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Patents are country-specific and are rights limited to the borders of the issuing country. For example, a U.S. patent does not prevent infringement in any other country. Therefore, to seek protection for an invention outside the United States, a foreign filing strategy must be implemented. Many factors need to be considered when deciding where to file foreign patent applications. Some factors relate to the potential market and manufacturing centers for the invention, and other factors relate to the protectability and enforceability of the invention under the county’s intellectual property laws. Unfortunately, foreign patent protection can be quite expensive, depending on the size and complexity of the application, the need for translations, and the country or countries an applicant chooses to file.
After filing a U.S. patent application, there is a 12 month timeframe available for applying for patent protection outside the United States and claiming priority to the filing date of the U.S. application. Some potential filing strategies are to (1) file directly with the foreign countries, (2) file directly with regional patent offices, such as the European Patent Office, or (3) file an international application under the Patent Cooperation Treaty (PCT). Although PCT applications are considered "international" patent applications and are often referred to as such, there is currently no "international patent". It should be understood that a PCT application can only be used as a stepping stone for filing "national stage" or "regional stage" patent applications in a limited number of countries or regions. A complete list of countries that can be reached using a PCT application may be found here.
Thus, with regional patent applications and PCT applications, an applicant must still obtain a registration from each individual country to gain enforceable patent rights; however, regional and PCT applications can afford translation cost savings and provide additional time for an applicant to determine what countries it will ultimately seek patent rights. Specifically, a PCT application delays national stage filing costs and decisions by at least 18 months from filing the PCT application. Many applicants use this time to refine the invention, research their markets, and look for licensees or buyers. Frequently, the number of countries in which an applicant desires protection will assist in determining whether a PCT application will be more cost effective than other routes.
Because each country has its own rules for patentability of inventions, PCT patent applications should be carefully drafted to allow the various jurisdictions that may be sought after for patent protection to use claim terms that are fully supported by the originally filed description. Like the United States, many countries also have different forms of patent protection and application filing procedures that can be utilized depending on the importance of the invention and other business and legal considerations. Whatever strategy is taken for foreign patent protection, early planning is critical to success.
After a patent issues, any product covered by that patent should be appropriately marked with the patent number in order to preserve the right to the full range of remedies available under the patent law. An appropriate notice of the patent would be "U. S. Patent No. ______." Marking a product as "patented" or using the term "patented" in the marketing of a product is only appropriate if a patent has actually been granted by the Patent Office relating to that product.
The notice "Patent Pending" or "Pat. Pend." may be used once an application has actually been filed with the Patent and Trademark Office. Although this form of notice does not itself generate any remedies prior to issuance of a patent, it may have the effect of causing competitors to be more wary in introducing competitive products. A patent pending notice may only be properly used after the application has been filed.
The patent marking can be placed on the product itself or the product packaging, and may also be "virtually" marked with a website that lists the associated patent numbers, thereby avoiding re-tooling or printing costs for adding or removing patent numbers. To ensure a product is adequately marked, these marking options should be explored with your patent attorney.
Once a utility or design patent application is filed, it is assigned to an Examiner at the Patent and Trademark Office who is thereafter responsible for that application. It is not uncommon for it to take eighteen months or more to receive a first substantive action on the application. This takes the form of a written communication, called an "Office Action," that states any reasons for rejecting your application. In the vast majority of applications, a rejection of some or all of the application is received. The Examiner will have conducted his or her own search and will invariably find some different prior art than that provided by the inventors. If there is a substantive rejection, an applicant is normally permitted three months to respond, although extensions can be obtained by payment of a fee up to a total of six months. Responses are most often in the form of a written argument, although a personal or telephonic interview can be conducted with the Examiner and followed up with a written argument. The form of response is governed by the rejection made by the Examiner, in addition to the value of the invention and timing considerations.
Based on the arguments and any amendments to the claims presented in a response, the Examiner may or may not allow the claims. Another round of Examiner's rejections and attorney's arguments is fairly common. If the application proceeds to a final rejection of the claims, at least one more amendment can be made to further argue and amend, if necessary. If the next response is unsuccessful and the inventor and inventor's attorney are in agreement, an appeal can be made to the Board of Appeals. The Board of Appeals is a group of administrative judges, the majority of whom were patent examiners. An appeal, however, can be a relatively costly route. Once agreement is reached on the claimed protection, the application is allowed and an issue fee is paid for the patent to be granted. The fees charged by the U.S. Patent Office, however, are adjusted on a periodic basis.
A patent application is individually written for a specific invention, and thus can be a complicated and involved document. An application must include a written description of the invention that would enable a person skilled in the relevant technical field to both make and use the invention. This description virtually always includes illustrations of the invention and also describes the best manner known to the inventor for practicing the invention. The application includes an oath signed by the inventors that attests that they believe the application complies with the requirements of the patent laws, and the application concludes with claims that lay out the scope of protection that is provided for the disclosed technology.
A patent application is intended to be written for a person of ordinary skill in the relevant field of technology to the invention. An application, therefore, does not need to be a manufacturing blueprint since many minute details of a particular machine are not necessary to the invention that is incorporated into that machine. Specific dimensions or tolerances are normally unnecessary. In some instances, however, specific dimensions or tolerances may be critical to the performance of the invention or may actually be what sets the invention apart from prior technology and, therefore, would have to be included in the application. Although a patent is legally to be directed towards a person of ordinary skill in the relevant art, ultimately patents are evaluated by judges without technical backgrounds or by lay juries with no technical experience whatsoever. For this reason, the patent attorneys writing the application will employ a balancing act between explaining the invention in simplistic terms that can be grasped by a lay person while still complying with the technical disclosure requirements of the patent law.
Patent drawings are governed by rules specific to the Patent Office that permit the drawings to be later printed in the issued patent. Often, copies of conventional engineering drawings or simply rough sketches can be used for the preparation and initial filing of a patent application. Although, eventually, formalized drawings must be submitted for utility and design patent applications in order to meet Patent Office requirements.
The patent application, oath, and fee are filed with the Patent Office. After the original filing, no new information can be added to the application, even if it is later decided that insufficient information on the invention was originally provided. The particular way the information is stated can be amended or the focus changed for the claimed scope of protection, but no substantive information can be added. It is, therefore, important to make a complete disclosure in the first instance.
Patent applications are initially maintained in secret by the Patent Office, however, utility patent applications are published eighteen months after their filing date, unless the owner elects never to file the application outside of the United States. Also, design patents are published at the time of issuance. These types of patents provide different forms of patent protection and more than one of each may be filed on a particular invention. Essentially, a utility patent protects an article’s functional, while a design patents protects an article’s ornamental design or appearance. Accordingly, utility patent applications include a specification that describes how to make and use the invention and claims that define the legal bounds of protection of the invention, while the drawings of a design patent applications define the protection.
There is also a form of place-holder application, called a "provisional" patent application that may establish an early filing date for an invention. A provisional application does not undergo examination, and will not result in a patent, unless a formal utility patent application is be filed within one year of the provisional application filing date. A provisional application has fewer formalities, typically resulting a lower preparation cost, and lets the applicant claim "patent pending" on the invention during its 12 month life. There are a variety of reasons for filing a provisional application. These reasons often relate to time restrictions on preparation for filing, cost, uncertain value of an invention, and/or urgency to obtain an early filing date.
A search of the U.S. Patent Office records and, optionally, of foreign patent office records, can be conducted in order to determine the chances of successfully obtaining a patent that adequately covers the features of interest in a company’s invention. Conducting a patentability search is optional before filing a patent application, but is useful to determine whether the expense of a full patent application is warranted. A patentability search also helps to focus the preparation of a patent application on those features or aspects of an invention that are new rather than dwelling on unpatentable features. If a search is conducted, any patents that are found which are material to the invention will be provided along with the application to the Patent Examiner. Inventors and their attorneys have a legal obligation to inform the Patent Examiner of all material prior art of which they are aware, including prior technology of their own company as well as competitors. Ultimately, the disclosure of all known material prior art produces a stronger patent, since this reduces the effect of an infringer later arguing that the Examiner was mistaken in granting the patent due to the best prior art being kept from the Examiner. Regardless of the information submitted, the Patent Examiner will conduct a search for prior art and combine his or her results with any information the applicant submits.
Other types of patent searches can be conducted that have a different focus. Examples are searches for patents owned by a particular company, referred to as an "assignee" search. Such searches are useful in determining if a competitor has protected a product or when deciding what value to place on a company under consideration for purchase. An infringement or clearance search can be conducted if there is some level of concern that your company’s new product may face an infringement risk. A "validity" search can be undertaken if your company is threatened with or otherwise concerned as to risk of infringement in order to determine whether there is a chance of establishing that the patent is invalid or to establish that the scope of that patent is restricted in a manner that avoids infringement.
In order to qualify for a patent, a development must overcome two basic hurdles when compared to pre-existing technology. First, an invention must be new, and must have never existed before as a single cohesive item. Second, the invention must not be an obvious development when considered against the entire background of pre-existing technology. These two tests, novelty and of nonobviousness, are the principal criteria applied by the Patent Office along with the formal requirements regarding adequate disclosure of information relating to the invention.
The United States Patent and Trademark Office is interested in promoting the good of the United States public, and therefore a patent application is compared to prior technology that is at least theoretically available to the United States public at large. For this reason, prior technology, referred to as "prior art," is evaluated from a variety of sources. Patents and printed publications generated anywhere in the world are considered since they could at least theoretically be found by members of the United States public by searching libraries and the like. Other forms of prior art, although typically less available during examination of a patent application, includes public disclosures occurring anywhere in the world.
If a person or company only has an interest in patent protection for the United States and Canada, there is a 1-year grace period for filing a patent application. If there is any interest in the possibility of eventually pursuing patent protection in foreign countries, there is no grace period, and an application must be filed with the United States Patent and Trademark Office before there is any public disclosure or commercialization of the invention.
Notwithstanding this, Applicants are cautioned against reliance upon the grace period under the relatively new First-to-File system in the United States, which does not provide Applicants with the ability to prove an earlier date of invention from its date of filing a patent application. Therefore, for example, if a different inventor files a patent application on a similar invention after you invented something but before your patent application filing date, the only means to remove the previously filed application from consideration by the Examiner is to prove that the different inventor had access to and misappropriated your invention. In view of the First-to-File system, inventors are encouraged to file patent applications expediently.
A patent application and any resulting patent is owned by the inventor(s) of the claimed invention, unless a written assignment is made or the inventors are under an obligation to assign the invention, such as an employment contract. Therefore, as patent claims change during prosecution of a patent application, it is possible that inventorship and potentially ownership could be impacted. In the case of more than one inventor or assignee, each joint owner of a patent may make, use, license, and sell the patented invention without the permission of or the need to account to the other joint owners. Selling the entire patent, providing an exclusive license, or pursing infringement claims, however, requires all the joint owners to work together. In view of the complications of multiple owners, it is common for jointly owned patent applications to be assigned to a single entity or allow the joint ownership to be governed by a written agreement made before development of the invention occurs. To maintain ownership records of patents and patent applications, assignments are recorded with the U.S. Patent Office.
Under current law, a utility patent lasts for twenty (20) years from the filing date of the earliest application that the patent relates back to, and a design patent lasts for fifteen (15) years from the issue date. Under prior United States law, utility patents lasted for seventeen (17) years from the issue date and design patents lasted for fourteen (14) years from the issue date.
In order to keep a United States utility patent in force, a maintenance fee must be paid at 3-½, 7-½, and 11-½ years after its issuance. Failure to pay these maintenance fees will cause the patent to lapse before its entire term has run. Although the Patent Office mails notices of these maintenance fees to the correspondent’s address it has on file, your patent attorneys should maintain a docket of these payment dates in order to determine whether your company wishes to keep a patent in force.
Any useful technical development potentially can be patented if it meets the other requirements of being sufficiently different from prior technology and a sufficient disclosure of information is provided. Patents can protect processes, machines, articles of manufacture, such as hand tools or immobile furniture items, or compositions of matter, such as new chemical formulations. Patents are granted for high technology developments as well as relatively mundane household items. In some situations, business methods and computer software can also be patented in the United States with useful, concrete, and tangible descriptions. However, the subject matter requirements for patents varies in different countries.
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