Protecting Intellectual Property: Part II

The 21st century will be one of new ideas, and economic benefits will flow to those companies that protect the ideas and creativity of their inventors.

ByRobert Nick

The first step in obtaining a patent for an invention is to file a patent application. In this regard, a pat-entability search is usually conducted to determine whether or not the invention has been previously patented or published. If the search yields favorable results, an application is then prepared and filed in the Patent Office.

Applications that are filed in the United States Patent and Trademark Office (USPTO) are maintained as confidential documents (i.e., they are not open for public inspection), and their existence is not made public upon election by the applicant.
International patent applications, however, are published.

Once an application has been filed, the Patent Office assigns it a filing date and serial number. At this time and during the pendency of the application, the term “Patent Pending” may be placed on the invention or on any brochure that describes
the invention. This gives notice that the patent process has been started and tends to discourage potential infringers.

In general, any act of making, us-ing or selling a patented invention without permission infringes that patent and any such infringing act will give rise to liability.

Remedies for patent infringement can include injunctions, orders to deliver up or destroy infringing articles and compensation for damages suffered by the patentee or profits made by the infringer.

In the Patent Office, examiners trained in the art of the invention will examine the patent application to see if the claimed invention meets the new, useful and non-obvious criteria. If the claimed invention meets all criteria of patentability, the Patent Office will grant a patent. The process through the grant of a patent generally takes about 18 months or more, depending on the subject matter of the invention. To date, the U.S. Patent and Trademark Office (USPTO) has granted more than six million patents for inventions. In addition, over 250,000 patent applications are filed in the USPTO every year.

Types of Patent Applications

A utility application can be filed for compositions of matter, processes, machines and articles of manufacture. A design application is filed for the ornamental design of an article of manufacture and a
plant application can be filed for certain types of new and distinct varieties of plants.

Utility, plant and design applications are complete applications from which a patent may be granted. Once filed, these applications provide “Patent Pending” status for inventions until a patent is granted or the application is not allowed.

Provisional Patent Applications

In recent years, the USPTO has offered inventors the option of filing a Provisional Application for a patent, which was designed to provide a lower cost first patent filing in the U.S. A provisional application provides the means to establish an early effective filing date in a patent application and permits the term “Patent Pending” to be applied in connection with the invention. This term can appear on the invention and on brochures that describe the invention. Provisional applications, however, may not be filed for ornamental design inventions.

The provisional application is a partial patent application that has a one year pendency; a comp-
lete application must be filed within the one year time period to claim the benefit of the provisional filing date. In addition to the lower cost, a provisional application gives an inventor time to show the invention to potential investors, manufacturers, buyers, etc., and to explore marketing possibilities.

Proceedings

The preparation of an application for patent and the conducting of proceedings in the USPTO to obtain the patent is an undertaking requiring knowledge of patent law and of the rules and office practice procedures, as well as knowledge of the scientific or technical matters involved in the particular invention.

Inventors may prepare their own applications, file them in the USPTO and conduct the proceedings themselves, but unless they are familiar with these matters or study them in detail, they may run into considerable difficulty. While a patent may be obtained in many cases by persons not skilled in this work, there would be no assurance that the patent obtained would adequately protect the particular invention. In practice, if competitors seek to circumvent a company’s patent position, the better the patent portfolio, the better are the chances of converting competitors into commercial partners.

Most inventors employ the services of a registered patent agent or patent attorney to prepare and file a patent application. Persons who are not recognized by the USPTO for this practice are not permitted by law to represent inventors before the USPTO. Both patent agents and patent attorneys are permitted to prepare an application for a patent and conduct the prosecution in the USPTO.NW