Seeking Patent Protection – An Overview
The metes and bounds of patent protection that might be obtained for an invention will be defined by the prior art (equivalent or similar devices) developed by others in the past.
A patentability/novelty search is generally the first step in determining whether an invention might be patentable. Such searches are often conducted at the U. S. Patent and Trademark Office (USPTO) or one of its regional patent repositories, as well as utilizing a variety of electronic databases. The results of such a search will indicate – although not perfectly – whether a device or method might be patentable.
Based upon the results of a patent search, a patent application might be filed. The total legal fees and expenses can be highly variable, depending upon the amount of time required to prepare and file the application, and then to prosecute the matter before the USPTO. In addition to patent attorney fees, additional charges will include the various costs and expenses associated with preparing and filing the application, drafting fees, and governmental fees.
Generally, until a patent application is filed, you should keep your invention secret. If others must have access to your invention, you should insist upon their signing a non-disclosure agreement before giving them access to the invention.
You should also carefully document each development in your inventive efforts. This documentation should be kept in a bound (that is, not a loose-leaf notebook) volume and entries should be made at, or very near, the time of your development. One or more neutral witnesses or notary publics should witness each dated entry, after each has read and understood the relevant entry.
Types of Patents, Protections Under Patent Law & The Patent Process
The following contains additional information, which may be helpful in evaluating an invention for filing a patent application. After reviewing the information contained in this page, we encourage our clients to research this topic thoroughly before undertaking the patent process. If retained, we will provide further information, and there are many excellent patent law references available from a wide range of reputable sources.
The United States Government Publishing Office publishes several useful pamphlets on patent law. Other references may be obtained from the public library, from retail booksellers, and on the Internet. We highly recommend that you visit the United States Patent and Trademark Office web site at www.uspto.gov/
I. Types of Patents
There are three types of patents available under United States law, each protecting different inventive aspects of an invention. The two types of patent most often sought are the utility patent and the design patent.
The Utility Patent
A utility patent is a limited monopoly right protecting the functional aspects of an invention. The general public often believes that a utility patent is the most desirable form of patent, although, from the attorney’s prospective, the requirements of each individual case will dictate the accuracy of this conclusion.
A utility patent may be obtained if the invention is new, useful, and not obvious to a person of ordinary skill in the art. Section 101 of the United States Patent Laws states in relevant part:
“Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor….”
35 U.S.C. § 101. Under United States law, only the first inventor effectively to file an application for patent that meets the above criteria may seek and obtain patent protection. 35 U.S.C. § 102.
Additionally, United States patent laws provide that a combination of prior art can defeat patentability, even though the exact invention is not disclosed in a single prior art document. Section 103 of the United States Patent Laws states in relevant part:
“A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.”
35 U.S.C. § 103. In plain language, Section 103 states that if a person having ordinary skill in the relevant art could look at the individual elements of several prior art documents and be motivated thereby to combine them to form the item for which patent protection is sought, the resulting invention would not be patentable. It is often a combination of inventive aspects of multiple prior art documents upon which the Patent Examiners rely to reject a patent application. In such cases, a patent will not be issued for the invention.
The Design Patent
A design patent protects the ornamental characteristics of an item of manufacture. The standards for patentability, which were discussed above, apply equally to utility and design patents. Generally, an application for a design patent will be subject to the same standards, scrutiny, and rejection criteria as will an application for a utility patent.
II. Protected and Prohibited Conduct Under the Patent Law
United States law protects the owner of a valid U. S. patent against a wide variety of infringing activities. A patent infringer is defined as anyone who, without a valid license, makes, uses, sells, offers for sale, or imports into the United States any device, or its legal equivalent, protected by one or more valid United States patents. Under the relevant United States law protecting the above referenced patents, the term of a utility patent is currently variable: it commences at issuance and continues thereafter for a term of either seventeen years from the date of issuance or twenty years from the date of filing, depending upon the applicable GATT/TRIPS term extension provisions. The term of a design patent commences at issuance and continues for 14 years thereafter. Only after passing of the patent expiration date relevant to a specific invention at issue may a person other than the patent holder properly make, use, sell, offer for sale, or import into the United States, without license, the patented invention.
Trademarks
A trademark can be a word, slogan, symbol, logo (design), emblem, sound, color scheme, smell, or combination used to identify a brand and to distinguishing the products or services of one party from those of another.
Under trademark law, there exist a variety of sometimes overlapping common law rights, state -based rights, and federal rights. As well, the United States is a signatory to international agreements and treaties that provide certain favorable benefits to United States trademark owners.
Copyrights
Every day writers, writers, lyricists and artists create original books, articles, film scripts, songs, artwork, and other creative and expressive works. A copyright protects original works from being duplicated or used without express permission, identifies the owner, and enables the owner to commercialize the original creation.
Whether you wish to pursue prosecution of a copyright application before the U. S. Copyright Office, transfer, assign or license your copyright, or are involved in a copyright dispute, the legal advice of a copyright lawyer can be invaluable.
Other Intellectual Property Services
We also assist inventors and technology companies prosecute international patents; conduct secured disclosures to industry; work with engineering, prototyping, and manufacturing resources; work with marketing partners; develop business opportunities; sell or license patents and portfolios; and, protect intellectual property rights in all forms.
In addition to our patent-related services, we represent businesses, artists, designers, architects, software developers, musicians, and, of course, patent owners in seeking and enforcing intellectual property rights, especially through state, federal, and international trademark, copyright, and trade secret laws.
Our Office Procedures
Should you wish to schedule an initial consultation to discuss your intellectual property -related goals more specifically, please call us at (770) 847-9367.
Should you decide to retain us to perform any work on your behalf, we will prepare and mail to you our standard engagement letter. Upon our receipt of your signed agreement and initial retainer fees, we will proceed in accordance with your instructions.