United States: Patent Application and Process

Last Updated: December 19 2014
Practice Guide by Brinks Gilson & Lione

There are three types of patents, the utility patent, the design patent and the plant patent. Only the first two, however, are typically sought by technology companies and inventors.

1. Utility Patents and Applications

The utility patent is the type of patent that most people think of when they hear the word patent. It protects the underlying concept of the invention. In order to obtain a utility patent in the United States, an application must be filed with the USPTO. The application process can start in one of two ways, either with the filing of a provisional patent application or with the filing of a non-provisional application.

2. Provisional Patent Application

A provisional patent application is an application that is less formal in terms of its overall requirements. Because of this relaxed requirement, it typically is less expensive to draft and file. The requirements of a provisional application take no special form. Rather, the provisional application must only 1) provide a description of the invention that enables one skilled in the technology to practice the invention and 2) disclose the best mode for practicing the invention. The description of the invention in a provisional application need not actually be in words. If drawings are sufficient to convey the full scope of the invention to a person of ordinary skill in the relevant technology, then no written description is required in a provisional patent application.

A provisional patent application is not formally examined by the USPTO. The USPTO will only examine the provisional patent application with respect to form, not content. Accordingly, a provisional patent application will not mature into a utility patent. In order for that to occur, a non-provisional application must be filed after the provisional application.

The lack of formal requirements in a non-provisional application,unfortunately, is a trap for the unwary. Sometimes, an applicant may find that the provisional application they thought was protecting their invention is actually not providing any protection at all. This may occur when the level of detail in the underlying provisional patent application does not fully disclose the invention or does not provide sufficient detail to protect the whole invention. Only that which is disclosed in the provisional application is afforded any protection in a subsequent non-provisional application and any patent that results therefrom.

In order to properly protect the invention, the provisional patent application requires a written description of the invention with such a level of detail that would enable one skilled in the art to practice the invention without undue experimentation. It must therefore “enable” the invention. Additionally, it is required to disclose the best mode of the invention. In other words it must disclose the invention such that the best way known for practicing the invention is provided to the reader of the patent. Drawings are not required, but if they aid in understanding the invention they should be included.

3. Non-Provisional Patent Application

A non-provisional application has all of these same requirements and must also include one or more claims that define the metes and bounds of the invention. The structure of the non-provisional application is also more formally and strictly laid out by requirements of the Patent Office rules. Drawings are required if they aid in understanding the invention and detailed reference to these drawings must be set out in the description portion of the application. Failing to comply with the strict requirements for non-provisional applications will result in non-substantive rejections by the Patent Office, increasing both time and expense, as well as frustration on the part of the applicant. It is important to remember that new matter cannot be added after filing of the non-provisional application.

4. Design Patents

Design patents do not cover the underlying idea of the invention. Rather, they protect the aesthetic look or ornamental features of the product.

For this reason, design patents consist mainly of drawings. If, however, the look of a particular feature is dictated solely by its function, then no design patent protection is available for that feature. As can be appreciated by the above, a design patent is often very useful with consumer products. Increasingly, it is becoming an important protection method outside of consumer products.

A design patent need not cover the entire product. It can be drafted such that it only covers one feature of a product. For example, the design patent may only protect the fan blades of a fan assembly.

5. The Patent Process

In September 2011, Congress passed patent reform legislation. Under the old law, the Patent Office awarded a patent to the first inventor. One of the most significant changes relates to patentable inventions claimed by more than one applicant. Under the new law, the Patent Office will issue a patent to the first inventor to file an application. This change in the law places a premium on promptly filing an application with the Patent Office.

As discussed in Section III, the patent process itself begins with the capturing of the idea of the invention. In this regard, a company should have in place a formal mechanism by which inventions are captured and reported to personnel responsible for handling of inventions. A company should capture the invention via an Invention Disclosure Form. All employees, regardless of job title, should be strongly encouraged to fill out and submit invention disclosure forms. A culture of ingenuity creates a company that is fun to work for and always moving forward, and therefore positioned to take advantage of opportunities as they present themselves and to withstand tough times.

A properly designed Invention Disclosure Form achieves two primary purposes. First, it memorializes the details of the invention. Second, it collects data relating the conception and reduction to practice of the invention. Both of these features serve a secondary purpose. In one aspect, they allow the patent review committee of the company to understand the invention and formulate a position on whether the invention warrants patent protection. (See Section 3 with regard to corporate policies and procedures in determining whether patent protection should be sought.) In another aspect, the Invention Disclosure Form provides the patent attorney drafting the patent application with information that allows him to quickly discern the nature of the invention, to determine if there are facts that should be investigated to determine if patent protection is barred, and to efficiently draft the application. A sample Invention Disclosure Form is provided at the end of Section III.

Under the newly created patent reform, even if your company was the first to invent something, another party may be entitled to a patent if it was the first to file. Further, as noted briefly above, certain factual scenarios will prevent the patenting of an invention. For example, if the invention was publicly disclosed more than a year before the filing your patent application, patenting of the invention will be barred.

Similarly, if the invention was offered for sale more than a year before the application is filed, the invention will also be barred. Other situations exist as well, but these are the two most common.

Once the invention is captured, the next step is for the company’s patent review committee to determine if the invention warrants further action. This further action may take various forms, such as:

• a request for additional information,

• a patentability search, or

• the drafting of a patent application.

Additional information may be required to enable the patent review committee to fully understand the invention or to determine if the invention falls within the business plan or goals of the company.

The goal of a patentability search is to determine if the invention might be entitled to patent protection. In doing the search, one tries to determine if the invention has been previously patented or publicly disclosed or if the novel features of the invention were known in related fields of endeavor such that a person skilled in the technology would find the features obvious to incorporate into the other known structures of the invention. If references, articles or other patents are not found in this regard, the invention may be entitled to patent protection. “May be” protected is noted because patent searching is part science and part art. It is always possible that the patent examiner searching the same invention may search other areas of technology and uncover more pertinent references, leading the examiner to a contrary conclusion.

There are numerous resources to aid in patent searching. Some resources include:

• The search page at the U.S. Patent and Trademark Office website – www.uspto.gov

• Google patents

• Various internet search engines

• Subscription or fee-based services, such as Delphion, Orbit, Narvak, etc.

• Independent contractors specializing in patent searching

If the patent search has determined that the invention is entitled to patent protection, the next decision is the type of patent protection that should be sought, utility or design, provisional or non-provisional.

This decision is the beginning of a patent timeline that could span more than 20 years. This timeline follows the outline generally set out below:

• Receive Invention Disclosure Form

• Conduct patentability search

• Proceed with Provisional Patent Application (optional)

• Within 12 months after filing of Provisional Patent Application

- Proceed with U.S. Non-provisional Patent Application

- Proceed with Foreign Patent Applications, determine whether to

- File as International (PCT) Application

- File as direct foreign national patent applications

- Can be done now or approximately 18 months after

PCT filing date if PCT route is followed

• Approximately 24-60 months after filing of the nonprovisional/foreign application

- Respond to Office Actions from patenting authorities

• Approximately 30-60 months after filing

- Decision to grant or deny by patenting authority

- Possible appeal if grant of patent is denied

• Issuance of patent upon payment of granting fees

• Maintenance fees and foreign annuities due over life of granted/issued patent

• Patent terminated 20 years after earliest filing date (subject to Patent Term Adjustment by the U.S. Patent and Trademark Office)

The above timeline is a general guide to the patent process, but the timeline and its various steps can vary depending on numerous circumstances and decisions made over the life of the patent application and issued patent. Because expenses are incurred along the way, each milestone offers a good gate-keeping point to review and determine whether the patent remains of interest to the company, based on the business of the company or the strategic value of the patent itself.

To find out more please access our IP Primer page.

This document is not intended to create an attorney-client relationship. You should not act or rely on any information in this document without first seeking legal advice. This material is intended for general information purposes only and does not constitute legal advice. If you have any specific questions on any legal matter, you should consult a professional legal services provider.

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Useful Resources
The IP primer provides an overview of the complexities of IP law, is an excellent resource for both new and experienced professionals and available in a number of languages.
A collection of recent and significant publications by the Experts at BGL.
USPTO is the federal agency for granting U.S. patents and registering trademarks.
Administers the U.S. copyright law and advises Congress and other government agencies regarding copyright issues.
WIPO is the global forum for intellectual property services, policy, information and cooperation.
INTA is a global association of trademark owners and professionals.
The Intellectual Property Owners Association is a trade association for owners of patents, trademarks, copyrights and trade secrets.
The AILPA is an innovator, powerful advocate, and visible global leader in intellectual property.
AIPPI is an international organization comprised of business firms, executives, lawyers, educators, patent and trademark agents, intellectual property owners, and other persons interested in the worldwide protection of patents, designs, trademarks, trade names, know how, goodwill, copyright, and other intellectual property rights and the elimination of unfair trade practices.
BIO is the world's largest trade association representing biotechnology companies, academic institutions, state biotechnology centers and related organizations across the United States and in more than 30 other nations.
Supports innovation, competitiveness and economic growth across Europe through a commitment to high quality and efficient services delivered under the European Patent Convention.
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