satisfy. A harder requirement to satisfy, however, is that inventions must be nonobvious. That is, for an invention to be patented, it must be innovative to the point that it wouldn’t be obvious to others. Nonobvious is one of the more difficult concepts in patent law because it is viewed from the vantage of a hypothetical person of skill in the relevant field of the invention who has access to information like scientific and medical publications.
How do I pursue a patent?
Preliminary Patentability Search. Often, the first step to patenting an invention is to disclose the invention to a patent attorney. Patent attorneys are specifically qualified to practice before the U.S. PTO. If the invention appears to fall within one of the general classes of patentable subject matter, the attorney may recommend a limited search of publication databases to understand the scope of patent protection that may be available. This sort of patentability search involves using a variety of resources to find the “prior art” that is closest to your invention. The prior art search can include prior U.S. and foreign patents, books, or articles from magazines or technical journals. The goal is to find the closest prior art to your invention so that you and your attorney can better evaluate just how different your invention is from what has already been done. At this point, the attorney may advise you whether to stop or proceed with the patent application.
Application for U.S. Patent. If you decide to go forward with a patent application, the next step is to prepare a utility patent application. A U.S. patent application (which may include figures) completely describes your invention to a degree of detail that allows someone who has read the application to build or use your invention. Patent applications may be anywhere from a few pages to more than a hundred pages long and are published by the PTO 18 months after their filing date, unless a request for nonpublication is made.
A special type of application called a “provisional” patent application is a sort of placeholder that allows inventors to establish a filing date from which other patent applications may be based. A provisional application does not begin the clock for calculating the 20-year patent term and is not examined. Consequently, a provisional application never matures into a patent. It exists for a maximum of 12 months, after which time (unless an application has been filed claiming priority from it), the provisional application goes abandoned by law.
The international application or Patent Cooperation Treaty (PCT) application also serves as a placeholder, on a global scale. Like a provisional application, a PCT application can act as a placeholder to establish a filing date in countries that are parties to the PCT. All of the major industrialized countries (with a few exceptions, including Argentina and Taiwan) are members of the PCT.
Prosecution of the Patent Application. When the patent application has been filed, the PTO examiner performs a patentability search. Hopefully, the examiner will not find anything better than the prior art identified in a preliminary search. In the event other prior art is identified, the examiner will read all the relevant art and compare it to your invention. The examiner then issues an “Office Action”—a letter citing the prior art references that the examiner found that they think limits the scope of your invention. This first Office Action is usually rendered approximately 18 to 24 months after the application is filed. The attorney obtains copies of the references cited in the Office Action and studies them. Sometimes, the examiner’s search, which is more exhaustive than can be afforded in a limited patentability search prior to filing an application, turns up more relevant references than were found in the preliminary search of the type recommended previously. Based on the prior art references found by the examiner, the attorney may recommend that the application be abandoned at this point—which is rare. More typically, based on the attorney’s judgment that the examiner’s references do not destroy the novelty of the invention, and on an assumption of the client’s continued commercial interest in the invention, the attorney may recommend that the application be further prosecuted. However, it often happens that during the year or more between first filing of the application and the first Office Action, the client develops a new idea that is better than the one disclosed in the patent application, or determines that the market potential of the invention is markedly less than earlier believed. For these or other reasons the client may conclude that the application should be abandoned even though at least some scope of patent protection may still appear to be available.
Further Prosecuting the Application. If the inventor decides to further prosecute the application, the attorney prepares for the examiner what is usually referred to as an “Office Action Response.” This document may amend the claims and sometimes other parts of the specification to accentuate the differences between the invention and the prior art references cited by the examiner. It may also amend the application to comply with the examiner’s editorial taste. The Office Action Response always includes a discussion of the differences between the references cited by the examiner and the applicant’s invention and, in appropriate cases, it will include a legal argument setting forth the reasons that a patent should be granted for the particular application.
The attorney and the examiner continue to exchange actions and amendments of this nature until the application is either allowed or rejected in a final office action. This further prosecution after the filing of the original application requires, on average, about three years, although the time may range anywhere from a year upward. Most of that time lapse is spent awaiting office actions by the PTO.
Conclusion
Developing a patent strategy often involves a portfolio of patent applications covering different aspects of related inventions and consideration of the marketplace in the United States and abroad. Many potential pitfalls can affect your patent rights; various strategies can be tailored to suit business and commercialization goals. For more details and guidance, inventors are encouraged to seek legal counsel to discuss patent protection strategies early in the inventive process.
