Entrepreneur's Guide to Intellectual Property - Blog Series: What Every Entrepreneur Should Know About U.S. Law and Patent System (Part 2)

May 23, 2012 | Blog

By: Edward J. Evans

What is involved in the process of preparing a patent application?
It is important to know that an issued patent begins life as an application that is filed with the U.S. Patent and Trademark Office (USPTO), which examines the application to determine whether it is entitled to be granted as a patent under U.S. patent law. It is not guaranteed that an application will eventually be granted as a patent. It is also not guaranteed that the scope of patent protection desired at the time of filing the application will be available to the applicant at the conclusion of prosecution of the application.

By rule, a patent application must include a specification in which the invention is described, at least one drawing of the invention if it lends itself to illustration, and at least one claim defining what the inventor considers to be the invention. If analogized to a real property setting, a "claim" is like a legal description of the invention, and can be visualized as a fence demarcating the invention from the known art in the public domain. The greater the area surrounded by the fence, the broader the scope of the inventor's claim, making the patent more valuable.

An application filed with the three above-mentioned elements is considered complete and is entitled to a filing date. The filing date of a patent application can be analogized to the inventor's "stake" in the ground at which time the inventor was in possession of the invention.

Although an applicant is not required to perform a patentability search prior to filing a patent application in the United States, it is almost always a good idea for the applicant to do so. A patentability search, in essence, is a preliminary assessment of the likelihood of obtaining patent protection on an invention. More specifically, a patentability search involves studying a sampling of prior-art patent or non-patent documents in the same technical field within which an invention might be classified. After understanding the relevant prior art, an inventor may make a more informed decision whether it's worthwhile to proceed with a patent application, the cost of which is typically many times that of a patentability search.

What happens after a patent application is filed?
It is also important to know that the U.S. patent system is not based on registration. In other words, submission of a patent application to the USPTO is not the end of the process. Rather, it is only the beginning of a process, known as "prosecution," in which the applicant (or, their patent attorney) is actively involved in advocating for the patentability of the invention described in the application.

After an application is filed, it sits in an examiner's queue awaiting examination. To commence examination, the examiner conducts a search in the USPTO database for prior art that could be used to "reject" one or more of the inventor's claims in the application. A "rejected" claim is a definition of the invention that, as alleged by the examiner, is wholly included in the prior art. These allegations are communicated to an inventor in an "office action," initiating prosecution of the application.

Of course, the examiner's claim rejections may be rebutted by submitting arguments based on fact and legal precedent. Alternatively, the inventor may decide to amend the claims in the application to address the examiner's claim rejections. This process of negotiation continues until the examiner either agrees that the claims in the application are allowable in view of the prior art of record or closes prosecution of the application if agreement cannot be reached. Continued prosecution may be requested by the inventor with payment of additional fees.

What happens after a patent is issued?
Only after a patent is issued can it be enforced against a potential infringer in the marketplace. However, for a patent to eventually be enforced, the patent owner must actively monitor the marketplace to identify potential infringers. The USPTO is not responsible for identifying potential infringers of patents that are issued by the office.

It is also important to know that the fee paid to the USPTO to obtain issuance of a utility patent will only maintain the patent in force for up to four years after issuance. Additional fees, known as "maintenance fees," are due at the 3-1/2 year, 7-1/2 year, and 11-1/2 year intervals after issuance to ensure that a utility patent remains in force for its entire 20-year natural term. The maintenance fee for each interval progressively increases to encourage patent owners to let their patents lapse, thereby dedicating the technology covered by the patent to the public.

Design patents do not require the payment of maintenance fees to remain in force throughout their natural 14 year term.

To view the next blog in this series, click here.

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