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A Patent Primer

Friday, February 23, 2007

U.S. Patent Process Basics: A bird's eye view for the inventor

After months, or even years, of working hard in your company's engineering or scientific lab or your own private creative space in your home or business, you now have your inventive idea developed to where it's going to work, and you think you are ready to have it patented. A couple of basic questions to ask yourself are: How can I describe my invention? What existing problem does my invention solve? What distinguishes my invention from the other solutions or past solutions? It is important to understand the definition of a patent as not giving you the right to make something but as giving you the right to keep others from making it. A patent is protective; it grants rights which are, according to U.S. law, "the right to exclude others from making, using, offering for sale, or selling" the invention in the U.S. or "importing" the invention into the U.S.

The application process for patents is addressed in this primer. What does the inventor need to know about their own part in starting the patent process? How does an attorney serve you well? And what goes on in the U.S. Patent and Trademark Office once it receives your patent application?

Where do you start with the application process? A typical thinking process might have you imagining whether you can file a legal patent application on your own, and certainly the USPTO (United States Patent and Trademark Office) and several manuals at your local bookstore might give you some of the tools you need to do so. Is it wise to do so?

Well, our judicial system allows anyone who is competent to represent themselves in a U.S. Courtroom; and likewise, an inventor may represent himself/herself before the U.S. Patent and Trademark Office, but does that mean you should do it? You also have the right to be your own dentist. But we all know that doing so may have painful and irreversible consequences. For the same reason, I don't recommend filing and prosecuting your own patent application. First of all, patent laws of our country spell out the conditions of an invention for patentability. Patent lawyers have the expertise in patent law, usually both in the U.S. and also good working knowledge of foreign rules and regulations for filing in other countries. Secondly, there are various types of patents and the patent attorney will know the nuances of each. Another reason to use competent patent counsel is to get a good patent claim written that should stand up under interpretation by the courts should it be contested. Also, the patent examiner in the US Patent Office may, and this is very typical, challenge or have questions of clarification about your specifications or claims in the application that may result in an office action needing an answer. Not answering the office action competently and within correct time frames could result in your losing your patent rights to your invention.

So now you feel you are ready to proceed with applying for a patent and you have made a decision to seek competent patent law counsel. What's next?

Let's enter the world of Intellectual Property to see what's typical and also what are some of the complexities to serve as a general guide to the process.

The first step is to locate a qualified, knowledgeable patent attorney or agent. The main difference between an attorney and an agent is that the agent is not licensed in the practice of law, which is needed to provide legal counsel to the client. The agent is limited to writing and prosecuting patents in the USPTO and cannot conduct patent litigation in the courts. Local jurisdictions may vary about what they consider the practice of law and so the agent is governed also in that regard by state laws.

My own experience includes practicing as an agent for about a year in a corporate patent department while I finished law school after which I completed the qualifications to practice before the USPTO as a patent lawyer.

By now you have guessed correctly that not just any attorney can represent you in the US Patent and Trademark Office. Only those who have qualified for registration by the Commissioner of Patents can file and prosecute a patent application on your behalf. A background or education in technology is a requirement. A rigorous application process and examination by the USPTO is the qualifying tool to measure whether the attorney or agent possesses the legal and scientific or technical knowledge, the ability to practice and competence in the USPTO laws and rules, and good moral character and reputation. Once the application process is successfully completed, the attorney or agent will have a registration number assigned by the USPTO. This number is assigned for life. Before hiring any attorney or agent, it is a good idea to search the roster of attorneys and agents.

A patent attorney can practice patent law anywhere in the United States, but must be licensed by the State Bar in the jurisdiction in which he/she practices. An inventor may retain a patent attorney anywhere in the country, but you should be satisfied that the patent attorney will give you the attention you deserve and have good lines of communication with you. Citadel Patent Law is located in the South Puget Sound region of Washington State and represents clients in this area primarily, but also from coast-to-coast and internationally.

You'll make the initial contact with your patent attorney, who may ask you a few questions and then set an appointment. Different firms have different protocols, but our initial interview, whether by telephone or in person, covers two basic things: first, you'll be asked to present the basics of your idea and invention to make a general determination about whether and how to proceed. Secondly, we'll discuss fees and the terms of engaging our services for a patent application. Most patent attorneys expect to be paid based on their hourly rate and make an estimate based on the preparation time and complexity of the work. The alternative is to give you an estimate on a flat fee basis, which is sometimes done. In addition to the attorney's fees, you will be responsible for government fees which include search fees, examination fees and issue fees, all of which are due at the time of filing the application. Fees are subject to change from the printed fee schedule found on the USPTO site, and there are other variables depending on different factors. Other billable fees for drawings or searches as well as costs such as postage and faxes and phone calls should be covered in the terms of engagement as you meet with your attorney.

In presenting your idea to apply for a patent, certain questions and issues will be important for the attorney. This process is called Invention Disclosure and many firms or corporations (if you are an inventor for a company) have a document called the Invention Disclosure Form or Document of Invention or something similar so that a determination can be made for a patent application to go forward. Citadel Patent Law has an Invention Disclosure Form on pdf format which can be provided to prospective clients.

From the description provided by you, the inventor, the patent attorney will typically carry out a search of the related prior patents and publications, which is known as "prior art." This is to help make a determination as to whether your invention is new and novel. This is also something that can be done to an extent by the inventor using search engines, especially those made available through the USPTO and their on line resources as well as actual physical locations for patents and publications called Patent and Trademark Depository Libraries (PTDLS). In the Seattle area, there is a PTDL at the Engineering Library at the University of Washington.

My recommendation to independent inventors is to complete your own preliminary search of your idea prior to in-depth discussions with your patent lawyer. This may not preclude desiring the attorney's search, but will help you evaluate pursuing your patent rights. An attorney will have tools, resources, and experience to do a thorough preliminary search. While not required because the USPTO completes a search as part of the application examination process, it may provide background information that can result in a higher quality patent. Prior art that comes to light in the course of the patent application must be continuously disclosed as part of the application process.

Assuming favorable search results, the patent attorney will then prepare a draft patent application, including a description and set of claims and drawings. You, as the inventor(s), will be given an opportunity to review the draft and make revisions as needed. The application must reflect the best mode for carrying out the invention as contemplated by you, the inventor, up to and including the time of filing.

Once you and your attorney are satisfied with the draft application, it is time to finalize the application and sign the filing documents. Here is an opportune moment to say something about deadlines. An attorney must always be mindful of the deadline for filing so that patent rights are not lost. There is a one year timeframe for submitting an application if an invention has been used publicly, or described in a publication, or is placed on sale. The inventor must work with the attorney to meet these deadlines, which are imperative and irrevocable.

The filing documents include an Oath or Declaration stating that the idea is yours as the inventor. All named inventors must sign the Oath. If you are an inventor working for a corporation or university laboratory, you may need to sign an assignment of your rights to the corporation or university if required by your employment agreement or as an employee-inventor.

The application with all of its component parts is then ready for filing in the USPTO along with the appropriate fees as itemized in a "fee transmittal" form. The patent attorney may file the document either by mail or electronically via the Internet. In the recent past the USPTO has made electronic filing relatively simple to use and I prefer to use it over mailing the application. A mailed application is scanned in at the USPTO when it is received to go into their data base, an extra step that seems unnecessary if you can electronically transmit it.

In recent years the USPTO has developed an excellent simple to use electronic filing system. Citadel Patent Law has been electronically filing patents since these capabilities were first available.

An official filing receipt will be issued instantaneously by the USPTO right after the application is electronically filed. The filing receipt will itemize the details of the application, including, most importantly, your name, a filing date and an application number, which are the tracking tools of the application. The patent attorney will also typically assign an internal file number or docket number to your case, which you will also want to reference in your communications with your attorney. At Citadel Patent Law, our practice is to keep the client informed of all official communications with the USPTO every step of the process whether actions are required or not.

The Patent Office assigns your application to a Group Art Unit in a selected technology area, where it is then assigned to a Patent Examiner. This person is versed in the technology area of your invention and will be responsible for reading, examining, and passing judgment on the patentability of your application. According to the Patent Office, there are currently 7,893 patent examiners, more than doubled in the last 5 years, and about 500,000 patent applications are received each year. When the examiner is assigned your case, it takes its place in the examiner's docket or calendar of applications. It normally takes 19 months before the first office action. Except in special circumstances (a topic for another blog), applications are examined on more or less a first in first out basis. As soon as the Art Unit and the Examiner are assigned, that information will also show up on subsequent communications from the USPTO.

The status of your patent application is maintained by the U.S. Patent and Trademark Office on their Patent Information and Retrieval System database (PAIR). Parts of PAIR are public and parts are private depending on the publication status of your application. Only your attorney is allowed to view the private PAIR data.

Most patent law firms will also have their own databases to maintain status of patent case files. At Citadel Patent Law, we provide regular reports of status of patents to clients in both our office and the USPTO upon request.

Within three months of filing the application the patent office requires disclosure of all information that may be considered to be relevant to the patentability of your invention. This information is usually presented as a list of published patents found in the prior art search, or other information or publications known or that come to be known by you, your attorney or anyone else involved in your application process. Since patent prosecution is an ex parte (meaning it is between you and the patent office with no third party adversary) everyone involved has a duty of candor to the USPTO and must provide full disclosure of background art or other facts that should be considered by the patent examiner in reviewing your application.

When your application comes up for examination – remember this can be up to about two years from the filing date – the examiner will issue some kind of communication regarding the application. The most common may be an allowance or a first office action. For example, some allowable subject matter may be found, while the examiner rejects or has objections to other subject matter. The claims, drawings and other parts of the application may need to be amended to gain a final allowance of the claims. This is an opportunity for you and your attorney to reevaluate the application, especially the claims. When you both decide on a course of action, a response is prepared and submitted to the examiner. This is where you come to appreciate the skill and competence of your patent attorney in prosecuting your patent application. The period allowed for a response is usually three months. If no response is filed, the patent application will "go abandoned," meaning it is removed from the USPTO docket and your patent rights are gone for that application.

If the examiner agrees with your response to any issued communications, the next communication will be a Notice of Allowability and a Notice of Allowance setting a time limit in which issue and publication fees for your patent must be paid. After payment of the issue fee, your patent will be published. The average time from filing is about two years. A patent grant term is 20 years from the date of earliest filing. It will be in effect as long as maintenance fees are kept up according to schedule, at 3.5, 7.5. and 11.5 years. Your patent attorney will usually maintain your maintenance fee schedule, unless you instruct your attorney otherwise. This means the file will remain open on the attorney's docket and you should receive notices of payments due at the appropriate times. The USPTO does not issue notices of payments due but does issue a notice if a payment was not received which is considered a kind of grace period in which the fee may be paid with a surcharge. It is extremely important that the fees are paid or your patent rights will expire. Competent Patent attorneys are sticklers about assuring that the maintenance fee schedule is adhered to.

Your "ribbon copy" of the patent grant is sent to your attorney's office. At Citadel Patent Law we present the ribbon copy with Congratulations to the inventor or designated company representative and keep a copy on file.

A patent grant is personal property which can be sold or bequeathed. If sold, a document known as an assignment should be recorded in the US Patent and Trademark Office, another matter for your attorney.

copyright 2007 Citadel Patent Law


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