Intellectual Property Law & Consumer Class Actions
A patent for an invention is the grant of a property right to the inventor, issued by the United States Patent and Trademark Office. Generally, the term of a new patent is 20 years from the date on which the application for the patent was filed in the United States or, in special cases, from the date an earlier related application was filed, subject to the payment of maintenance fees. U.S. patent grants are effective only within the United States, U.S. territories, and U.S. possessions. Under certain circumstances, patent term extensions or adjustments may be available.
A Patentability search (Novelty search) is optional, but highly recommended step to determine the state of the prior art. Helps determine if a patent application should be filed.
The application consists of the Specification, Claims, and Drawings. The purpose of the application is to set forth the invention clearly and with particularity so that the Patent Office can tell what the invention is.
After drafting the patent application, it is filed with the U.S. Patent and Trademark Office along with the appropriate filing fees.
The Patent Office receives the application and assigns it to a group of Examiners who constantly examine patent applications dealing with the same sort of invention. Upon receiving the patent application, the examining group queues it up behind the other pending patent applications. Once the application is taken up by an Examiner, the claims of the application will be searched to see if they would protect subject matter that has already been invented. This is a patent search performed by the Examiner, who then reviews the results of the search. After reviewing the patents, the Examiner communicates in writing to the inventor whether or not the application can issue as a patent. If it cannot, the Examiner explains why not in an Office Action.
Very few patent applications are allowed upon submission. Drawings commonly have errors, but are used for examination purposes. Sometimes, the Examiner finds the invention has been invented before and no patent will issue. Sometimes, the Examiner will find patents that are not quite the same as your invention, but when combined, yield the same invention that you have.
If the Examiner has not allowed the claims, you can respond in writing by amending the claims and/or indicating how the Examiner has misinterpreted or incorrectly applied the patents found or the laws applicable to patent applications.
The Examiner further examines the application in light of the amendments and/or remarks set forth in the Reply. If the Examiner is persuaded that the application should issue as a patent, a Notice of Allowance is sent to the inventor. If not, the Examiner issues a Final Office Action setting forth why a patent cannot issue.
The Examiner has determined that the claims are not patentable. You may appeal or re-file the application in order to pursue it further. However, due to recent changes in the law, if a patent issues in the future, the period during which it can be enforced is calculated from the date of filing of the first application and not the date of issue of the patent. The term of a patent is now 20 years from the date of initial filing.
The inventor can make a Reply after the Examiner has made a Final Rejection. Often, these Replies amend the application to conform with any requirements the application has made.
While an appeal can be made appealing the Final Rejection, inventors often either re-file the patent application or concede the Examiner's rejection(s) and let the application go abandoned.
The Examiner has determined that the application should issue as a patent. Formal drawings are usually submitted at this point. The issue fee must be paid for the patent to issue.
Upon receipt of these from the inventor, the Patent Office will proceed with issuance of the patent.
Application issues as a patent and (upon payment of maintenance fees) is enforceable for up to 20 years (utility patent) from the date of initial filing.
To maintain the patent as enforceable, maintenance fees are due at these times to prevent the patent from lapsing and becoming unenforceable. You generally cannot sue for infringement if the patent has lapsed.
By affording protection for inventors during the patent-enforcement period, society as a whole benefits from the disclosure of new and useful inventions. Having had exclusive rights to the invention for the period of the patent, anyone can practice the invention once it has expired.