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Patent Protection

A patent is a temporary grant of a property right, issued by the U.S. Patent and Trademark Office, in exchange for a full disclosure of a new and novel idea.  A U.S. patent, once granted, gives the patent holder the ability to keep others from making, using, offering for sale, or selling the claimed invention in the United States or importing the claimed invention into the United States.

There are three types of patents available to applicants in the United States, utility (which can begin as a provisional or non-provisional application), design, and plant.  With limited exception, patent rights are granted to the first inventor to file a patent application, not necessarily the first inventor to come up with the invention.  See the Warning to Inventors page for more details.

Utility Applications

A utility patent is available to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matters, or any new and useful improvement thereof. 

A non-provisional application for a utility patent must meet certain formal requirements set out by the U.S. Patent Office and contain a descriptive title, a background section detailing the state of the relevant art, a brief overview of the potential invention, a highly detailed description of the potential invention (including a description of any variations or alternate embodiments of the possible invention), one or more claims (which set out the scope of protection that a resulting patent will provide), sufficient drawings to show each and every feature or element of the potential invention, and an abstract that provides a thumbnail sketch of the potential invention to aid in searching.

In the application, the inventor must provide a complete description of the potential invention.  Once the application is submitted to the Patent Office, no new matter can be added (without the filing of a separate, continuation-in-part application), so it is important that the application be complete, accurate, and correct when it is filed.

Once the application is filed, the claimed subject matter is given "Patent Pending" status and the application is assigned to a Patent Office Examiner for examination.  During examination of the application, the Examiner ensures that the application meets all of the formal requirements under the patent law and performs a search for prior art that may be relevant to the patentability of the potential invention. 

If the Examiner believes the application does not meet the formal requirements or that the potential invention, as claimed, does not constitute patentable subject matter, is not novel (does not have at least one feature or element that is new), is obvious when compared to the relevant prior art, or is not useful, the Examiner will object to or reject the application.  If the applicant disagrees with the Examiner, the applicant may respond by filing amendments to the application and/or arguments to overcome the objections and/or rejections.

The applicant’s response may be accepted or rejected by the Examiner, potentially resulting in more give-and-take between the applicant and the Patent Office, which will go on until the application is abandoned by the applicant or allowed by the Patent Office.

Once the application is allowed and the required issue fee is paid, the application will issue as a patent.  The issuance of the patent effectively ends prosecution of the application and begins the period during which the patent holder can pursue possible infringers.  Patent issuance also begins the tolling of the 3 ½, 7 ½, and 11 ½ year periods for payment of Patent Office maintenance fees.  So long as the required maintenance fees are timely paid and the patent is not canceled by judicial ruling, the patent will be enforceable for 20 years from its earliest effective filing date.  If a required maintenance fee is not timely paid, the patent will be viewed as abandoned and all rights under the patent will be lost.

Provisional Applications

A provisional patent application is basically a 1-year "placeholder" in the Patent Office.  A provisional application does not have to meet all of the formal requirements of a full-blown non-provisional application (a.k.a. utility application), so it can typically be prepared more quickly and filed earlier than in non-provisional application.  Since the U.S. now follows a first-to-file rule, receiving the earliest possible filing date for a patent application is extremely important.

Because a provisional application is only a temporary placeholder, it will never, on its own, mature into a non-provisional application or a patent.  As soon as a provisional application is filed, the subject matter of the application is granted "Patent Pending" status, but a 1-year clock also starts to run.  The provisional application will automatically expire 1 year from its filing date.  If a non-provisional, utility application, which properly claims priority to the provisional application, is not submitted by the 1-year anniversary date, Patent Pending status disappears, the ability to claim priority back to the provisional application ends, and all potential rights under the provisional application are lost.

So, while a provisional patent application can be useful to achieve the earliest possible filing date and Patent Pending status, it does have some shortcomings, so its use must be strategic and deliberate.

Design Applications

design patent protects an article's ornamental appearance, including its shape, configuration, or surface ornamentation.  Design patent applications generally require less preparation work and are typically less expensive than utility applications.

Design patents can be used to protect the unique look of the invention.  So, if you've developed a new look for a pair of sunglasses, the look of the sunglasses can be protected, even if the sunglasses do not embody any novel or non-obvious technology … they just look different.  An invention can be protected by both a design and a utility patent if invention resides in both its ornamental appearance and its utility.

This website is designed for general information purposes only and is Attorney Advertising.  The information presented on this site is not, nor is it intended to be, legal advice and does not establish or constitute an attorney/client relationship.  The information is general and may not reflect the current state of law.


© 2014 Shaddock Law Group, PC