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Key steps in the United States patent process:
Invention - A good research notebook is critical to recording the date of conception and reduction to practice. Publication Before - Public disclosure prior to filing a patent results in the immediate loss of foreign patent rights. If you plan to file for patent protection, a US patent application must be filed within one year of the publication date. Provisional Application - Provisional applications are optional and expire after one year. They may be used to establish a filing date and are not normally reviewed by the US Patent and Trademark Office (USPTO). Non-Provisional Application - Must be filed within one year after a provisional filing date. This application may also be filed without filing a provisional application. Publication After - Both US and foreign patent rights are protected if public disclosure occurs after a provisional or non-provisional filing. Patent Prosecution - A USPTO examiner reviews non-provisional applications. Patentability and claim scope are negotiated; this may take three or more years. Improvements on the invention may be filed as continuation or continuation-in-part (CIP) while the patent is in prosecution. The non-provisional application is published (i.e. becomes public) 18 months after the first filing date, regardless of whether the first filing was provisional or non-provisional. Patent Issued - Patent exclusivity starts when patent is issued. Typographical, inventorship, and other corrections may be requested after the patent is issued. The USPTO issues a certificate of correction, but the application itself is not reissued. Patent Maintenance - Patent maintenance fees are paid to the USPTO in years three, seven, and eleven. Patent Expires - Expiration is 20 years after the non-provisional filing date. After this time, anyone is allowed to practice the invention.
What is a Patent?
An official government document that grants to the assignee (owner of the patent) a right to exclusivity in making, using, selling and offering for sale the invention for up to 20 years from the date of filing with the USPTO. When there is more than one assignee, each has a non-exclusive right to the invention. Patents may be licensed by the assignee to another party. To provide a clear definition of what is covered in a patent, CLAIMS are included in all patents. To ensure that others can use the invention after the patent expires an ENABLING DISCLOSURE is required. An Enabling Disclosure is a sufficiently written description within the patent to enable a Person Having Ordinary Skill in the Art (PHOSITA) to make and use the full breadth of the invention. Deceptive acts during patent prosecution will invalidate a patent in its entirety.
How Is the U.S. Patent Process Different from Other Countries?
In other countries, the first independent inventor to file a patent application is entitled to patent coverage. In the U.S., the first to invent is entitled to a patent. In other countries, publishing an invention before filing a patent application prohibits patent coverage. In the U.S., you get a one year grace period to file.
What Is Patent Prosecution?
The USPTO reviews the patent application for form and content. The USPTO accepts or rejects claims and suggests changes within the application. The applicant negotiates with the USPTO for maximum claim scope and amends the application accordingly. If a patent application contains two or more separate inventions, the Patent Examiner may require the applicant to pick (elect) one. The applicant may divide the patent application into two or more separate applications (divisionals). If the applicant improves on the invention during prosecution and wants to file a patent application covering what has been filed and also the improvement, the applicant may file a continuation-in-part.
What are the main questions in determining if you can get a patent on an invention?
Is the invention useful? (35 U.S.C. s101 - Utility) Does the invention fit into one of the proper categories? (i.e. a composition of matter or process) Will the invention work for its intended purpose? If software, does it perform pre/post computer process activity? Is the invention new? (35 U.S.C. s102 - Anticipation) Has the invention been disclosed in its entirety by another party prior to the date of invention? Has the invention been disclosed in its entirety more than one year prior to the filing date of the patent application? Is the invention non-obvious? (35 U.S.C. s103 - Obviousness) Would the invention have been obvious to a PHOSITA? Is the invention fully disclosed and properly claimed in the patent application? (35 U.S.C. s112 - Adequate Disclosure/Claims) Are the claims supported by an Enabling Disclosure within the patent application? Are the claims written clearly enough for a phosita to understand them?
What Are Patent Claims?
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Claims are precise sentences that define the scope of patent coverage. Most claims are either "independent" or "dependent". Independent claims stand on their own (Example: Claim 1) Dependent claims depend on an earlier claim (Example: Claims 2 and 3) Dependent claims are always more narrow in scope than the independent claims they rely on (as depicted in the figure). |
A method for collecting string around a spool, which comprises: (a) guiding a string around a spool; and (b) rotating the spool.
The method of Claim 1 further comprising mounting the spool on a post.
The method of Claim 2 further comprising said post being up to 3 inches in length.
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