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What is the Patent Process: A Deep Dive

Every product starts out as an idea. As innovation continues, it's the responsibility of the inventor to protect that idea, as you go from prototype all the way through high volume manufacturing. Understanding the patent laws and processes is a first step to making sure you protect your intellectual property and products.

 

In September 2011, Congress passed patent reform legislation. Under the old law, the USPTO awarded a patent to the first inventor. One of the most significant changes relates to patentable inventions claimed by more than one applicant. Under the new law, referred to as the America Invents Act or AIA, the USPTO will issue a patent to the first inventor to file an application. This change in the law places a premium on promptly filing an application with the USPTO.

 

As discussed in Section III, the patent process itself begins with the capturing of the idea of the invention. In this regard, a company should have in place a formal mechanism by which inventions are captured and reported to personnel responsible for handling of inventions. A company should capture the invention via an Invention Disclosure Form. All employees, regardless of job title, should be strongly encouraged to fill out and submit invention disclosure forms. A culture of ingenuity creates a company that is fun to work for and always moving forward, and therefore positioned to take advantage of opportunities as they present themselves and to withstand business challenges.

 

A properly designed Invention Disclosure Form achieves two primary purposes. First, it memorializes the details of the invention. Second, it collects data relating the conception and reduction to practice of the invention. Both of these features serve a secondary purpose. In one aspect, they allow the patent review committee of the company to understand the invention and formulate a position on whether the invention warrants patent protection. (See Section 3 with regard to corporate policies and procedures in determining whether patent protection should be sought.) In another aspect, the Invention Disclosure Form provides the patent attorney drafting the patent application with information that allows him or her to quickly discern the nature of the invention, to determine if there are facts that should be investigated to determine if patent protection is barred, and to efficiently draft the application. A sample Invention Disclosure Form is provided at the end of Section III.

 

Under the newly created patent reform, even if your company was the first to invent something, another party may be entitled to a patent if it was the first to file. Further, as noted briefly above, certain factual scenarios will prevent the patenting of an invention.  For example, if the invention was publicly disclosed more than a year before the filing of your patent application, patenting of the invention will be barred. Similarly, if the invention was offered for sale more than a year before the application is filed, the invention will also be barred. Other situations exist as well, but these are the two most common.

 

The new patent laws provide a safe harbor for situations where the invention was in the public domain less than one year before filing if these acts were by or through the inventor. However, an earlier filing third party will prevail if they file first.

 

Once the invention is captured, the next step is for the company’s patent review committee to determine if the invention warrants further action. This further action may take various forms, such as:

  • A request for additional information,
  • A patentability search, or
  • The drafting of a patent application.

 

Additional information may be required to enable the patent review committee to fully understand the invention or to determine if the invention falls within the business plan or goals of the company.

 

The goal of a patentability search is to determine if the invention might be entitled to patent protection. In doing the search, one tries to determine if the invention has been previously patented or publicly disclosed or if the novel features of the invention were known in related fields of endeavor such that a person skilled in the technology would find the features obvious to incorporate into the other known structures of the invention.  If references, articles or other patents are not found in this regard, the invention may be entitled to patent protection. “May be” protected is noted because patent searching is part science and part art. It is always possible that the patent examiner or one challenging a patent searching for the same invention may search other areas of technology and uncover more pertinent references, leading the examiner to a contrary conclusion.

 

There are numerous resources to aid in patent searching. Some resources include:

  • The search page at the U.S. Patent and Trademark Office website
  • Google “Patents”
  • Various internet search engines
  • Subscription or fee-based services, such as Delphion, Orbit, Narvak, etc.
  • Independent contractors specializing in patent searching

 

If the patentability search has determined that the invention is entitled to patent protection, the next decision is the type of patent protection that should be sought, utility or design, provisional or non-provisional. This decision is the beginning of a patent timeline that could span more than 20 years. This timeline follows the outline generally set out below and set out in more detail in the flowchart below:

  • Receive Invention Disclosure Form
  • Conduct patentability search
  • Proceed with Provisional Patent Application (optional)
  • Within 12 months after filing of Provisional Patent Application

-  Proceed with U.S. Non-provisional Patent Application

-  Proceed with Foreign Patent Applications, determine whether to

-  File as International (PCT) Application

-  File as direct foreign national patent applications

-  Can be done immediately or approximately 18 months after PCT filing date if PCT route is followed

  • Approximately 24-60 months after filing of the non-provisional/foreign application

-  Respond to Office Actions from patenting authorities

  • Approximately 30-60 months after filing

-  Decision to grant or deny by patenting authority

-  Possible appeal if grant of patent is denied

  • Issuance of patent upon payment of granting fees
  • Maintenance fees and foreign annuities due over life of granted/issued patent
  • Patent terminated 20 years after earliest filing date (subject to Patent Term Adjustment by the U.S. Patent and Trademark Office)

 

The above timeline is a general guide to the patent process, but the timeline and its various steps can vary depending on numerous circumstances and decisions made over the life of the patent application and issued patent. Because expenses are incurred along the way, each milestone offers a good gate-keeping point to review and determine whether the patent remains of interest to the company, based on the business of the company or the strategic value of the patent itself.

 

For more information, visit the Patent Law section of our Industry Resources page.

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If you have any questions concerning these or other patent issues, please contact Joe Hetz at jhetz@brinksgilson.com

Joe Hetz has over 23 years of experience as a patent attorney and has prosecuted over 3,500 patent applications. Joe has represented clients of all sizes, from Fortune 500 companies to start-ups, and is known for his creative, value-added approach to helping clients develop portfolios that can be monetized or otherwise used to satisfy strategic needs. His patents have gained national media attention for their broad scope and have generated millions of dollars in licensing fees. Joe is a shareholder at Brinks Gilson & Lione, an IP law boutique that’s been around for over 100 years. 
 

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