PATENT ACQUISITION

A patent is a grant, by the government, of a right to prevent others from making, selling, importing, or otherwise using an invention embodied in a functional item. A patent may be obtained on any new and useful man-made invention, which is not obvious in view of what has been known or done in the past.

Types of Patent Applications

Infringement is the use by another of any item that meets the claims on an issued patent. Applications claiming patent rights may be broken into three broad types. Each type of application will result, if issued, in a patent having its own characteristics:

Utility Application - What is normally referred to as a patent application is sometimes referred to by patent practitioners as a Utility Patent Application, or a Regularly Filed Application (we shall refer to a Utility Patent Application in these pages as a "Utility Application" and, when such an application issues, a Utility Patent). Such an application may be filed for any new and useful process, machine, manufacture or composition of matter. Once a Utility Application is filed at the U.S. Patent Office, it is examined by a Patent Office examiner. The term of a patent issuing on such an application is twenty years from the filing date.

Provisional Application - A Provisional Patent Application may be filed for the same subject matter as a Utility Application. However, a Provisional Application is not examined by the U.S. Patent and Trademark Office and never issues as a patent (see Provisional Application Limitations below). A Utility Application filed within one year of the filing date of a Provisional Application may take the priority of the earlier application if priority is claimed.

Design Application - A Design Patent Application is a claim of exclusive right to the ornamental aspects or the appearance of an article of manufacture. A Design Patent does not claim rights to functional aspects of inventions. An example of a Design Application is an application covering the ornamental appearance of an alloy wheel (such as curvature of its spokes), without making any claim to any functional feature of the wheel (such as additional strength resulting from its composition).

International Extension of Patent Rights

A patent resulting from a U.S. Application only provides exclusive rights in the United States. If a patent is desired in other countries, an application must be filed in those countries in which a patent is desired. If an application is filed in another country within one year of the U.S. filing date, the U.S. filing date may be accorded to the foreign application. The benefit of a U.S. filing date may be further extended other countries by means of a Patent Cooperation Treaty Application (PCT) filed within one year of the U.S. application filing date.

Preservation of a priority filig date is necessary to preserve a right to patent in other countries, as publication of patent applications makes them "upper art" (see below) for all later applications.

Establishing Patent Rights

A Patent Office examiner reviews each Regularly Filed Application and each Design Application to determine whether the invention as claimed is:

  1. New - To be patenable, an invention (as claimed) must be new. The right to patent in light of "Prior Art" is controlled in the U.S. by 35 U.S.C. §102.

  2. Useful - To be patentable, an invention (as claimed) must also be useful. However, the measure of usefulness under the patent laws does not depend on reasonablness. As a result, many inventions which make little commercial sense are patented.

  3. "Unobvious" - To be patentable, an invention (as claimed) must also not be "obvious" to one skilled in the art to which the invention pertains. Meeting this requirement is often the most difficult task of the patent attorney, as Patent Office examiners often see obviousness in inventions as prior art becomes familiar after the fact.

Prior Art

Prior art is potentially anything that has been known or done in the past that makes an invention not new. Prior art will limit the right to a patent in the United States if:

  1. the invention was known or used by others in the U.S., or patented or described in a printed publication in the U.S. or a foreign country, before the conception of the invention by a patent applicant, or

  2. the invention was patented or described in a printed publication in the U.S. or a another country, or in public use or on sale in the U.S., more than one year prior to the date of a U.S. application, or

  3. the invention was first patented, or was the subject of an inventor's certificate, by the applicant or his legal representatives or assigns in another country prior to the date of the application for patent in the U.S., or an application for patent or inventor's certificate filed more than twelve months before the filing of the application in the U.S., or

  4. the invention was described in a patent or application for patent published or issued prior to conception by an inventor, or

  5. the invention was made in the U.S. by another inventor who had not abandoned, suppressed, or concealed it.
Provisional Application Limitations

A Provisional Application automatically expires one year after its filing date. A Provisional Application may be a useful means of establishing an early filing date, particularly where the inventor may be about to use, sell or disclose his invention. The Provisional Application is also useful in establishing an early filing date where there is a "race" to the Patent Office regarding the development of new lines of technology in a particular industry.

However, an inventor must recognize the limitations of a Provisional Application, some of which may make a Utility Application advisable:

  • Firstly, a Provisional Application must be followed by a Utility Application (or a "PCT" Application) within one year in order to preserve patent rights. As Provisional Applications are published, the inventions disclosed in those applications become Prior Art for all Utility Applications filed after publication. Thus, an inventor may lose the right to a patent if his own invention is published before he files Utility Applications in othe countries.

  • Secondly, a Provisional Application provides priority only for the invention disclosed in the application. Any new detail in a Utility Application not appearing the Provisional Application upon which the Utility Application is based, may take only the priority of the Utility Application filing date. This means that a Provisional Application should normally disclose all the details found in the Utility Application for the same invention. This is contrary to the common perception that one may quickly file a Provisional Application to lay claim to the idea in general terms, thereby gaining priority to the general idea. A later, fuller Utility Application which fills in the details of that general idea may be blocked by others who have filed between an inventor's Provisional Application and Utility Application.

    Design Application Limitations

    Design patents are relatively easy to obtain, as the applicant is not required to teach functional aspects of the invention, but only depict the invention in a drawing. The claim established by such drawing applies only to the asthetic aspects of the invention. As a result, a design patent is narrow in scope, providing a claim of exclusive right only to such asthetic aspects.

    A common issue relating to design patents arises in the context of inventor submissions to invention development companies. In such context, the development company has little interest in securing a patent of wide scope if the company has charged fees prior to beginning work. In our experience, invention devleopment companies as a group must be carefully scrutinized, and a development company which applies for only a design patent must be considered suspect.

    Who May File an Application

    Only inventors may obtain a patent of a new and useful process, machine, manufacture, or composition of matter. When an invention is made by two or more persons jointly, they must apply for patent jointly, and each must generally execute the patent application. Patent rights may be lost when one inventor is omitted from a patent application.

    Laws & Rules Governing Patents

    U.S. patents are governed almost exclusively by the Patent Act, Title 35 of the United States Code, 35 U.S.C. § 1 - § 376, and regulations implementing Title 35.

    Use of "Pat. No." and "Pat. Pending"

    Patentees and those authorized by patentees may give notice to the public of patent rights by fixing on an invention the word "patent" or the abbreviation "pat," together with the number of the patent.

    Other Resources

    A good general understanding of the patent process may be gained from the short book Patent, Copyright & Trademark, by attorneys Stephen Elias & Richard Stim, available from Nolo Press (www.nolo.com, or Nolo's more thorough treatment in Patent It Yourself, by attorney David Pressman. Another good resource may be found in the outline, So You Have An Idea, at Franklin Pierce Law Center (www.fplc.edu)

    Disclosure Document Program

    The U.S. Patent Office provides the service of preserving evidence of the date of conception of an invention through its "Disclosure Document Program." In this program, a paper disclosing the invention is filed by the inventor, and retained by the Patent Office in confidence for a period of two years. After two years, the paper is destroyed unless it is referenced to in conjunction with a regular application filed with such period. The Document Disclosure Program is only intended to provide evidence of conception in a priority dispute between two regularly filed applications.

    Inventors must be clear on the limitations of the Disclosure Document Program. A disclosure document may not be relied upon to establish an "effective filing date" to preserve rights after a sale or public disclosure of product containing the invention, or for any other purpose. On the other hand, with its limitations in mind, the Disclosure Document Program may be very useful for its intended purpose, particularly where an inventor files a series of papers under the program as improvements to an invention are made.

    Co-Inventors

    Where two or more individuals assist in conceiving an invention or reducing it to practice, each co-inventor will have rights to a patent issuing on that invention, and each co-inventor must (generally) execute any application for patent of that invention. Co-inventor rights may accrue even to those hired for specific engineering or prototype manufacturing tasks. Accordingly, inventors should be careful to require all those who may be characterized as co-inventors to assign their rights, and execute appropriate patent application documents.

    Assignment

    The inventor (or co-inventors should such exist) owns an invention in the first instance and, as with copyrights, special arrangements must be made for others to hold rights and seek a patent. Usually, such arrangements consist of an assignment of rights to an invention, along with a promise to execute appropriate patent application documents. Often all such arrangements are attended to at the time of hiring an inventor, and included in the inventor's employment agreement.