A PRIMER ON THE UTILITY PATENT PROCESS IN THE UNITED STATES
Copyright 2004, Vern Maine & Associates
U.S. UTILITY PATENTS may
be obtained for inventions that are new, useful and not obvious to others
knowledgeable
in the field at the time of the invention.
The patent holder has the right to exclude others from making, using or selling
the invention in the United States from the date of issue for up to 21 years
from the date of first filing. It is a government granted right of exclusion,
given in return for the inventor’s public disclosure of the invention,
after a rigorous examination process. A patent typically take two to three
years to obtain, but may take longer. Patent protection does not apply until
the patent actually issues.
In the United States, the inventor owns the patent rights unless the invention
is created in the course of employment or under the terms of an employment
contract where the employer is entitled to some or all rights in the
invention. The owner
of an application or patent can sell, assign or license all or part of its
rights to others at any time. Suitable assignees or licensees should
be able to offer
money, technical help, business expertise, manufacturing assistance, or access
to valuable markets in exchange for receiving patent rights.
A registered patent attorney provides legal and practical assistance to
define the invention, evaluate the business plan, execute patent searches
and opinion
letters, and draft provisional and utility U.S., P.C.T. (Patent Cooperation
Treaty), and U.S. national stage patent applications. The patent attorney
or firm will
handle the prosecution of U.S. patent applications and manage foreign patent
prosecutions through law firms in those jurisdictions. Clients will also
likely need legal assistance with non-disclosure agreements, employment
contracts,
joint venture and licensing agreements, assignments, and contract negotiations.
Clients
may need additional legal help to analyze alternate designs and competing
patents, and draft opinions on patentability and infringement issues.
Patent law firms
or attorneys may be tasked with competitor watch programs and management
of US and foreign patent portfolios for periodic annuities and maintenance
payments,
as well as with support to management in developing and executing the corporate
intellectual property strategic plan.
The first step for clients is often an invention capture exercise with
the inventors, and consultation with management, leading to a description
of
the invention and
an understanding of the client's objectives. The patent attorney will prefer
to receive a written invention disclosure with drawings, explaining the
invention in detail, the problem it solves, the ways in which it is
different from
prior solutions, any prior art known to the client, an explanation of the
client's
related business objectives, along with inventors’ names, addresses and
citizenship. Prototypes are often helpful. Legal consultations may be accomplished
in person, by phone, fax, email, or otherwise, depending on client preference
and mutual convenience. The attorney will generally provide his or her "first
impression" comments on the merits of the invention, with recommendations
and cost estimates for legal services, and also raise other potentially important
legal or business concerns. Often the consultation will identify special issues,
such as maintaining trade secrets, potential inventor/owner disputes, international
filing rights, marketing issues and related strategies including timing of publication
and filing of related trademarks.
A patentability screening search can be conducted by anyone, but is
preferably done under the direction of a patent attorney. It is helpful to
provide
the patent attorney with probable search criteria as well as the results
of any
client-conducted
searches. There is a legal requirement for everyone involved in the application
to submit all known information materially affecting patentability of
the invention to the patent office.
A search may yield enforceable
third party patents for which infringement is an issue if the invention
is practiced. This art should be reviewed and considered
by the attorney as well for its business and legal implications. If
the search results are suitable, preparation and filing of a provisional
patent application may be appropriate, depending on the scope and
complexity of the invention, quality of the applicant's disclosure,
and timing.
A provisional application is a relatively quick way, at lower initial
cost, to establish a priority date for later filings, up to one year
later, and
to allow
the invention to be publicized or advertised with "patent pending" status.
A provisional application is not published or examined, but must contain a fully
enabling disclosure of the invention in order to be an effective priority document.
In most non-U.S. jurisdictions, a first application must be filed in
the same or a reciprocating treaty country prior to any publication
or offer
of sale
of the invention. In the U.S., there is a one- year grace period
after the date
of publication or first offer of sale, during which a first application
can be filed. However, it is generally prudent to file before any
publication or offer
for sale, if possible.
Some law firms require a retainer in advance of any work. Some firms
charge hourly rates, others may quote a fixed fee.
Either way, the cost of the
provisional should mitigate the cost of a later utility application,
unless the subject
matter
is greatly expanded or altered after the provisional is filed.
The US filing fee for a provisional application is presently $80 for
small entities,
and $160 for large entities (500+ employees).
At some point in the
process, the client may require a comprehensive, written patentability
opinion, including consideration of prior
patents and other
published evidence of commercial usage found in the searches.
This, if desired, as well
as a further review of the client's business objectives, should
precede the decision whether to go ahead with a utility patent
application.
A utility application must be filed within twelve months of any
provisional or foreign applications to which it claims priority.
Or, in the special
case of
a continuation application, during the pendency of any prior
US utility applications that are being claimed as priority documents.
The cost
to draft and file
a utility patent application in the U.S., with up to twenty claims
and the related
documents
necessary for filing, can be expected to be in the range of $10,000
and up, depending on many variables. It may take several weeks
or more calendar
time,
depending
on the attorney's workload and client cooperation. The basic
U.S.
filing fee as of July 2004, is $385 for individuals and small
businesses, and $770 for
large entities (500+ employees).
When a formal filing receipt is received from the Patent Office,
or sooner if proper filing procedures are followed, the specimens,
drawings
and
descriptions of the invention can be labeled “patent pending” to indicate that
patent protection is being sought. Misuse of the terms “patent pending” and “patented” is
a violation of law.
Applicants should be aware that publication of U.S. utility
applications normally occurs at eighteen months after the
earliest priority
date claimed, exposing
the invention description for all to see, irrespective of
whether a patent will ever issue. The published application then becomes
prior
art as
to other later-filed
applications, effective as of its filing date. There are
provisions
for avoiding publication in some cases. Consult with your
patent counsel in this regard.
The prosecution of a utility patent application generally
involves at least one office action correspondence from
the Patent Office.
It is
important
to note
in advance that no one can guarantee that any claims
will be allowed. Upon doing its own search and examination,
the examiner
may make
a statutory rejection of
some or all claims, with an explanation. The patent attorney
will normally review the correspondence, consult with the
client about
the rejection,
and prepare
a response to the examiner, perhaps with amendments to
the claims and arguments
in support of the application. The fee for preparing an
office action response is normally based on the time required, and
is typically
billed at the
attorney's hourly rate. The cost can vary widely depending
on the specifics of the office
action and the client’s objectives and instructions.
Eventually the examiner will either allow or finally reject
the claims. Upon receipt of a notice of allowance for
a utility patent,
the attorney
will
prepare and submit formal drawings if not already completed,
and submit issue documents
with the issue fee. If the application was fully and
finally rejected, there is an appeals process.
Once issued, maintenance fees are payable at 3, 7 and
11 years from the date of issue to keep a U.S. utility
patent
in force
for the
full term.
The attorney
will calendar these events, and invoice the client
when appropriate. If the invention turns out to be unsuccessful
commercially,
the patent may
be abandoned
by not
paying the maintenance fees.
Foreign filings add cost and complexity to the process,
and must be coordinated carefully with the first
filing of the
invention.
See the
Patent Cooperation
Treaty (PCT) section for more information. Consult
your patent attorney early, if there are important
non-U.S.
markets or
competitors relating
to the invention.
CAUTION: The sole purpose of this material
is to provide an overview of the subject matter. This document is subject
to change at any time, and is not
to be relied on as a formal statement of law or fact. Copyright 2004, Vern Maine & Associates.
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