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?