A Compendium on Patenting

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Editor’s Note: If you are interested in taking up Intellectual Property and Patenting as a career in USA, you need to clear the USPTO Patent Bar exam. Syam Anand’s book titled “Index Cards for USPTO Patent Bar Exam and Quick References on US Patent Process” is available on Amazon (https://goo.gl/dMKSvq) which is a set of more than 2000 index cards that he used to ace the USPTO Patent Bar Examination. He has been a regular author on ClubSciWri and has guided several PhD Career Support Group members on issues of patenting.  His regular discussions led him to compile a brief overview and a simplified set of FAQs to help novices understand the patenting process in US and the role of a USPTO agent in helping the inventors understand the legal language of ownership, i.e. Patenting.  

Brief Overview of the Patenting Process in USA

The U.S. Patent and Trademark Office (USPTO) offers different application routes to meet varied goals of inventors and owners of inventions. These are:

  • Provisional Applications
  • Utility Applications (Non-provisional Application)
  • Continuing Applications
    • Divisional Application
    • Continuation Application
    • Continuation-In-Part Application
  • Design Applications (only for ornamental design of a functional item)
  • Plant Applications (only for plants)
  • PCT International Applications

Inventor or owner or assignee of invention can apply. Selecting the right application route is critical for securing the right kind of patent protection for your intellectual property. The following is a brief description of the various routes available and their approximate costs.

Provisional Application

  • Lower cost to file.
  • USPTO filing fee of $260 for a large entity and $130 for a small entity.
  • Patent attorney/agent fees range from $1,500-$2,000 depending on the complexity of the invention.
  • Gives an early effective filing date. Establishing an early effective filing date is critical since this determines what references and other disclosures qualify as prior art.
  • Claims covering the invention are not required.
  • Not examined or published.

Utility (Non-provisional) Application

  • The “actual” patent application filed by the applicant that gets examined.
  • USPTO filing fee of $1600 for a large entity and $730 for a small entity.
  • Patent attorney/agent fees range from $3,000-$5000 depending on the complexity of the invention.
  • Claims priority to the provisional application. Must be filed within one year of the provisional application filing date.
  • Requires the presence of claims covering the invention.
  • Gets published after 18 months from the priority date.

 

Divisional Application

  • Pursues unelected claims of a parent application as a result of USPTO Restriction Requirement.
  • USPTO filing fee of $1600 for a large entity and $730 for a small entity.
  • Patent attorney/agent fees from $1000-2000 depending on the complexity of the invention.
  • Claims priority to the parent application. Must be filed before the parent application abandons or issues.

Continuation Application

  • A continuation application pursuing unclaimed subject matter of the parent application.
  • USPTO filing fee of $1600 for a large entity and $730 for a small entity.
  • Patent attorney/agent fees from $1000-2000 depending on the complexity of the invention.
  • Claims priority to the parent application. Must be filed before the parent application abandons or issues.

Continuation-in-part Application

  • A continuation application filed by the applicant to pursue new matter that is not disclosed in the parent application. The new matter must be closely related to the subject matter disclosed in the parent application.
  • USPTO filing fee of $1600 for a large entity and $730 for a small entity.
  • Patent attorney/agent fees from $1000-3000 depending on the complexity of the invention.
  • Must be filed before the parent application abandons or issues.
  • Preserves priority for the old matter that was shared in the parent application.
  • The new matter gets the priority of the filing date of the continuation-in-part application.

PCT Application (also called “international application”)

  • International Application under the Patent Cooperation Treaty (PCT).
  • USPTO filing fee of $240 for a large entity and $120 for a small entity.
  • USPTO search fee of $2,080 for a large entity and $1,040 for a small entity.
  • USPTO examination fee of $760 for large entity and $380 for small entity.
  • Patent attorney/agent fees from $3,000-$5,000 depending on the complexity of the invention.
  • Standard one format, one language application that can be used as a basis for filing patents in more than 140 member countries of the PCT.
  • USPTO accepts PCT applications in English by a U.S. national or resident.
  • Applicant has 30 months from the effective filing date of the PCT application to enter individual countries and file national stage applications.

Patent prosecution is said to begin once a patent application is filed. The application is eventually taken up for examination. Effective communication with the patent office and with the examiner, with an understanding of the nuances of patent law and the patent language, assists in making prosecution a smooth process resulting in savings of time and money. Some of the prosecution steps that applications invariably go through are briefly described below:

Restriction Requirement

  • Examiner states there are multiple inventions in the patent application being examined.
  • Applicant must elect one of the inventions designated by the examiner. Non-elected inventions can be pursued in a divisional application.
  • No USPTO fees if filed within time period for reply, extensions of time available.
  • Patent attorney/agent fee range from $500-1000.

Non-final Office Action

  • This is the first communication from the Examiner regarding the claims. Examiner raises objections or rejections to claims in view of the prior art.
  • Applicant is required to provide detailed responses to overcome the objections/rejections raised by the examiner. This advances the prosecution towards allowance.
  • No USPTO fees if filed within time period for reply, extensions of time available.
  • Patent attorney/agent fees range from $750-$1500 depending upon complexity of response required to overcome objections and/or rejections stated by the examiner.

Final Office Action

  • Examiner may again raise objections or rejections to claims informing why the response to the non-final action does not place the application in condition for allowance.
  • Applicant is required to provide additional detailed responses to each and every objection and rejection raised by the examiner and advance the prosecution towards allowance.
  • No USPTO fees if filed within time period for reply, extensions of time available.
  • Patent attorney/agent fees range from $750-$1500 depending upon complexity of response required to overcome objections and/or rejections stated by the Examiner.
  • Response either places the application in condition for allowance or Applicant files a request for continued examination (RCE).

Notice of Allowance

  • Informs the applicant that the patent is ready for issue.
  • USPTO issue fee is $960 for large entity, $480 for small entity
  • Patent attorney/agent fees $500.
  • After the application grants, you get 20 years of patent term from the filing date.

Maintenance Fees

  • Fees associated with maintaining the patent in force after issuance, late payment due if payment within 6 months after fee is due
  • 1st fee (due at 3.5 year): $1600 for large entity, $800 for small entity
  • 2nd fee (due at 7.5 year): $3600 for large entity, $1800 for small entity
  • 3rd fee (due at 11.5 year): $7400 for large entity, $3700 for small entity

Glossary of important terms

Abandon                                  Applications are usually abandoned when responses that are due are not submitted in a timely fashion to the USPTO. Abandoned applications cannot mature into patents. Prosecution stops.

Allowance                                A notice of allowance from USPTO informs that the application meets all the requirements for a patent to be granted.

 

Applicant                                 Can be the inventor(s), owner of the invention or assignee of the rights of the invention.

 

Assignee                                  The person(s) who hold rights to the invention, for example, the employer of the inventor(s).

 

Election                                   Choosing one of the inventions in an application for prosecution as a result of restriction requirement by an examiner.

 

Effective filing date                  The earliest filing date that can be claimed for an application. The effective filing date may be (i) actual filing date of the application; (ii) the date of the earlier-filed application to which priority is claimed.

 

Extension                                 Formal requests for extensions of time for filing responses can be obtained for a fee. Cannot exceed more than 6 months.

 

Filing date                               The date when the application is submitted to USPTO.

 

Grant                                      Grant of the patent. This gives rights to an inventor “to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States” for a limited time in exchange for public disclosure of the invention when the patent is granted. A bond paper copy of the patent grant is ribboned, sealed, and mailed by USPTO.

 

New matter                              Subject matter not initially disclosed in the application. USPTO does not allow new matter to be added at any time during prosecution.

 

Objection/Rejection                 The examiner issues an office action objecting/rejecting the claims during prosecution, based on prior art. When the office action is issued, the objections/rejections have to be overcome in order to advance the prosecution. A critical and significant portion of patent prosecution.

 

Patent Agent                            A person who has passed the Patent Bar examination administered by USPTO for registration at the USPTO.

 

Prior Art                                 The universe of printed publications, disclosures, talks, and other information that are publically available.

 

Publication                              USPTO publishes all applications around 18 months. The contents of the application are publicly available after this. In certain cases, a request can be made to withhold from publication.

 

Response                                 Formal filing of communications with the USPTO within the required time periods. They have to fully meet the requirements of form and content. A critical and significant portion of patent prosecution.

 

Restriction requirement           Placed on an application when the examiner believes that there is more than one claimed invention in an application. The applicant has to elect one invention for the prosecution to progress.

 

Subject matter                         The subject to which the application and the invention is directed.

 

 

Frequently Asked Questions (FAQs)

What is a patent?

A patent is an exclusive right for a limited time for an invention.

What are the exclusive rights for?

The rights are excluding others from making, using, selling, offering for selling and importing the invention.

For how long is a patent valid?

Twenty years from the application filing date.

What is an invention?

An invention is a novel and non-obvious useful tangible solution to a problem. Notable exceptions are design patents that cover external appearance of objects.

What is novel?

In simple terms anything that is new, man-made, and does not exist previously and has not been disclosed before.

What is non-obvious?

In simple terms anything that is not an incremental improvement (i.e. obvious improvement) over previously known product or process.

Can I patent anything and everything that meet the criteria of utility, novelty and non-obviousness?

No, you cannot. There are country-specific rules on what is and what is not patentable.

Can I patent, if I publish?

In the US, you may, within one year of publishing and obtain rights in the US. In all other countries you loose your rights if you publish before submit a patent application.

Can I patent, if I disclose?

In the US, you may, within one year of disclosing your invention. In all other countries you loose your rights, if you disclose your invention before submitting a patent application.

What kinds of disclosures affect the prospects of patenting?

In general, any public disclosure as opposed to disclosure within a confidential meeting (for example lab meeting) or disclosures protected by non-disclosure agreements.

Do I have to file a patent to practice my invention?

No. You are not required to file a patent to practice your invention. But without patent protection, you risk your invention being copied by others.

Can a person or entity that has already obtained a patent on the same invention, stop me from practicing the invention?

Yes. A patent gives the owner of the patent, exclusive constitutionally bestowed rights to stop others from practicing the invention described in the patent. This falls under patent infringement.

I have an idea that could be patentable, what should I do first?

The first question to ask is, who owns the idea. An easy way to answer this question is to ask yourself, what are your obligations to your employer.

I work in a lab and my idea is related to the project I work on for my employer. Do I own the rights to the idea?

In general, no. Your employer owns the right to the idea. Contact your technology transfer office/center. They will guide you.

I work in a lab and my idea is independent of the project I work on for my employer. But I used materials and equipment in the lab for testing and perfecting my idea. Do I own the rights to the idea?

I work in a lab and my idea is independent of the project I work on for my employer. Also, I did not use materials or equipment from my employer and instead used my own funds for testing and perfecting my idea. Do I own the rights to the idea?

Yes.

My employer decided not to pursue my invention. Is this a dead end for my invention?

No. They could give you the ownership rights for the invention for free or a cost. They could also license for free or a cost. Where federal funding is involved, even the federal government can give you the rights for free or a fee.

What are the things to remember when deciding whether to patent an invention or not on my own?

Two things to contemplate are money and time. Obtaining a patent costs money in terms of filing fees, maintenance fees, and attorney fees. It is up to the inventor to evaluate the cost benefit of filing and maintaining a patent.

I am good at generating ideas but not good at perfecting them. Can I file a patent application for an imperfect idea?

In fact yes, if the idea is not completely abstract and can be described adequately to convincingly prove that it can work as described.

I am good at generating and testing ideas and even perfecting them. But I do not have the experience or inclination to manufacture or market my invention. Is this worthwhile to pursue a patent application?

Yes. Patents can be sold or licensed to others who are interested buyers. They are a form of intellectual property.

Can I patent an idea that is just an idea?
No. Ideas that do not describe an identifiable embodiment or do not have any functionality are not patentable.

Who can file a patent application?
Inventors, owners and individuals or organizations with sufficient proprietary interest in the invention can file a patent application for an invention.

When should I file a patent?
Usually when your invention is enabled and before you disclose your invention to public, for example through seminars or trade shows, or even before signing a potential license agreement with a third party.

How do I know that my invention is enabled?
In simple terms, your invention is enabled if it functions as described by you and extensive experimentation is not required to practice it.

Do I have to submit a working prototype of the invention when I am filing a patent application?
No.

I do not know how my invention works, but it works. In other words, I do not know the scientific principle that makes my invention work. Can I file a patent application for the said invention?
Yes.

Why should I file a patent application?
Once a patent is granted, its gives the owner of the patent, rights to exclude others from using/copying, selling, offering for sale and importing the invention from another country.

Why should I file a patent application if my employer owns the rights to my invention?
You may benefit from financial and professional incentives that many employers give for generating intellectual property that adds value to the employer.

My employer owns the invention I wish to patent. How should I go about filing a patent application for my invention?
Please contact your employers. They will guide you. In general, industries have patent liaisons or counsels and academic organizations have technology transfer experts who will guide you.

My employer does not own the invention I wish to patent. How should I go about filing a patent application for my invention?
You can file a patent application all by yourself (called pro se) or with the help of a professional who has knowledge about patent laws.

What kind of professional help should I seek for when I am filing a patent application myself?
Almost all countries have patent agents who are qualified to represent inventors and registered with the country-specific patent office. You may discuss your invention with patent agents or patent attorneys (who are also lawyers) after signing non-disclosure or confidentiality agreements with them.

Am I required to go through a patent agent to file a patent application?
No. In fact, you can file patent applications pro se, that is, by yourself. However, most patent offices recommend that prospective applicants retain the services of a registered patent attorney or patent agent to prepare and prosecute their applications.

Can I take the help of a patent agent in India for representing me at the United States Patent and Trademark Office (USPTO)?
No. Only candidates who pass the USPTO registration examination (also known as the patent bar exam) and registered at USPTO can represent inventors in the US. However, inventors may utilize the expertise of other individuals including patent professionals in other countries to prepare and submit applications. In this scenario, the inventor will be representing himself/herself at the USPTO. Similarly, only candidates who have passed the Indian Patent Agent examination and registered at the Indian patent office to practice Indian patent law can represent you at the Indian Patent Office.

How does the services of a patent agent help in the preparation and prosecution of applications at the USPTO?
When filing an application at a patent office, there are technical and legal requirements to be met. A patent is only as good as what is claimed and how it is described in a patent application. A strong patent protection requires good patent application drafting skills. A good patent helps to prevent others from designing around your invention and prevent others from entering the same market space. An experienced patent attorney or agent brings such skills in drafting patent applications.

In addition, the attorney/agent also helps in prosecuting the application before the patent office. Once an application is examined, the patent office sends out office actions- official communications to the inventor, and may reject or allow based on the merits of the patent application. The attorney/agent, on behalf of the inventor, can present arguments to meet the legal and technical thresholds set by the patent office and help in obtaining a patent. This requires an understanding of the patent law and claim language.

What are the contents of a patent application?
The main contents of a patent application are a written description of your invention called specification, drawings that help to describe the invention and specific claims that you seek exclusive protection for based on the specification. Among other things, it also contains information about the inventor, owner and representative of the invention.

How long does it take to file a patent application?
It takes anywhere from one week to more than a month to file a patent application. The main factor that determines the time taken is drafting a patent application, which usually depends on the nature of the invention. Complex inventions, such as inventions in biotechnology and life sciences take around 2-3 weeks to draft good patent application.

How long does it take to obtain a patent after filing an application?
In the US it may take from 1-3 years depending upon the area and the procedure for examination used. There are accelerated procedures available for an increased fee. In India it takes up to 8 years to obtain a patent.

Where do I file my patent?
You need to file patents in countries in which you wish for patent protection. Many inventors choose to file in United States because United States is one of the largest economies in the world. Other regions that people consider are Europe, Japan, China, Brazil, and India.

I am not a US citizen, but my invention was made in the US. Should I file for patent in the US or the country of my citizenship?
Any person can file for a patent in US. However, if the invention was made in US and the inventor wants to first file a patent outside US, the inventor has to apply for a foreign filing license.

I do not want to obtain a foreign filing license for my invention. What are the consequences?
Not getting a license and still filing outside will cost US patent.

What are the typical initial costs involved in filing a patent application in the US?

Preparing a US patent application can cost anywhere from 1500-10000 US$ depending on nature, complexity of patent application, type of patent application and involvement and nature of patent agent (individual, small firm, big firm) or doing it pro se.

What are the typical initial costs involved in filing a patent application in India?

Preparing an Indian patent application can cost anywhere from 50,000 to 1,00,000 INR depending on nature, complexity of patent application, type of patent application and involvement and nature of patent agent (individual, small firm, big firm) or doing it pro se.

How does one choose a patent agent/firm?

The best way is to get referred to by someone who has used the agent/firm before. If not, look for registered patent attorneys and agents listed in the patent office one wishes to file. Other factors to consider are firm’s expertise with respect to the nature of invention (biology, chemistry, material science, computer software etc), experience, and affordability. Patent firms usually employ patent agents or technical specialists who assist patent agents and they cover most subject areas.

What are the typical steps involved in filing a patent application with the help of a patent agent or patent firm?

Submit an invention disclosure to the agent/firm that describes the invention. This is typically followed by an interview with the agent/firm. The agent/firm may request additional information during the drafting process. Professional drawings also may be required. The completed application is filed by the agent/firm on the behalf of inventor/owner of the invention to the patent office.

Can I obtain an international patent for my invention?

No. There is no such thing as an international patent. Individual countries grant patents.

How can I get patent protection in many countries?
There are two options.
1. One can file separate patent applications in the selected countries.
2. One can file an application under the Patent Cooperation Treaty (PCT). The PCT application acts a common patent application, and can be used as a basis to file country specific patent applications. These country-specific applications are called national stage applications.

What are the advantages of filing of a PCT application or patent applications in several different countries myself versus using a patent agent?

Experienced patent agents/firms will be familiar working with associates/firms in different countries. Without professional assistance, missed deadlines and incomplete responses to office actions originating from many countries at regular intervals may be become overwhelming and more expensive. Keep in mind that in addition to the technical and legal requirements there are language requirements in the different countries.

Can I use a patent agent/firm in US (or in India) for handling the filing of PCT applications?

Yes. PCT applications can be filed in any country that is signatory to the Patent Cooperation Treaty. Once the application enters the national stage in different countries, the primary agent/firm will coordinate with the foreign agents/firms who are registered to practice in the respective countries.

Are the contents of an application held in confidence by a patent agent?

Yes. It is a patent office requirement and there are penalties for not following this.

Can my patent agent disclose the contents of my application to a third party without my permission even if I do not sign a confidentiality or non-disclosure agreement?

No

My patent agent/firm is asking for a power of attorney for filing my application with the patent office. Should I give one?

Yes. The agent/firm requires a recorded power of attorney to communicate with the patent office on your behalf.

Are the contents of an application held in confidence by patent offices?

Yes, until the application gets published by the patent office after a certain period of time after filing of the application. This is 18 months in the USPTO.

Can I prevent publication? How long does it protect against disclosure?

Yes. You may submit a non-publication request in the USPTO. It protects against disclosure until the patent is granted.

What is patent infringement?

Making, using, selling, offering for selling and importing the invention to which one does not hold patent rights is considered infringement.

I have a US patent for an invention. I see that the product covered under the granted patent is sold commercially in India. Do I have the rights to stop this commercial activity?

No. Patents rights are only for the region/country that granted the patent.

I have a US patent for an invention. I see that the product covered under the granted patent is sold commercially in the US. Do I have the rights to stop this commercial activity?

Yes.

I have filed a US patent application for an invention. I see that the product described in the patent application is sold commercially in the US. Do I have the rights to stop this commercial activity?

No. A patent application is just a patent application. You have no rights until it is granted.

I have filed a PCT application for an invention made in the US. I see that the product described in the patent application is sold commercially in India and USA. Do I have the rights to stop this commercial activity?

No. A patent application is just a patent application. You have no rights until it is granted.

 

 

 

Syam

Authored by Dr Syam Anand, PhD (Indian Institute of Science, IISc; Post-Doctoral research, University of Pittsburgh School of Medicine; Faculty, University of Pittsburgh School of Medicine, Founder and US Patent Agent, Mainline Intellectual Property LLC, Ardmore, Philadelphia USA). Syam has over 20 years experience in diverse areas of Science with domain knowledge in Life Sciences and Intellectual Property. Dr. Anand is also an inventor and budding entrepreneur. A rationalist, Dr. Anand enjoys science at all levels and advocates the use of scientific methods for answering all questions and solving all problems and make common people curious and interested in understanding their worlds.

https://www.linkedin.com/in/syamprasadanand

 

For more info, get Syam’s book from Amazon https://goo.gl/dMKSvq

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