An Invention Attorney, or Patent Attorney, is critical to get your idea off the ground and protect your rights. An Invention is any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof. An invention cannot be solely an abstract idea, law of nature, or natural phenomenon, however, one can receive patent protection on a new use for the same.

A patent application is a written description formally submitted to the patent office that sets out an invention. The written description of the invention allows others to make and use the invention. The written description also commonly includes drawings, block diagrams and charts that depict the invention. In filing for a patent, the inventor seeks a grant from the government for a limited monopoly for the right to exclude others from making, using, selling, importing, or offering for sale, the invention for a fixed time period.

The practice of patent prosecution is a very specialized area of law. It is one of only two areas of law where attorneys are allowed to advertise that they “specialize”; the other being admiralty law. In fact, patent law is so complex, it is the ONLY area of law that requires its practitioners to take and pass a separate, federally administered, Bar examination, called the Patent Bar. And there are good reasons for this requirement.

Getting a patent is, generally speaking, not a difficult endeavor-getting a patent that has value, however, requires skill and experience. The value of a patent depends on what is claimed in that patent. If the claims are extremely “narrow,” meaning very specific, the patent’s value is less than if they are very “broad,” or general. For example, a patent claiming a stool with four wooden legs and a wooden seat is too narrow. Anyone could make a stool with a number of legs other than four or from a material other than wood and not infringe your patent because you claimed exactly four legs and wood as the material. On the other hand, claiming “a surface supported by at least one element” would probably be too broad as this claim could read on many existing devices, not necessarily limited to stools. A skilled patent practitioner will take the time to survey what other similar inventions are already in the public domain and structure the claims to differentiate from other inventions, while simultaneously providing you with the broadest claim coverage possible.

Additionally, between case law decisions, the Manual of Patent Examining Procedure, the Code of Federal Regulations, and the United States Code, there are literally thousands of rules and regulations to be intimately aware of and to properly navigate when prosecuting a patent. The great majority of patent applications are initially rejected by the USPTO. A practitioner must stay aware of all rule changes and any changes in case law decisions to successfully overcome the grounds for rejection of the application. This knowledge requires practitioners to frequently read recent case law decisions and rule changes. Patent rights can be, and have been, won or lost on the turn of a single word in the patent application.

Lastly, attorneys are licensed. The sole reason for requiring a license to practice law is for regulatory purposes. If a non-attorney commits an act of deceit, dishonesty, or malpractice, there is no risk that his license might be revoked and his livelihood taken away. This is not so for an attorney. The rules in most states dictate that if an attorney commits an act of dishonesty, even if not pertaining to practicing law, for example selling his own land, or even if in a state other than the one he is licensed in, his license can be revoked. This extraordinary liability will ensure that an attorney always makes your matter a priority and will work his hardest to protect you, your property, and your rights.

Anyone, regardless of age, nationality, or any other characteristic, so long as the applicant is the true inventor.

An inventor must contribute to the conception of the invention. In arriving at … conception [the inventor] may consider and adopt ideas and materials derived from many sources … [such as] a suggestion from an employee, or hired consultant … so long as he maintains intellectual domination of the work of making the invention down to the successful testing, selecting or rejecting as he goes…even if such suggestion [or material] proves to be the key that unlocks his problem.” Morse v. Porter, 155 U.S.P.Q 280, 283 (Bd. Pat. Inter. 1965)

An invention must be novel and non-obvious. The novelty requirement is easily overcome. Novelty requires that the invention is different, no matter how slight, from what is already known to the public.

1. Conception of an invention;
2. The invention is reduced to writing but not yet filed;
3. Patent pending whereby the patent application is filed but not yet issued;
4. Patent issued;and
5. Patent expires.

Found at the end of US patents, patent claims define the meets and bounds of protection granted to the owner of the patent. Claims may be broad, intermediate or narrow. It is important for the inventor to articulate their goals so that the practitioner can draft claims to achieve the desired claim scope in conjunction in light of the known prior art. Claims that are broad should seek to cover both expected and unexpected equivalents. In contrast, claims that are narrow in scope may protect the precise commercial embodiment of the disclosed invention but may not be able to stop competitors from practicing a substantially similar product. In light of client goals, Practitioners commonly draft claims that gradually step from broad to narrow to cover the gambit of claim specificity.

Yes, one way that an inventor may seek patent protection on improvements to the original patent application may be made by way of filing a separate patent application, called a continuation-in-part (“CIP”). Once an application is filed, improvements or modifications must be made, if available, by way of a CIP or a new application. However, an applicant may not add additional material to the specification.

At the United States Patent and Trademark Office (USPTO):
According to 35 U.S.C. § 154, the patent term is 20 years from the filing date of the earliest U.S. application to which priority is claimed (excluding provisional applications). If a foreign priority is claimed, the relevant date is the actual U.S. filing date and not the foreign priority date (foreign priority). [35 U.S.C. § 119, see also MPEP § 213]. Similarly if the priority of a provisional application is claimed, the relevant date is the actual filing date of the (regular) application and not the provisional application date (Internal priority). [35 U.S.C. § 119(e), see also MPEP § 211.01(a)]. The patent term is calculated by adding twenty years to the date of the earliest related U.S. application (excluding provisional applications). [See “Calculating US Expiry Dates”, http://goo.gl/YNBa3i].

Patent term extensions or adjustments are possible if the USPTO fails to issue a patent within 3 years after the actual filing date of the application [35 U.S.C. § 154(b)(B), see also MPEP § 2710] and/or due to delays due to derivation proceedings, secrecy orders and appeals [35 U.S.C. § 154(b)(C), see also MPEP § 2710] for utility and plant patents issuing on applications filed on or after June 8, 1995.
The patent term can also be extended to take account of premarket regulatory review. [35 U.S.C. § 156, see also MPEP § 2750)].

At the European Patent Office (EPO):
According to Article 63 of the EPC, the term of a European patent “shall be 20 years from the date of filing of the application.” The relevant date is the actual filing date of the european application and not the priority date, if claimed (this is independent whether foreign or internal priority). No definition of how to compute the date of the start of the patent term and date of expiration (lapse) of the term is given in the EPC. [R.131 EPC defines the calculations of “periods” not “terms”.] Consequently, this is left to the contracting states to the EPC; some interpret the “from the date” that the day of filing is the first day of the patent term; in other contracting states, the patent term starts to run on the day following the day of filing. Some contracting states define the date of expiration as the last day of validity, for some other contracting states it is the first day of invalidity. Consequently, the date of lapse of the same European patent can differ by up to three days between the various contracting states.

A contracting state to the EPC can extend the patent term to take account of war or similar emergency conditions or to take account of administrative authorization procedure required before market authorization. [Article 63 of the EPC].

A utility patent protects the structure and function of the invention, whereas a design patent protects the ornamental appearance including the shape and configuration of the invention.

Yes. In fact, there are many instances where the appearance of the invention is as important as the inventive structure and function.

o, the inventor merely needs to have developed the invention enough in his or her head to describe in the patent application how to make and use the invention. You should have a good faith belief that it works. For example, you can’t patent a car that can fly to work in the morning unless you can explain in detail at least one way it could actually do so.

An improvement patent is an invention that is directed towards improving the existing state of the art. Improvement patents regularly provide a great strategic value. For example, consumers constantly expect the state of technology to advance. An improvement patent may be the key to improving the state of the technology or for providing your company with a competitive advantage. Improvement patents can be divided into addition inventions and substitution inventions. Addition inventions add features to the current state of the art. Cell phones that added cameras and music playback features is an example of addition inventions. Alternatively, substitution inventions replace features of the current state of the art. Inline skates, for example, virtually replaced the side-by-side configuration of roller skates.

The first step usually involves a patent search. A patent search is valuable tool for both the inventor and the patent practitioner in evaluating the financial risk of moving forward with a patent application. For the inventor, a patent search is a low cost method to determine whether the invention already exists and whether the attorney should proceed with drafting a patent application. Additionally, a patent search provides information that will help the patent attorney draft the patent application in a light that lends itself toward overcoming the discovered prior art. The second step is drafting a patent application. The third step involves prosecuting the application before the USPTO, and in many cases, prosecuting the patent before foreign patent offices.

Prior art is all information that has been made available to the public in any form that is relevant to determine the novelty and obviousness of the invention found in a patent application.

The US law permits inventors to file for patent protection within one year of their first publication, sale or offer for sale. However, foreign countries do not operate under this one-year grace period. Accordingly, should you desire to foreign file, you must file a patent application on the subject matter prior to revealing the details of your invention in order to preserve your patent rights in the invention. Subsequent to filing a US patent, the inventor must also file a foreign patent application within one year of the US filing date. Under the Patent Cooperation Treaty (PCT), applicants may file a single application that acts as a place holder. Specifically, filing a PCT application within the first year of the US filing date provides up to an additional 18 months to file individual patents in each foreign country that patent protection is desired.

There is an initial fee for filing the application. Should the patent issue, an issuance fee must also be paid. Three additional maintenance fees must be paid at 3.5, 7.5 and 11.5 years from the date that the patent issues. Please take a look at the current USPTO fee schedules or request additional information to determine the exact fees associated with your invention.

It is commonly misunderstood that a patent provides the right to practice the invention. Patents merely allow the patent owner to prevent others from practicing the invention. A competitor may hold what is known as a blocking patent that prevents an inventor from practicing his invention without infringing upon the competitors patent.

Patents are territorial. That is, a patent is only enforceable in the single country from which it has been issued. Because the economy has become so global and the economies of other countries are nearly as robust as ours, most United States inventors are interested in filing their patent applications in foreign countries. Unfortunately, foreign filing of patent applications requires the payment of government and the attorneys’ fees for each country, which comes at a hefty price tag.

Fortunately, there is a process that allows United States inventors to protect their foreign filing rights while delaying the need to pay these heavy fees. The process is performed under the Patent Cooperation Treaty (PCT). Once an applicant files an application under the PCT, the applicant then has a full 18 months before they have to make their decision as to which countries they are going to file in and, most importantly, pay the fees for doing so. The PCT application must be filed no later than the 12 month anniversary of the first US application. As a result, the PCT allows a US applicant a full 30 months from their first filing date before they have to incur the expenditure of the multiple foreign filings.

Another advantage is that the PCT application receives relatively quick examination. The applicant can choose from several international search authorities, all of them providing faster examination than the US patent office. The most expensive of the international search authorities is the European Union. Although it is expensive, it is highly recommended for those inventors wishing to file in the European Union because no further search is conducted once the application is nationalized (filed in Europe). In other words, if you are approved at the PCT stage, you will be approved in the EU later. A less expensive search authority is Korea. Although a decent search is done by the Korean searchers, a secondary search will be performed by each country once the application is moved into the nationalization stage. So a clean PCT report is still an uncertainty in terms of ultimately being granted a patent.

As an alternative to PCT filing, the applicant can take the patent application directly into the foreign countries and skip the PCT cost. The strategy works well if the inventor knows he is only interested in one or two countries and has a high confidence level that this patent will be allowed. In that case, there is no reason to delay.

In the end, foreign filing decisions must account for a number of factors and needs to be thought out so that it fits your budget and timing requirements. We do generally recommend selecting the European search authority.