Patenting
What is a Patent?
An official government document that grants to the assignee (owner of the patent) a right to exclusivity in making, using, selling and offering for sale the invention for up to 20 years from the date of filing with the USPTO.
When there is more than one assignee, each has a non-exclusive right to the invention.
Patents may be licensed by the assignee to another party.
To provide a clear definition of what is covered in a patent, CLAIMS are included in all patents.
To ensure that others can use the invention after the patent expires an ENABLING DISCLOSURE is required.
An Enabling Disclosure is a sufficiently written description within the patent to enable a Person Having Ordinary Skill in the Art (PHOSITA) to make and use the full breadth of the invention.
Deceptive acts during patent prosecution will invalidate a patent in its entirety.
How Is the U.S. Patent Process Different from Other Countries?
In other countries, the first independent inventor to file a patent application is entitled to patent coverage.
In the U.S., the first to invent is entitled to a patent.
In other countries, publishing an invention before filing a patent application prohibits patent coverage.
In the U.S., you get a one year grace period to file.
What Is Patent Prosecution?
The USPTO reviews the patent application for form and content.
The USPTO accepts or rejects claims and suggests changes within the application.
The applicant negotiates with the USPTO for maximum claim scope and amends the application accordingly.
If a patent application contains two or more separate inventions, the Patent Examiner may require the applicant to pick (elect) one.
The applicant may divide the patent application into two or more separate applications (divisionals).
If the applicant improves on the invention during prosecution and wants to file a patent application covering what has been filed and also the improvement, the applicant may file a continuation-in-part.
What are the main questions in determining if you can get a patent on an invention?
Is the invention useful? (35 U.S.C. s101 - Utility)
Does the invention fit into one of the proper categories? (i.e. a composition of matter or process)
Will the invention work for its intended purpose?
If software, does it perform pre/post computer process activity?
Is the invention new? (35 U.S.C. s102 - Anticipation)
Has the invention been disclosed in its entirety by another party prior to the date of invention?
Has the invention been disclosed in its entirety more than one year prior to the filing date of the patent application?
Is the invention non-obvious? (35 U.S.C. s103 - Obviousness)
Would the invention have been obvious to a PHOSITA?
Is the invention fully disclosed and properly claimed in the patent application? (35 U.S.C. s112 - Adequate Disclosure/Claims)
Are the claims supported by an Enabling Disclosure within the patent application?
Are the claims written clearly enough for a phosita to understand them?
What Are Patent Claims?
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