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1. What is a patent?
A patent is “a property right granted by the Government of the United States of America to an inventor to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States” for a limited time in exchange for public disclosure of the invention when the patent is granted.” - http://www.uspto.gov/main/glossary/index.html
A patent does not grant the right to make, use, offer for sale, sell or import, but the right to exclude others from making, using, offering for sale, selling or importing the invention.
A U.S. patent is obtained through the United States Patent and Trademark Office by an application process. If you have an invention or idea and have questions regarding patent matters you may contact PATE PIERCE & BAIRD by telephone at (801) 530-0330, or by e-mail at iplaw@patepiercebaird.com
1.1 Who can file a patent?
A patent can be filed by the first person to invent or coinvent an invention, process, or method. To file, the patent applicant must be the person who conceived the invention, process, or method. Reduction of an invention, process, or method to practice is irrelevant in determining inventorship.
1.2 What is patentable?
An inventor can patent a composition of matter, process, machine, manufacturing, design, or plant.
1.3What types of patents are there?
Four types of patents are available: provisional, utility, design, and patent. A provisional patent establishes an early filing date (which may be important due to the time-sensitive nature of the patent process). A utility patent is used to protect the way an invention works. A design patent protects the way an article looks. A plant patent covers new species of asexual plants.
2. How do I patent an invention?
To patent an invention, the inventor must prepare an application, file it, respond to office actions, pay the issue fees, and pay the maintenance fees after the patent issues.
The application process involves frequent communication with the United States Patent and Trademark Office(USPTO), and must be conducted by an agent authorized to prosecute before the USPTO.
2.1 How do I prepare a patent application?
A patent application must be carefully prepared to increase the likelihood that the invention will be patented, and to ensure that the patent is enforceable. A patent application has many elements including a specification, including a claim or claims; drawings, description of the drawings, background, summary, and the prescribed filing fee.
2.2 How do I file a patent application with the Patent Office (PTO)?
To obtain a patent, an inventor needs to file the prepared application with the USPTO with the appropriate filing fee. When the date of the application is a significant issue due to patent barring events (an inventor may loose the right to a patent if he or she discloses it to the public more than one year before the date of the application), the applicant can send the application via United States Postal Service Express Mail (not Fedex or UPS), and the effective filing date of the application will be the date that the application was mailed.
2.3 How do I respond to the Office Actions received from the PTO examiner?
Generally, an examiner will specify a shortened statutory period of three months for the applicant's response to office actions. During the shortened statutory period, the applicant can respond without incurring any additional fees. An applicant has up to six months to respond to an office action. However, if a response is filed after the shortened statutory period, it must be filed with the requisite fee. If the applicant does not respond within six months, the examiner will consider the application abandoned.
2.4 How often are patent applications rejected?
Patent office rejections are common. Examiners search prior art (technology related to the invention previously disclosed to the public) and examine the application to determine whether the claims define a useful, novel, nonobvious, and enabled invention. Rejections are usually based upon prior art (35 U.S.C. §102) or obviousness (35 U.S.C. §103). Though rejections are routinely overcome, the more an invention resembles other prior art, the more difficult it is to overcome the examiner's rejection. See MPEP §706.
2.5 When do I pay the issue fee?
The issue fee must be paid within 3 months after the USPTO issues the Notice of Allowance (which informs an applicant that the pending patent has been approved). The amount that the USPTO requires for issue fees can change between the notice of allowance and the payment of the issue fee by the applicant. Applicants should check 37 CFR 1.18 to make sure that they pay the correct amount to the patent office. If the applicant fails to pay the issue fee, the USPTO will consider the application abandoned. A current listing of USPTO fees can be found at http://www.uspto.gov/go/fees/index.html
2.6 Are there required fees after my Patent is issued?
Maintenance fees are due 3 1/2, 7 1/2, and 11 1/2 years after issuance of all patents except plant patents, design patents, and some reissue patents. A grace period of 6 months follows the due date. If an applicant fails to pay the maintenance fees by the end of the grace period due to unintentional or unavoidable delay, he or she can pay within 24 months of the grace period. However, failure to pay the maintenance fee by the grace period may severely affect the applicant's rights to the technology. If another person begins to make, offer for sale, purchase, use or import the invention between the end of the grace period and the actual payment of the maintenance fee, that person may be permitted to continue in what would have otherwise been patent infringement. “Maintenance fees are required to be paid on all patents based on applications filed on or after December 12, 1980, except for plant patents and design patents. Furthermore, maintenance fees are not required for a reissue patent if the patent being reissued did not require maintenance fees.” MPEP §2504.
2.7 Does filing a U.S. Patent Application prevent foreign infringement?
Obtaining a patent application in the U.S. will not prevent others from infringing in foreign countries. To prevent foreign infringement, an applicant must file an international application in addition to the U.S. application and pay fees in every country that the applicant wants the international application enforced. An international application is only effective in countries that participate in the Patent Cooperation Treaty. To obtain patent protection in countries that are not part of the Patent Cooperation Treaty, an applicant must file in each country individually.
3. Can I patent my invention?
There are a number of requirements that must be met before an invention will be patentable. To be patentable, the invention must be: of patentable subject matter, useful, novel, fully described, and nonobvious.
3.1 How soon after I invent do I need to get a patent?
After an inventor conceives of the invention, it is very important that he or she is diligent in developing, patenting, and keeping the technology secret. If an inventor discloses his or her own invention to the public through an article, public display or on-sale event more than one year before the date of the application, they can loose the right to a patent.
3.2 What happens when two inventors claim the same invention?
If two inventors try to patent the same invention, the patent office will hold an interference proceeding. This proceeding is used to determine who was the first inventor and, thus, who should be awarded the patent. The first inventor is depends on who first conceived of the invention and worked diligently to reduce the invention to practice.
3.3 Can I leave out some secrets that I do not want to share in my patent?
No. To obtain patent protection, an inventor must disclose the invention, including the process for making and using it. This disclosure must be in such full clear, concise and exact terms that any person skilled in the art could make the device. “In return for a patent, the inventor gives as consideration a complete revelation or disclosure of the invention for which protection is sought. All amendments or claims must find descriptive basis in the original disclosure, or they involve new matter. Applicant may rely for disclosure upon the specification with original claims and drawings, as filed.” - MPEP §608.
4 What do I do after my patent is issued?
The USPTO's involvement in the patent process does not necessarily end upon issue of the patent. Several scenarios exist where continued communication with the patent office is required.
4.1 What if my published patent contains errors?
Minor mistakes can be corrected by getting a certificate of correction from the patent office. The certificates are only issued if the desired change does not materially alter the scope of the patent. They are limited to correcting minor mistakes like spelling or typographical errors. If non-minor errors are present in the patent, the inventor can have the patent reissued. A reissue is often used in anticipation of litigation to ensure that the patent covers the accused infringer. A reissue is also permissible when defects are present in the original patent such as a defective drawing. Changes made during reissue cannot be used to add new subject matter. Additionally, any change that broadens the scope of the claims must be made within 2 years of the patent's issue date. Before reissue occurs, the patent must be reexamined. After reissue, the reissued patent replaces the original for the balance of the patent term.
4.2 What happens if new prior art is found after my patent is issued?
Any member of the public can request that the USPTO reconsider the validity of the patent in light of a new printed publication or patent that was not used by the examiner during the original patent prosecution. Reexamination is used by the USPTO to review and correct initial examinations. The likelihood of reexamination is reduced insofar as the applicant discloses during the patent application process all references of which he or she is aware (though the applicant is not required to search for prior art similar to his or her own invention).
4.3 What is double patenting?
Double patenting is when rejections prevent inventors from extending the life of the patent by filing a new patent with claims similar but not patenably distinct. Double patenting rejections prevents an inventor from filing similar or identical claims to the claims in a pending or already issued patent. If the change is obvious but not contained in the original patent application, a terminal disclaimer can be filed to remedy the problem. The life of the patent is still limited to the remaining life of the original patent. There are generally two types of double patenting rejections. One is the “same invention” type double patenting rejection based on 35 U.S.C. 101 which states in the singular that an inventor “may obtain a patent.” The second is the “nonstatutory-type” double patenting rejection based on a judicially created doctrine grounded in public policy and which is primarily intended to prevent prolongation of the patent term by prohibiting claims in a second patent not patentably distinguishing from claims in a first patent. Nonstatutory double patenting includes rejections based on one-way determination of obviousness and on two-way determination of obviousness. Nonstatutory double patenting could include a rejection which is not the usual “obviousness-type” double patenting rejection. This type of double patenting rejection is rare and is limited to the particular facts of the case. A double patenting issue may arise between two or more pending applications, between one or more pending applications and a patent, or between one or more pending applications and a published application.
A double patenting issue may likewise arise in a reexamination proceeding between the patent claims being reexamined and the claims of one or more applications and/or patents. Double patenting does not relate to international applications which have not yet entered the national stage in the United States.
5 How do I tell if someone is violating my patent rights?
Infringement occurs when an accused device, method, or process is encompassed by the claims of the patent. Infringement is independent of intent and the lack of intentional infringement will not excuse liability. Although infringement is a question of fact and decided by a jury, the interpretation of the claims is up to the judge. Infringement can occur under two different theories: 1) direct infringement and 2) the doctrine of equivalents. The doctrine of equivalents authorizes a court to hold a party liable even if the infringing invention doesn’t fall within the literal scope of a patent claim, but is essentially equivalent to a claimed invention. “Victory in an infringement suit requires a finding that the patent claim 'covers the alleged infringer's product or process,' which in turn necessitates a determination of 'what the words in the claim mean.'” - Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996)
5.1 What is direct infringement?
Direct infringement takes place when one makes, uses, offers to sell, or sells any patented invention within the U.S. or imports a patent invention into the U.S. Determining if infringement occurs is a two-step process. Courts first interpret the claims and then use that interpretation to look at whether the claims in the patent cover the accused device. If the accused device embodies the claims and every limitation in the claims or a substantial equivalent is present in the accused device, infringement is found.
5.2 What is contributory infringement?
Contributory infringement allows an inventor to recover damages from someone who has helped or convinced others to infringe the patent. A contributory infringer is just as liable for patent infringement as a direct infringer. One of the most important concepts of contributory infringement is that the existence of a direct infringer must be established before contributory infringement can be determined. Absent a direct infringer, there is no contributory infringement. The one major exception carved out of this rule is when the would-be contributory infringer is supplying the parts needed to infringe materials. In that case, the contributory infringer is not considered a contributory infringer but is held responsible as a direct infringer of the patent. The existence of a direct infringer can be proven through circumstantial evidence.
5.3 Does repair or reconstruction of a patented item constitute infringement?
Repair of a patented article can be done without infringing the patent as the purchaser of a patented article has an implied license to repair the invention. A purchaser is not allowed to reconstruct the invention. Often, the difference between repair and reconstruction is not readily apparent. This analysis is further complicated as the decision is not based on the size or relative importance of the replacement.
5.4 What might prevent the recovery of damages resulting from someone violating my patent?
Certain actions taken or not taken by the patent holder during the term of the patent can affect future enforcement of the patent. These restrictions are important to know and understand to maximize ones patent granted property rights.
5.5 How can I collect damages caused by patent infringement?
Once a patent is held valid and infringed, the court will issue a remedy tailored meet the harm caused by the infringement. The court has several award options including injunctions, royalties, and any specific damages that can be shown. The damages awarded are designed to place a patent holder in as good a position as he would have been if infringement had not occurred. Damages are not intended to directly punish the infringing company. Specific damages are awarded when they can be proved. If specific damages cannot be shown, the patent owner is entitled to at least a reasonable royalty.
6 Can I sell my patent rights?
A patent has attributes of personal property and can be transferred to others. This means that ownership of the patent does not always have to lie with the inventor. Property rights in a patent can be transferred by either assignment or through a license.
6.1 What are shop rights?
Even though the inventor owns the invention, there are certain circumstances that require an inventor to give a license to his employer. This is called shop rights. “Consistent with the presumption that the inventor owns his invention, an individual owns the patent rights even though the invention was conceived and/or reduced to practice during the course of employment... At the same time, however, the law recognizes that employers may have an interest in the creative products of their employees... When the purpose for employment thus focuses on invention, the employee has received full compensation for his or her inventive work. Thus, when an employer hires a person for general service and the employee invents on the side, the invention belongs to the employee. However, the employer may claim ownership of the invention if the employer hires a person for the “specific purpose of making the invention.” Even if hired for a general purpose, an employee with the specific task of developing a device or process may cede ownership of the invention from that task to the employer.” - Teets v. Chromalloy Gas Turbine Corp., 83 F.3d 403 (Fed. Cir. 1996).
6.2 What is a patent assignment?
A patent assignment passes the legal title of the invention onto another. A valid assignment gives the assignee the right to sue others for infringement of the patent. An assignment must be recorded in the patent office within three months of the conveyance to be valid against a subsequent purchaser. “Applications for patent, patents, or any interest therein, shall be assignable in law by an instrument in writing. The applicant, patentee, or his assigns or legal representatives may in like manner grant and convey an exclusive right under his application for patent, or patents, to the whole or any specified part of the United States. An assignment, grant or conveyance shall be void as against any subsequent purchaser or mortgagee for a valuable consideration, without notice, unless it is recorded in the Patent and Trademark Office within three months from its date or prior to the date of such subsequent purchase or mortgage.” - 35 U.S.C. §261
6.3 What is a license?
A license is an agreement between the patent holder and another party that promises the licensee that the patent holder will refrain from suing the licensee for infringement as long as certain conditions are met. Licenses are governed by contract law and are a more limited grant of patent rights than an assignment.
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