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Understanding the patent landscape: An inside look

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Patent Office
File early—the USPTO is extremely busy reviewing more than 500,000 patent applications it receives each year.

A patent is a type of intellectual property which protects any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof. A claim cannot be patented if it was previously “patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.” In addition, a patent will not be granted if “the claimed invention was described in a patent issued, or in an application for patent published or deemed published.” See AIA 35 U.S.C. 102(a) and (b).

A patent does not protect laws of nature, natural phenomena, and abstract ideas (known as “judicially-recognized exceptions”) because they are the basic tools of scientific and technological work. Nor does a patent protect mere ideas or suggestions. Patents get filed with the United States Patent and Trademark Office (USPTO). There is significant debate on what is patentable subject matter.

A patent is not a trademark, nor is it a copyright. A trademark/service mark is a type of intellectual property that protects any word, phrase, symbol, slogan and/or design that identifies and distinguishes the source of the goods and/or services of one owner from the goods and/or services of others in the same industry. Federally-registered trademarks last for 10-year renewable increments. A copyright protects original artistic or literary works like books, photos, music, fine arts, videos, films, and architecture. A copyright is registered with the U.S. Copyright Office and lasts for the life of the author plus 70 years. Durations vary where there are two or more authors or in cases of works for hire, anonymous works, and pseudonymous works.

Patents cover inventions which are sometimes included in corporate products. In addition, patents encourage technological and scientific progress, promote an understanding of intellectual property protection, strengthen the economy, and allow for new technologies to be developed and shared around the world.

Utility patents are the most common types of patents and protect processes, machines, and articles of manufacture or compositions of matter as described above. Design patents protect new, original, and ornamental characteristics of products. Plant patents protect the inventions and discoveries of new varieties of asexually produced plants.

Utility patents last 20 years from the effective date of filing the application. From the issue date, design patents run for either 14 years if filed before May 13, 2015 or 15 years if filed on or after May 13, 2015. Plant patents last 20 years from the date of which the application was filed. The grant of a U.S. patent is effective within the United States, U.S. territories, and U.S. possessions. In some instances, a patent’s term may be extended or adjusted.

How do you file a patent and protect it?

It is important to file a patent to protect your inventions. It is additionally important to see whether a patent application has already been filed or granted to another inventor on the invention prior to filing. The first inventor to file is entitled to the patent unless it is derived from another. Search for patents using available resources including the USPTO Patent Full-Text and Image Database (PatFT), USPTO Patent Application Full-Text and Image Database (AppFT), Global Dossier, Patent Application Information Retrieval (PAIR), Public Search Facility, Patent and Trademark Resource Centers (PTRCs), Patent Official Gazette, Common Citation Document (CCD), international patent offices, Published Sequences, and the Patent Assignment Search.

An inventor, a person who has been assigned the invention by the inventor, a legal representative or guardian of a deceased inventor, or joint inventor may apply for a patent. If  two or more inventors made the invention in the patent application, they may file for the patent as joint inventors.

To file a nonprovisional utility patent, complete an application form in the English language through the USPTO’s electronic filing system (EFS-Web), or by delivery by U.S. mail, or hand delivery in Alexandria, Virginia to the Director of the USPTO. A complete application includes the elements arranged in the following order:

  • Utility Patent Application Transmittal Form or Transmittal Letter
  • Appropriate Fees
  • Application Data Sheet (see 37 CFR §1.76)
  • Specification (with at least one claim)
  • Drawings (when necessary)
  • Executed Oath of Declaration
  • Nucleotide and Amino Acid Sequence Listing (when necessary)
  • Large Tables or Computer Listings (when necessary)

View the USPTO’s website for additional information about filing online including Prioritized Examination, Accelerated Examination, First Action Interview (“FAI”), Patent Prosecution Highway (“PPH”), and the Priority Document Exchange (“PDX”).

A provisional patent allows an inventor to file an application for a one-year grace period (under 35 U.S.C. 102(b)(1)) without a formal patent claim, oath or declaration, or information disclosure (prior art) statement. This allows the inventor to have an earlier effective filing date while also using the term “Patent Pending” in connection with the described invention. A completed provisional patent application must include the filing fee and the following information identified in a cover sheet:

  • The application as a provisional application for patent
  • The name(s) of all inventors
  • Inventor residence(s)
  • Title of the invention
  • Name and recognition number of attorney or agent and docket number (if applicable)
  • Correspondence address; and
  • Any U.S. Government agency that has a property interest in the application

The filing of provisional patents does not come without associated risks and the inventor should consult with an attorney.

The basic filing fee for a utility patent, design patent, or plant patent starts from a few hundred dollars (lower fees apply for small and micro entities); however, a number of factors go into the total cost of a patent. The USPTO has put together a fee schedule outlining fees for additional aspects including searches, examinations, post-allowances, extensions of time, maintenance, post-issuances, trial and appeals, petitions, services, and enrollments.

An applicant may check the status (pending, issued, or published) of a patent application via the USPTO’s retrieval and download system. In addition, the applicant may visit the Public PAIR (Patent Application Information Retrieval) system for documents and status of publicly available patents and applications (issued and published). Further, the applicant may visit the Private PAIR system for accessing real-time information on a pending patent application(s). With the Private PAIR, the individual must meet the following three requirements: (1) be a registered patent attorney/agent, independent inventor, or person granted limited recognition; (2) have a customer number, and (3) have a digital Public Key Infrastructure (“PKI”) certificate to secure the transmission of the application.

Understand that the USPTO is extremely busy reviewing more than 500,000 patent applications it receives each year.

Heather Bowen Heather Bowen is an intellectual property and licensing counsel in New York. She has protected intellectual property and licensing portfolios, negotiated and reviewed domestic licensing agreements, and strategically counseled internal legal, finance, sales, and marketing teams. She has continued to stay abreast of developments in intellectual property law through publications as well as her effective leadership and involvement in committees of the American Bar Association, the Hispanic National Bar Association, the International Trademark Association, and the New York Intellectual Property Law Association.