- What is a patent?
- What is patent prosecution?
- Are there different types of patents?
- What is prior art?
- What is a provisional application?
- What is a non-provisional application?
- What is the duration of a U.S. patent?
- May patent rights be transferred?
- Who may obtain a patent?
- What is meant by the phrase "Patent Pending"?
- What is the applicable time period for filing a patent application?
- What is a PCT application?
- What is a foreign national phase?
- What is a Paris Convention filing?
- What is the difference between a registered patent attorney or agent and an attorney not registered before the USPTO?
- Is it required that I reside in California, or even in the United States, in order to retain the services of the Crandall Patent Group, LLC?
A patent is a grant of a property right by a government that enables the patentees to exclude others from making, using, selling, importing or offering an invention for sale within the sovereign boundaries of the granting jurisdiction for a fixed period of time. In so much as an issued patent is jurisdiction specific, applicants seeking to protect their inventions in multiple jurisdictions may need to file for patent protection in more than one country.
A patent application must first be examined by the patent office of the country in which it is filed before it will be deemed to be in a condition for allowance and before any patent will issue from the filed application. More often than not, an application will need to be “prosecuted” before the applicable patent office, which means that the applicants, or a representative thereof, will need to present formal arguments to the patent office, and/or present formal amendments to the application, so as to convince the patent office that the application should be allowed. As a result, the importance of retaining a knowledgeable and experienced patent professional cannot be overstated, especially when an invention has substantial commercial value.
In the U.S., there are three main patent categories:
(1) Utility patents are directed to new and useful processes, machines, manufactures, or compositions of matter;
(2) Design patents are directed to new, original and ornamental designs for articles of manufacture, and only protect the illustrated ornamentations of the described articles;
(3) Plant patents are directed to new and distinct plant varieties that have been successfully reproduced asexually.
To be eligible for patent protection, an invention must be both new and non-obvious in view of information that was previously accessible to the public. Such publicly accessible information is considered to be “prior art”, and may be used by a patent office to reject a patent application. It is noted that the patent prosecution process generally involves the presentation of formal arguments and/or amendments so as to distinguish the claimed invention from the prior art cited by the examining authority.
A provisional application is a relatively inexpensive U.S. patent application that expires after one year of the filing date thereof. A provisional application is not examined by the United States Patent and Trademark Office (USPTO), and cannot issue as a U.S. patent. However, filing a provisional application serves to establish an official filing date for all of the information disclosed therein. In this manner, a provisional application may be utilized to establish a priority filing date that may be claimed by a subsequently filed non-provisional application such that any art that became publicly available after the priority date may not be cited against the non-provisional application during the prosecution stage.
A non-provisional application is a U.S. patent application that is examined by the USPTO, and which can ultimately issue as a patent. Once filed, no new matter may be added to the non-provisional application, although a continuation-in-part (CIP) application may be filed to add additional material while preventing a parent application from becoming prior art.
Presently, a design patent is valid for a term of 14 years from the date of its issuance. Utility and plant patents generally have a term measured by the longer of 17 years from their respective dates of issuance or 20 years from their earliest U.S. non-provisional filing dates.
Patent rights may be, and often are, transferred between various parties. Oftentimes, an inventor is under contract, such as a result of an executed employment agreement, to assign all patent rights manifesting from the inventor's employment activities to the employer. Additionally, inventors/assignees may seek to financially profit from a patented technology by granting licenses, whether exclusive or non-exclusive, such that the licensees may practice the technology.
In the U.S., a party with a legitimate legal interest in the invention, such as an inventor, assignee or licensee, may file a patent application, although the patent must be applied for in the name of the actual inventor. Alternatively, in most foreign countries, an assignee can apply for patent protection in its own name.
After a patent application has been filed with the USPTO, the invention may be referred to (such as in commercial advertisements) as having a "patent pending" status, and physical embodiments of the invention may be labeled with the notice "patent pending", so as to inform the public and potential infringers that a patent application for the invention is on file at the USPTO.
Generally, in the U.S., a patent application must be filed within one year from the first public disclosure of the invention. Such a public disclosure may include, for example, an offer to sell a product embodying the invention, or a publication describing the invention. In many foreign countries, any public disclosure of the invention prior to filing the patent application will cause the right to apply for a patent to be forfeited, although certain jurisdictions do provide a grace period of between 6 and 12 months, and the definition of what constitutes a "public disclosure" may change from country to country. Moreover, if a U.S. patent application is filed, a foreign patent application may be filed after obtaining a foreign filing license from the USPTO, or after 6 months from the filing date of the U.S. patent application.
A PCT application is an international application filed under the Patent Cooperation Treaty (PCT). It allows an applicant to designate PCT member nations, while allowing the applicant to evaluate the potential economic value of the invention before incurring patent related costs in foreign countries. Moreover, a PCT application can provide an applicant with an additional 18 months in which to file in designated foreign patent offices.
A foreign national phase involves the filing of a patent application in a specific foreign patent office. For example, an applicant may file a PCT application, and then have the PCT application “enter the national stage” of a designated foreign jurisdiction upon deciding to pursue patent protection in that country. Alternatively, rather than first filing a PCT application, an applicant may choose to file a patent application directly in an individual foreign country.
The International Convention for the Protection of Industrial Property, which is generally referred to as the “Paris Convention”, was an international treaty formed in Paris in 1883. The majority of world’s industrialized nations are parties to this treaty, which has been revised many times since its original inception. As a result of the adoption of this international treaty, if a patent application is filed in any member jurisdiction (such as in the U.S.), a corresponding application may be filed in any other member jurisdiction within one year of the earliest filing date (6 months for design applications) such that the benefit of the earlier filing date may be claimed in the subsequently filed application. In this manner, the subsequently filed application will be entitled to the earlier filing date for purposes of overcoming prior art.
Only registered patent attorneys and agents may practice before the USPTO on patent matters. An attorney who is not registered with the USPTO is generally licensed to practice law in a particular state (e.g., in the jurisdiction of California), but is not permitted by the USPTO to engage in federal patent prosecution. In order to become registered with the USPTO, an attorney or agent must demonstrate that he or she possesses a requisite technical background in science and engineering, as well as pass a moral character investigation and a rigorous examination relating to federal patent laws, regulations and examination procedures.
No. Patent prosecution falls under the jurisdiction of the federal government. This means that the Crandall Patent Group, LLC, is capable of representing clients residing in other states or foreign jurisdictions. Moreover, modern communications technology has progressed to the point that even local clients rarely meet with their patent counsel on a regular basis. Indeed, many patent applicants now have the opportunity of seeking out patent counsel in other states because most communication occurs via phone or e-mail. Furthermore, as an international law firm, we are able to work with attorneys in many different jurisdictions to protect our clients’ global interests.