|Patent Prosecution FAQ|
What kinds of inventions are patentable?
Almost anything is patentable in the U.S. if (a) it is new, useful, and non-obvious, and (b) if the claims are worded properly. Patentable subject matter includes all manner of physical devices, computer software, methods of doing business, methods of production, methods of sourcing, living creatures other than human beings, and so on. One cannot usually patent devices and methods that the patent office recognizes as violating accepted laws of nature (mostly because they are considered to have no utility). Thus, perpetual motion devices are routinely rejected.
What is a provisional patent application?
Provisional patent applications are essentially placeholders. They provide a one year window during which an applicant can file a formal (i.e. , utility or PCT) application. If no formal application is filed during that period, the provisional goes abandoned. Although provisionals can be extremely short (perhaps only a few sentences), and can omit the usual sections such as Background, Brief Description of the Drawings, and so forth, they must still satisfy the enablement, best mode, and written description requirements of a utility application. Although not required, it is a very good idea to include at least some claims in a provisional.
Provisionals can cost anywhere from $100 (for small entities filing on their own) to several thousand dollars (for an application with a more detailed description).
Can I file multiple provisionals on a single invention?
Absolutely. Provisionals provisional application are extremely useful where an inventor expects to develop some new wrinkles on his invention after filing of a first application. An applicant can't file a second provisional provisional application claiming priority to an earlier provisionalprovisional application, but he can serially file multiple provisionals provisional application, and then file a formal application that claims priority to any combination of applications provisional application filed within the previous 12 months.
Another great use of a provisional application is to provide a quick and inexpensive priority date for a continuation-in-part (CIP) application, where the applicant files a new application adding additional disclosure.
What are the differences between utility and design patents?
Utility patents claim functional aspects of systems, methods, chemical compositions, and apparatus. They are relatively difficult to obtain, but often extremely valueable. Utility applications usually cost anywhere from $7,000 to $10,000 or more to search, draft, and place on file with the patent office, and about $10,0000 - $15,000 through issuance.
Design patents are restricted to claiming ornamental (i.e. nonfunctional) aspects of things. The squiggles at the bottom of silverware, for example, could be the subject of a design patent because their only function is decoration. Design patents are relatively easier to obtain, but are difficult to enforce and rarely have great value. Design patents cost about $1,000 to place on file, and possibly $2,500 or more through issuance.
How much does it cost to get a patent?
From search to issuance a U.S. patent typically costs $10,000 - $1sear5,000. Some firms charge upwards of $30,000 to just file a patent, but that doesn’t mean they do a better job. The reason is that such patents very expensive patents tend to focus on length rather than quality. At the other extreme it is terribly difficult to search and write a decent patent for less than about six or seven thousand dollars. Foreign patents typically run about $15,000 to secure, per country.
How long does it take?
U.S. patents typically take two and a half to three or four years to issue. In some examining groups, such as those that examine business methods and Internet related inventions, the wait is easily five to seven years or more. The patent office currently has a backlog of 400,000 patent applications. Compare that with a backlog of 70,000 applications in the mid 1980’s. Current predictions are for the backlog to grow to 1,000,000 applications by 2008.
What is prior art?
The term "prior art" is used in the patent field to mean any information that is relevant to determining patentability and scope of a claimed invention. Prior art includes patents, journal articles, newspapers and other publications, as well as prior use, sale, and even offers for sale of embodiments of the invention.
In the United States the scope of the prior art is determined by 35 USC § 102, which is a labyrinthine piece of writing even by government standards. There is a thick chapter on this in Chapter 2100 of the MPEP that delineates exactly what is meant by the terms "printed publications," "on sale," "public use," "the invention," "in this country," and various other terms used in section 102.
Do I need to tell the patent office about prior art?
In the United States every inventor, the patent attorney, and the assignee all have a duty of disclosure with respect to known prior art. Indeed, that duty continues throughout the prosecution of the application. The punishment for filing to disclose can be severe, including invalidation of the patent for fraud on the patent office (currently referred to euphemistic-ally as "inequitable conduct"). Under this duty you must disclose everything you know of that a reasonable patent examiner would want to consider, that is not duplicative or cummulative. Burying a critical prior art document within a mountain of referenced prior art is not acceptable.
Most foreign countries have no such duty to disclose. Two exceptions are Japan and Australia, at least with respect to written prior art documents.
Can I incorporate materials
All extrinsic materials cited in the applicationshould be expressly incorporated by reference: (a) to provide a source for experimental data and other information that might be needed during prosecution; and (b) to provide express for enabling the currently claimed invention, without wasting a lot of space in the current application. It is a good idea to insert the following language shortly after discussing the first reference.
"This and all other referenced patents and applications are incorporated herein by reference in their entirety. Where a definition or use of a term in an incorporated reference is inconsistent or contrary to the definition of that term provided herein, the definition of that term provided herein applies and the definition of that term in the reference does not apply."
What is a petition to make special?
A petition to make special is a request to push your applcation to the top of the stack, which can cut years from the time required to recieve the first office action. There are currently 12 circumstances listed in the MPEP that qualify for such special treatment. Those are (1) prospective manufacture; (2) current infringement; (3) applicant in poor health; (4) applicant at least 65 years old; (5) inventions that materially enhance the quality of the environment; (6) discovery, development or conservation of energy; (7) inventions relating to recombinant DNA; (8) the applicant submits a statement that a preexamin-ation search was made; (9) superconductivity materials; (10) HIV/ AIDS and Cancer; and (11) countering terrorism; (12) biotechnology filed by small entities small entity. These petitions are routinely granted, but add $750 or more to the cost of filing.
What is accelerated examination?
Accelerated examination is actually a species of petition to make special, but with additional requirements. Among other things the application can only have 20 claims, and no more than 3 independent claims. In addition, the applicant must demonstrate that (s)he did an adequate patentability search, and must ditinguish all of the references. If all the requre-ments are satisfied, the patent office guarantees that they provide sufficient resources to push the application through to final disposition (allowance or final rejection) within 12 months from the filing date. Added cost is at least $2500.
Petitions for accelerated examination must be filed when the application is filed. so applicants with long-delayed applica- tions may want to file a divisional to take advantage of this procedure.
When can I say "patent pending"?
You are "patent pending" as soon as the patent office receives and stamps your patent application. That applies to all types of patent applications, including provisional, utility, design, and PCT applications. If the application is defective you will receive a notice of defects, and you will still be patent pending as of the filing date as long as you timely correct the defect(s)
Do I need an attorney to prepare / file my patent application?
No, you don't. You can draft and file a patent application by yourself. You can find guidance in Strategic Patenting and other books, as well as at the USPTO website.
But the reality is that you will almost certainly do a bad job of it. Inventors and business people should understand how to write claims and specifications, and what distinguishes good claims from bad claims. That knowledge allows them to substantively assist in the patenting process. It takes many years to become good at drafting patent applications, and it just isn’t realistic for an inventor to write a good application himself.
What happens when the patent office rejects my invention?
First of all, the patent office is not rejecting the invention. The office is rejecting the pending claims. The invention may well be patentable with different claims. Second, it is important to appreciate that the patent office almost always rejects patent applications on the first office action. Indeed, that is usually a good thing. If the patent office allows the claims as filed, the filer is probably guilty of having sought claims that are too narrow. In any event, the correct response is to amend the pending claims and then argue that the amended claims are allowable. Sometimes the patent examiner is just wrong in issuing the rejection, and then the proper response is to point out the error. Patent responses are formalized, and will be rejected out of hand if they fail to follow the proper format.
What happens when the patent office issues a final rejection?
Final rejections just mean that the patent office wants more money. They spent the filing fee searching the claims and issuing office actions, and now they want more money to continue the process. The proper response is usually to file a Request For Continuing Examination (RCE), along with a preliminary amendment that amends at least one of the rejected claims. The process of rejection and response can go on for years.