Patents

A utility patent, may be granted for new and useful processes, machines, manufacturing, compositions of matter and business methods and improvements of the foregoing. Compositions of matter include chemicals, drugs and life forms.

A utility patent grants the patent owner the right, in the case of a product patent, to prevent others from making, using, selling and importing products that includes the invention and, in the case of a process patent, the right to prevent others from using a process and to import products which were made by the patented process. Owning a patent does not mean the owner can make a patented product or use the process covered by the patent because there may exist earlier patents that would be infringed by such activities, for example, if it is necessary for the newly patented invention to include features of the existing product, which are covered by an earlier patent. A “right to use” search should be conducted prior to investing significant capital to bring a product or process to market.

Not all utility inventions are patentable. Generally, in order to be patentable, an invention must be novel, unobvious and useful.

The United States Patent and Trademark Office keeps secret all information concerning pending design patent applications and utility patent applications filed before November 29, 2000. If a patent is not issued, the application is never available to the public from the USPTO unless it is referenced in another patent. All utility patent applications filed on or after November 29, 2000 are published with two exceptions – first, U.S. patent applications with no foreign counterpart re not published provided a request is made by the applicant and, second, if a patent is granted within 18 months of the application filing date, the application is not published.

United States utility patent applications are published 18 months after the earliest United States filing date or foreign priority date, whichever occurs first. An inventor can request that the application be published earlier. publication will not be required if the inventor states that he does not intend to appy for a patent in a foreign country.

A published utility patent application is accorded provisional rights to recover royalties from infringing parties who, with actual notice, use the claimed invention between the publication and grant dates, provided that substantially the same claims are contained in both the published application and the granted patent. In addition, published applications have the same prior art effect as an issued patent.

A provisional application provides the means for an inventor to obtain an early filing date and claim “patent pending” without a formal patent claim, oath or declaration, or any information or prior art disclosure. It provides simplified filing with a lower initial cost with one full year to assess the invention’s commercial potential before committing to the higher cost of filing and prosecuting a non-provisional application for patent. The filing begins the Paris Convention priority year. Within one year, a non-provisional application must be filed. If the inventor takes no further action, the provisional application will automatically be abandoned 12 months after the provisional application’s filing date by operation of law or upon failure to correct informalities (e.g., pay filing fee or correct cover sheet error).

A United States patent will be “barred” by statute, that is, a patent cannot be granted, if before the application filing date:

• the invention was described in a printed publication
• the invention was in public use
• the invention was on sale

The “on sale” bar can be triggered by almost any commercial activity, in the United States or elsewhere, including offers to sell or providing a prototype or drawings to a potential customer or manufacturer.

A statutory bar will also arise from the prior patenting of the invention, or if the invention is made by another before the patent application.

The timing of the issuance of a utility patent will depend upon the things that occur during the processing of the application. In general, most utility patents are being issued within one to three years of the filing date. Procedures are available for expediting the issuance of a utility patent.

A utility patent has a term beginning on the date on which the patent issues and ending 20 years from the filing date of the application for the patent. The owner of a utility patent must pay a government “maintenance fee” at three times during the life of the utility patent. If the fee is not paid, the utility patent will expire earlier. Maintenance fees are not applicable to U.S. design patents.

All utility patents which issue from applications filed since December 12, 1980 are subject to the payment of maintenance fees which must be paid to maintain the patent in force. Maintenance fees are due 3 ½, 7 ½ and 11 ½ years from the issue date of the patent. The maintenance fees may be paid up to six months before the due date. There is a grace period of six months after the due date during which a maintenance fee may be paid with a surcharge. If the maintenance fee and any surcharge are not paid, the patent will expire as of the end of the applicable grace period.

A United States design patent protects the shape and surface ornamentation of a useful article. For example, the shape of a table or the surface ornamentation on the handle of a spoon.

In most cases, a design patent will be granted between one and three years from the filing date. As in the case of utility patents, procedures are available for expediting the processing of a design patent application.

A design patent has a 14 year term beginning on the date on which the design patent issues, for applications for design patents filed before May 13, 2015. U.S. design patents for applications filed on or after May 13, 2015 have a 15 year term from the issue date of the patent. U.S. design patents are not renewable and there are no maintenance fees for design patents.