Patents

 

Our patent services include patent searches, infringement searches, patent opinion reports, preparation, filing and prosecution of US patent applications, preparation, filing and prosecution of PCT patent applications, preparation, filing and prosecution of foreign patent applications, patent appeals before the US Board of Patent Appeals and Interferences, drafting and negotiating patent licensing agreements, and patent litigation support.

Our firm provides free initial consultations either by telephone or by appointment in our office or at your business location.  During the free initial consultation we wish to provide you with an overall view of the patent process for the filing and prosecution of a patent application before the US Patent Office, discuss important U.S. Patent Statutes, provide range of costs and fees that you may incur during the patent process and answer your questions.

A complete list of US Patents that our firm has handled before the US Patent Office may be reviewed HERE.

 

INDEX

 

  1. Right Granted By A US Patent
  2. Statutory Bar For Filing A US Patent Application
  3. Novelty Requirements For A US Patent
  4. Nonobviousness Requirement For A US Patent
  5. Priority Of Invention
  6. Utility Patents
  7. Duration Of A Utility Patent
  8. Design Patents
  9. Duration Of A Design Patent
  10. Preliminary Novelty Patent Search
  11. Provisional Patent Application
  12. Infringement of a U.S. Patent
  13. FOREIGN PATENTS
  14. Further Public information for US Patents

 

  1. Right Granted By A US Patent

A patent is a grant issued by a government that entitles an owner to exclude others from making, using and selling a patented invention within the United States during the term of the patent.  The granting of a patent for a limited time encourages the public disclosure of new technical advances and provides an incentive for investing in the commercializa­tion of the patented invention.  The public disclo­sure of new technical advances improves the exchange of new techni­cal innovation and contributes to the overall progress of technical innovation.

(Example)

 

  1. Statutory Bar For Filing A US Patent Application

An application for United States patent must be filed within one year of any offer for sale, sale, public use or publication of the invention.

(35 U.S.C. 102)

 

  1. Novelty Requirements For A US Patent

An invention may not be patented if the invention is “anticipated” by a single prior art reference.  An invention is anticipated if all claim elements appear in a single prior art device, process or document.  “Anticipation” means the claims define an invention that is not “novel” or “new”.

(35 U.S.C. 102)

 

  1. Nonobviousness Requirement For A US Patent

A patent may not be obtained though the invention (claimed invention) is not identically disclosed or described if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time of the invention was made to a person having ordinary skill in the art to which the subject matter pertains.

(35 U.S.C. 103)

 

  1. Priority Of Invention

Under recently enacted legislation, a United States patent is awarded to the application having the earliest priority filing date.

 

  1. Utility Patents

A utility patent is granted for any patentable article the manufacture, and apparatus, composition of matter and a method. 

 

  1. Example of articles of manufacture  (Example)
  2. Example of apparatuses include electrical and electronic circuits, machines (Example)
  3. Example of composition of matter includes news chemical and

            pharmaceutical formulations and the like. (Example)

  1. Example of methods include mechanical, electrical, electronic, chemical,

            computer processes as well as business methods. (Example)

  1. Duration Of A Utility Patent

A utility patent is valid for a period of 20 years from the earliest filing date (priority date).  A utility patent cannot be renewed.  Maintenance fees are required to keep the utility patent in force during the life of the pattern.

 

  1. Design Patents

A design patent is granted for any patentable ornamental design of an article the manufacture or an apparatus.  A design patent does not protect the function of the patented design. (Example)

           

  1. Duration Of A Design Patent

A design patent is valid for a period of 14 years from the date of issue.  A design patent cannot be renewed.  No maintenance fees are required for a design patent.

 

  1. Preliminary Novelty Patent Search

We recommend a preliminary patent­ability search be performed prior to filing a utility patent application with the U.S. Patent Office.  A preliminary patentability search is only for the purpose of determining the feasibility of filing a patent application on an invention.  A preliminary patentability search is not for the purpose of determining the marketability of an invention nor should the search be relied on for raising investment capital.  In addi­tion, a prelimi­nary patentability search does not determine whether the making, using or selling of an invention will infringe a patent issued to a third party since an infringement search requires substantially more analysis and study. 

Since a preliminary patentability search does not search foreign patents and periodicals and since access to many patent applications pending in the United States Patent Office are not available, we esti­mate that a preliminary patentability search are not hundred percent accurate in locating anticipatory prior art patents.

In addition, a preliminary patentability search involves subjective considerations.  It should be realized that other patent attorneys and/or patent examiners might reach different conclusions in regards to selecting prior art patents.  Furthermore, records relating to non-published pending applications are not available for our review.  Accordingly, no one can warrant that the subject invention can be patented before the United States Patent Office despite after conducting a preliminary patentability search.

Our usual fee for conducting a preliminary patentability search depends upon the complexity of the search subject matter.  Prior to authorizing a preliminary patent­ability search, you may wish to review the patent records of the United States Patent Office at www.uspto.gov.   

 

  1. Provisional Patent Application

A provisional patent application provides a priority date for the filing of (1) a United States utility patent application, (2) a foreign national application or (3) an International application under the Patent Cooperation Treaty.  These applications must be filed within period of pendency of the provisional patent application or a period of one (1) year.

Once a provisional application has been filed in the United States Patent Office, addi­tional material cannot be added to the application.  Accordingly, it is imperative that a complete and thorough disclosure of the invention be contained within the enclosed specif­ication.  In addition, the application is intended to be a complete and accurate descrip­tion and disclosure to enable one skilled in the pertinent art to make and use the invention.  Accordingly, our firm typically prepares a provisional patent application to include all of the substantive parts of a formal utility patent application.

 

  1. Infringement of a U.S. Patent

A United States Patent is a right granted by the United States government to exclude others from making using and selling a patented invention within the United States during the term of the patent.  What is granted is not the right to make, use, offer for sale, sell or import, but the right to exclude others from making, using, offering for sale, selling or importing the invention.  Furthermore, a United States Patent granted to you may not be used as a defense for an infringement action against you regarding another U.S. Patent. (Example)

 

  1. FOREIGN PATENTS

Novelty Requirements

Although novelty requirements vary among foreign nations, most foreign nations require an application for patent be filed prior to any dissemination of information anywhere in the world.

Paris Convention

The Paris convention (1883) is a treaty among most foreign nations recognizing the priority date (United States application filing date) as the foreign filing date so long as the foreign application is filed within one year of the priority date (United States application filing date).

 

Patent Cooperation Treaty

Patent Cooperation Treaty (PCT) is an International treaty of over 100 member countries which simplifies filing in multiple foreign nations and regions and extends the time for actual filing in the foreign nations.  The Patent Cooperation Treaty (PCT) patent application provides the ability to file future National and/or Regional patent applications in approximately one hundred foreign countries.  These future National and/or Regional patent applications must be filed within thirty (30) months of the priority date.

 

Map of Regions map of nation

Foreign National And Regional Patent

The filing in each of the Regions and Nations designated in the Patent Cooperation Treaty (PCT) patent application must be completed within thirty (30) months from the date of the priority date.  The costs and fees associated with the filing, prosecution and maintenance of a national or regional application are of seven types: (1) foreign filing legal fees, (2) foreign filing costs, (3) translation fees, (4) foreign prosecution legal fees, (5) issue fee, (6) maintenance fees and domestic legal fee.

 

Duration Of Foreign Utility Patent

Although the duration of foreign patents vary among foreign nations and regions, most foreign nations and regions have a duration of 20 years from the priority date (United States filing date).

 

  1. Further Public information for Patents

Further public information by be gleamed from the following:

United States Patent and Trademark Office

This information includes

  1. access to issued patent and published application
  2. access patent database for conduction a patent search for prior art patents

 

European Patent Office

Code of Federal Regulations

Florida Statutes

WIPO Intellectual Property Digital Library