A patent issued for an invention allows exclusive rights of the invention. In order to be eligible for a patent, the invention has to possess new characteristics and not be apparent for an average expertise. Patenting your invention prevents other people, your competitors, from producing, utilizing, selling or offering to sell the patented item/method within the boundaries of the country, or import it into the country. As the patent owner, you can dispose of your invention by selling the patent, patent right – entirely or partially, as well as license the use of it.
Patenting Process: The process begins with the filing of a patent application and ends with the rejection or issuance of a granted patent. The process starts as soon as an idea is conceived.
Conception of an Idea: The first thing to remember is that one cannot patent an idea. The idea or concept needs to be put together as an invention. The idea and invention together form what the law calls conception. The conception date is important since it can be utilized to argue against prior art cited by the US Patent and Trademark Office (USPTO).
If two or more patent applicants file separate patent applications at the Patent Office for the same invention, the Patent Office conducts what is called “interference.” The conception date is important when interference is initiated to prove which inventor was the first to create the invention. Interference is basically a mini-trial to determine which inventor invented first and is thus entitled to the patent. Like trials in court, evidence is what wins the day. Detailed records are evidence that the inventor was diligent in developing the invention. One need not have a prototype built in order to get a patent, but should be able to describe the invention with enough clarity so that someone who is technically skilled in the art can understand how to make and use the invention.
After conception of an idea and diligently recording it one should move further trying to finalize the invention. This process is called as reduction to practice. Reduction to practice, therefore, can occur through the creation of a prototype or the specific definition of the invention in writing in a filled patent application.
First to Invent and First to File: U.S. patent law stands apart from the rest of the world: it alone adheres to a “first-to-invent” system, which allows an inventor to assert first-inventor rights and claim priority back to the date when the invention was first conceived. Thus, in a priority contest between competing inventors, the inventors’ dates of conception and reduction-to-practice take precedence over their application filing dates. Almost every other country in the world has a patent system based on the “First-to-File” doctrine, in which the patent is granted to the inventor who is the first to file a patent application, regardless of the date of invention.
Patentability (Novelty or prior art) Search (Optional): Patentability searches are performed before applying for a patent to assure an invention is patentable. A patentability search examines granted and published applications of major patent offices as well as domain-relevant non-patent literature. A Patentability Search answers the following questions:
- Is my idea or invention novel?
- Has it been patented earlier or given the scope of patentability, is it worth the cost of filing a patent?
- Is it worth the effort and expense to fully develop and market your concept?
Patent Drafting and Filing the patent application
Filing a Provisional Patent Application: After the patent search stage if the applicant decides to move forward then applicant can either file a provisional or a non-provisional patent application. In situations where all the details of the invention are not available, applicant can consider filing a provisional patent application. The provisional patent application may include the basic idea of the invention. It is not required to provide the patent application according to the Patent Office patent application guidelines.
Filing a Non provisional Patent Application: In order for the patent prosecution process to begin, a non-provisional patent application must be filed within one year of filing a provisional application. A non provisional patent application is the application you file when you want the Patent Office to review the filing and proceed toward issuing a utility patent application. A complete patent application includes a specification describing the invention, including any necessary drawings, an oath by the inventors, claims legally defining the scope of the invention, and an appropriate filing fee. In case the non provisional patent application submitted is in complete, the applicant will receive either a Notice of Missing Parts or a Notice of Omitted Items. The Notice of Missing parts awards a filing date and explains what must be submitted and by when, and includes any fee (i.e., penalty) due for the privilege of this later filing. With respect to the Notice of Omitted Items, such a notice explains that you have referred to something in the application that was not included in the original filing.
Patent Publication: The U.S. Patent Office will treat any non-provisional patent application as confidential until the patent application is published. This usually happens 18 months after filing the application. The eighteen-month publication provisions apply to divisional, continuations, continuation in part, and international applications entering the national phase in the US. For a fee, the publication can be moved to either an earlier or later date depending on the desire of the inventor.
Non Publication Request: A non publication request prevents an application from being published until the application issues as a granted patent. An applicant can avoid publication by certifying in a formal non-publication request that it is not planning to file a parallel application in a foreign country that has an 18-month publication requirement. This is beneficial to an applicant because they are able to keep the information confidential if they don’t obtain a patent. If the applicant is confused between protecting the information as a trade secret or as a patent, and if a patent is ultimately not granted, the applicant can still keep the information as a trade secret. If a non-publication request is made and the applicant subsequently decides to file a parallel foreign application subject to an 18-month publication requirement, the applicant must notify the Patent Office within forty-five days after the date of foreign filing or risk abandonment of the application.
Patent Examination and Office Action:The examiner may first check the number of inventions claimed in the application. According to USPTO, there can only be one invention claimed in a single patent. If the examiner determines that there is more than one claimed invention in the application, the examiner will request the inventor to restrict the application to only one. The inventor may then file a separate (divisional or continuation or continuation in parts) application while still keeping the original filing date.
After resolving this, the examiner may review the application to determine if the claimed invention is patentable.
After the examiner has examined the application, examiner sends an Office Action to the applicant. The office action cites prior art and gives reasons why the examiner has allowed, or approved, the applicant’s claims, and/or rejected the claims. There are several types of Office actions: examiner’s amendments, priority actions, non-final Office actions, final Office actions, and suspension inquiry letters. The applicant must respond to each Office Action within 3 months from the Office Action date. 3 months extension can be granted by paying additional fee.
There can be a series of office actions before the examiner makes the rejections final. There is still an opportunity to amend and make changes. In order to continue examination of the application one can cancel claims, place claims in better condition for appeal, or amend the claims as per suggestion of the Examiner that would make a claim patentable.
Request for Continuing Examination: On receiving a final rejection the applicant may file a Request for Continuing Examination (RCE). This RCE will restart prosecution and the amended claims are examined just as if they were being presented for the first time in a newly filed application.
If you choose to have the allowed claims issue you can choose to file a Continuation or a Continuation in Part, which will allow for you to continue to try and persuade the patent examiner that certain claims are allowable. Both Continuations and Continuations in Part start a new application process from the beginning, as opposed to the RCE which continues forward on the same application.
Appeal: Along the way a decision can be made to appeal a Final Rejection by the examiner. Such an appeal goes to the Board of Patent Appeals (BPAI), and perhaps ultimately to the United States Court of Appeals for the Federal Circuit, or the United States District Court for the District of Columbia.
Allowance and Grant of Patent: After the examination of the application or at a later stage during the reconsideration of the application, if the patent application is found to be allowable, a Notice of Allowance is issued by the Patent Office to grant you a patent. Issue fees are drawn generally within three months of the Notice of Allowance. The issued fee must be paid after you get that Notice of Allowance and the patent will be published and issued several months later when it is printed with a patent number in the official gazette and published in the USPTO website.
Patent Term and fees: A granted patent will expire after 20 years of the filing date, unless it expires earlier due to a failure to pay fees or a declaration of invalidity by a court. After the patent expires, the invention is available to all. Design patents, unlike utility patents, have a term of 14 years from the date of issue. If the patent office takes longer than three years to examine and grant a patent, the term of the patent may be adjusted accordingly.
There are three patent maintenance fee payments that must be made during the life of your patent to keep it in force. Maintenance fees on utility patents in the United States are due 3½, 7½ and 11½ years after grant of the patent. No maintenance fees are due while an application is pending. Design patents and plant patents are not subject to maintenance fees at all.