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Why Obtain a Patent?
Most inventors seek a patent to obtain the actual or potential commercial advantages inherent in being able to exclude others. Given the high cost of research and development, the opportunity to recoup these costs through commercial exploitation of the invention may be the primary justification for undertaking research in the first place.
In patent matters, we assist domestic clients in obtaining patents for their inventions in foreign countries through foreign counsel. We counsel clients on the advantage of filing a Patent Cooperation Treaty (PCT) application in lieu of filing national applications abroad. We then utilize foreign counsel to file national or national stage applications.
Likewise, we assist foreign inventors to file national or national stage applications in the United States.
Our assistance extends to both foreign utility patents and industrial designs, as well as U.S. utility patents and design patents.
What is a Patent?
A patent is an exclusive property right in an invention. Specifically, it confers the right to exclude others from making, using, offering for sale, selling, or importing the invention. Patents are of two general types, utility and design. A utility patent protects the functional aspects of an invention, and may be issued on any new or improved machine, material or process. A design patent protects only ornamental or non-functional aspects of an invention, and may be issued on any new design embodied in an article of manufacture.
Why file for a Patent?
Because a patent grants an exclusive right in an invention, persons interested in making, using, offering for sale, selling, or importing the invention must obtain the consent of the inventor. The inventor is then in a position to license or sell this exclusive right to others. Are there any limitations to patentability? It is important to note that there are certain statutory requirements to the issuance of a patent:
- No patents may issue on inventions that have been described in a printed publication, offered to the public or for sale, for more than a year.
- If the invention has been patented in a foreign country, it must not have been filed more than one year ago.
- Patents may only be issued to the inventor or inventors that created the invention.
- A patent must be non-obvious. This means that the invention or improvements must not be of a type that would be obvious to another person similarly skilled in the art of the invention.
- A utility patent must be useful.
Part 1: Patent search
The first step in the patenting process is to have a prior art search performed. Since a patent may not be obtained if it is anticipated by substantially similar inventions, it is important to clear the new invention first by searching for prior art in the records of the Patent Office. Prior art consists of patented inventions or filed applications in the same industrial class and subclass bearing a close structural, functional or design similarity to the claimed invention. Although the Patent Office does not require a prior art search as a prerequisite to filing, we strongly recommend a search to determine whether the invention may be patentable before filing a patent application.
Part 2: Patent filing
If the results of the prior art search are favorable, and there are no limitations to patentability, it would be appropriate to file a patent application. It is important to secure a filing date as soon as possible because a patent is issued only to the person who was first to file a patent application for an invention.
Part 3: Patent maintenance
Patents are subject to maintenance fees, which must be paid to maintain the patent in force. These fees are due 3 1/2, 7 1/2 and 11 1/2 years from the date of the original patent grant.
Design patents may be granted on a new, original, and ornamental design for an article of manufacture. The design patent protects only the ornamental design features of an article, not its functionality.
A utility patent protects the functional aspects of an invention, and may be issued on any new or improved machine, material or process classified as: Simple Mechanical Complex Mechanical Electrical Software.
Utility Patent: Provisional versus Non-Provisional Patent Application?
You can secure a filing date for a UTILITY PATENT by filing either a PROVISIONAL PATENT APPLICATION (PPA) or NON-PROVISIONAL APPLICATION (NPA). An NPA is examined on the merits and if the invention is patentable, will result in a patent registration. On the other hand, a PPA will not be examined on the merits and will NOT result in a patent registration. A PPA will abandon within one year. You can secure a filing date for a DESIGN PATENT by filing a Design Patent Application (DPA).
Why file a Provisional Patent Application?
A person wishing to secure a filing date in order to prove first invention may do so more quickly by filing a Provisional Patent Application (PPA). A PPA costs significantly less and need not satisfy the strict requirements of a NON-PROVISIONAL PATENT APPLICATION (NPA). Instead, the inventor need only provide sufficient disclosure of the invention to enable another person similarly skilled to make and use the invention. Also, a PPA gives an inventor one year to decide whether to file an NPA while still claim the filing date of their PPA as their invention date. A PPA cannot be filed for design patents.