Obtaining A Patent

• Jurisdiction: Maryland

II. OBTAINING A PATENT

A. Introduction

U.S. patent rights depend upon the grant of a patent by the U.S. Patent & Trademark Office (USPTO). The scope of patent exclusivity thereafter depends upon the enforcement by the federal courts of the asserted patent claims against infringers. The USPTO is an administrative agency of the executive branch of the federal government under the Department of Commerce.

B. Obtaining a Patent

Unlike other forms of intellectual property such as trade secrets, copyrights, and trademarks, patents are the subject of substantive examination solely by the federal government. The states are preempted from granting similar rights. The federal government's grant of temporary exclusivity to inventors for their inventions is subject to the statutory conditions for patentability and the disclosure requirements set out generally at 35 U.S.C. §§ 111-122.

C. Application Process Overview

While not formulaic, the patent application process often follows a common series of events. The preparation of a patent application may begin with an invention disclosure that merely sets forth a conception of an idea that may or may not have been reduced to practice. Where time to filing is of the essence, the patent application may contain little more, but the content of the patent application is critical to the ability to obtain patent claims of a meaningful and defensible breadth of coverage.

To be sure, a patent application is not a form to be filled out. Rather, the patent application is a document prepared to disclose the invention by way of distinction from the current state of the art (known as the "prior art") and to teach the public about the ways to make and use the invention. Various formats may be employed to accomplish these tasks, including the use of figures, drawings, tables, and cross-references apart from the inventor or applicant's own textual descriptions. Lastly, one or more patent claims will be drafted to facilitate the patent office's determination of patentability.

Because an invention must be new and nonobvious over the prior art, the preparation of a patent application may benefit from a prior art search and/or patentability assessment to gauge the likelihood that the claimed invention will be granted patent protection, and thus, worth the cost and effort in filing and prosecuting a patent application. While changes can be made during the drafting of a patent application to better position the invention and application for examination by the patent office, no changes may be made after filing that would constitute "new matter." Thus, the importance of a well-drafted, content-appropriate patent application cannot be understated. Often, an experienced patent agent or attorney will be engaged to assist in the preparation and filing of a patent application.

Once filed, the patent application will be docketed by the patent office and assigned for review to a patent examiner with particular technical expertise in the art to which the claimed invention pertains. While the patent application is filed confidentially, the contents of the application become public once the application publishes within about 18 months after filing. Typically over the next several years, the patent examiner will engage in the exchange of correspondence with the applicant to determine whether the patent claims as originally filed or as amended will pass muster and will conclude in the allowance or rejection of the pending patent claims. This process creates the prosecution history of the patent (the publicly available record of proceedings regarding the patent application).

While people often refer to patents and patent applications interchangeably, the precise reference is absolutely critical with respect to the legal rights involved. Only upon the patent grant is the patent applicant vested with enforceable legal rights of exclusivity. During the pendency of the patent application, the patent applicant has no recourse yet against those who use the invention. And where the prosecution results in an unappealed final rejection, or the applicant chooses to abandon the application, the disclosed technology becomes free for all to use.

There are numerous procedural and substantive considerations that underlie each phase of the patent application prosecution, so inventors and applicants are admonished to seek the specific counsel of an experienced patent agent or attorney.

D. Types of Patent Applications

There are different types of patent applications that may be distinguished based on subject matter of the invention or the procedural status of the application itself. Because the legal rights differ (as do the costs associated with obtaining such rights), one should pay attention to what specific type of patent application a reference is being made. In particular, invention marketing companies often do not specify that their low cost advertised services pertain to the mere filing of provisional and/or design patent applications that may provide little, if any, patent protection in the long run.

1. Utility

Perhaps the most common form of patent application about which people think is a utility application. This type of patent application is appropriate for subject matter other than designs, plants, and plant varieties. The term of patent exclusivity is 20 years from the filing date of the patent application.

2. Provisional

For many, a provisional patent application affords a useful starting point from which to launch a patent portfolio. Commonly referred to as a "provisional," this type of patent application acts as a placeholder for a patent applicant to establish a priority date such that any technical developments by others as well as by the inventor herself cannot be used as prior art against the patentability of the invention disclosed in the provisional. The preparation of this type of patent application is relatively informal and often considerably less expensive than a non-provisional patent application. Indeed, a simple description or drawing of the invention or a document prepared for another purpose (such as a business plan or scientific article) may be submitted with a USPTO transmittal form without any patent claims in a manner known as a "cover sheet provisional."

However, inventors and applicants should be cautioned that a provisional is only as good as its...