Patents
Patent Overview and Timeline
A patent is awarded to an Inventor to give him or her the right to bar others from making, using or selling his or her invention in the United States for up to 20 years (from the filing or priority date). In exchange, the inventor must adequately disclose his invention and its working to the public through the patent application process. In order to be awarded a patent, the invention or idea must be new and non-obvious, not patented by someone else, and must be useful or demonstrate some utility. The invention may be limited to one or more of the general subject matter areas enumerated by the patent laws. Patents are awarded on a variety of inventions. These ideas range from drug formulas to mascara brushes, tire treads to telecommunication switches, golf clubs to new varieties of roses.
One Year Time Limit to File and First to File
In general you must file within one year of public disclosure of your idea. If your invention has been described in a printed publication anywhere, has been in public use or on sale more than one year before the date on which an application for patent is filed in this country, you may be barred from receiving a patent on your invention. (See 35 U.S.C. § 102(b)). Additionally, there may be many other legal and/or business reasons why you would want to file a patent application BEFORE disclosure or offer for sale of your invention. This is especially true since the U.S. went from a from First to Invent system to First to File provisions on about March 16, 2013 in accordance with the America Invents Act. Since this date, if another party arrived at the same invention independently and you file after the date of the other party on the same invention, you could lose rights to the invention. Additionally, if you are planning to file in a foreign country, your time period for filing on your invention may be further reduced. You should seek the advice of a patent attorney on your particular situation before disclosing your invention publicly or offering it for sale in this country or even in another country.
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WATCH SHORT VIDEO: Time Periods for Filing a Patent Application (5:20)
Timeline for Prosecution of a Patent
The following is a general guide as to the time line that an application might follow.** However, your application will follow its own time line based on many factors within or outside the control of you, your patent attorney, third parties, and the Patent Office personnel.
TIMELINE
DESCRIPTION
Week 1-2
Patent Search
A typical first step in filing a patent is to perform a search (“novelty search”) to find out if the idea or invention already has been awarded a patent. The PTO has a Search Room with a number of Patent Office databases such as EAST and WEST on the public search computers. These databases contain more than 11 million patents, plus published applications and limited other information such as foreign patents (or their abstracts). While these patents can be searched over the Internet, the PTO computers have many features and speeds not readily available or practical through the Internet. MBV is located near the Patent Office and can utilize these public search room databases to perform preliminary searches to generate a patentability report. These reports may include information and guidance about whether or not an application for a patent should be prepared.———————-
Notes about Searches: While a novelty search is not required for filing, it may be useful in predicting whether your filing might ultimately be successful. The search may also uncover information about whether other parties are inventing or publishing in your particular area that might be obstacles to your application being allowed (“approved”). The search may also allow your patent attorney to draft more appropriate claims to your invention. A novelty search is a very brief search looking to the subject of the novelty of your invention. Other more extensive types of searches are available at a greater costs. You should discuss with your attorney any need you may have for more certainty about other patents and publications that may exist. These more comprehensive searches include “state of the art,” “right to use,” “infringement,” “invalidity,” and “due diligence,” just to name a few. No search of any scope can ever tell you with absolute certainty the existence of all relevant publications, art or patents that might exist. Please contact us if you have any questions about searches and their limitations.
Week 3-6
Patent Application Filing
If the patentability report is favorable, then a patent attorney at MBV can prepare an Application on the invention. There are several types of applications, including provisional and non-provisional (“utility”) applications. Other types of patents also exist such as design applications and plant applications. Note: Only a registered patent attorney or patent agent can represent an applicant before the United States Patent and Trademark Office in a patent application.
An application typically includes a written specification, drawings, and claims describing the invention. The application will also need to include the appropriate Filing Fee associated with the type of application filed. Once your application is filed, your application is now “patent pending.” In many cases, MBV can provide you a fixed fee or set fee range for completing a patent search and/or filing a patent application. Please note that continued projects/responses to PTO office actions and communications (and associated legal and/or fees) will be required in most circumstances to continue the application towards issuance as described below.
Week 8-10
VIDEO: Time Periods for Filing a Patent Application (5:20)
VIDEO: How to Write and File a Provisional Patent Application (4:45)
After your application is filed, the Patent Office will return a filing receipt acknowledging your filing and providing an application serial number and foreign filing license review.
Month 22-33***
Patent Examination
After filing the application, your idea or invention will be in aAfter filing the application, your idea or invention will be in a “Patent Pending” state. While your application is pending, a Patent Examiner at the PTO will review your application to determine its patentability. He or she will review your application against other patents and publications to determine if the application is novel and unobvious. If no significant prior art is found, then the application will be allowed. If the Patent Examiner determines otherwise, then he or she may reject the application. If an application is rejected, the Applicant is given an opportunity to respond to the rejection. MBV will work with you to develop various options for responding to the Patent Office. This response may include amending the claims of the application and/or making legal arguments as to why the application should be allowed as is or after amendment. The costs of these responses will vary according to the types of rejections and responses involved. MBV will develop a quote containing the estimated or fixed fees or fee ranges for responding to the Patent Office. You and your attorney will discuss these options with you and their implications to make an informed judgment on the avenue best suited for your needs. It is important that you file a response promptly or you may have to pay sometimes costly Extension Fees or face Abandonment. The Examiner will then give fair consideration to the arguments and amendments to the application. The Examiner may then send the application to allowance or repeat the process above through another office action. It is not uncommon an Applicant to respond to a number of Office Actions before the application is allowed or abandoned.
Year 3
Allowance and Issue
Upon allowance of an application by the PTO, an Issue Fee will have to be paid. Other appropriate documents and forms may also need to be filed before the patent application will issue as a patent. You can only change the designation of your product from “patent pending” to “patented” after you receive the ribbon (or electronic) copy of the patent from the Patent Office.
VIDEO: Patents, Trademarks & Copyrights Labeling and Notice
These are only a few of the events that may happen during the pendency of the application. An experienced patent attorney will be able to give you his insight and candid advice into the likelihood of success or failure of an application at the Patent Office. However, there is no certain way to predict the course of any particular application through the Patent Office from filing to issue except to file the application and see what happens. An experienced patent attorney can help you to respond to each communication from the Patent Office in a timely manner. He may also help comply with the many rules and laws necessary to see the application through to issuance or termination. An experience patent attorney can help you moderate your expectations, avoid unnecessary costs and help you through the ups and downs during the application’s pendency.
Year 7 thru 15
Maintenance Fees
Patent owners are also be responsible for Maintenance Fees (“renewals”) approximately four, eight and twelve years after issue to maintain the enforceability of the patent throughout its life. VIDEO: What is a Patent and How Long Does it Last?
Month 1-12
Foreign Patents
Patent Cooperation Treaty (“PCT”) applications and foreign national phase filings are also available as part of a foreign patent protection strategy. Due to the numerous options and fee variations through PCT filings and foreign national filings, estimates are made on a case by case basis and may be higher than for related U.S. applications. The use of a local attorney in the respective country for each direct foreign filing as well as translations into the local official language and other documentation such as legalizations, apostilles, notarizations and certifications must also be factored into the costs. Please contact us for estimates and information on such matters. NOTE: There are also important considerations important to the timing of a foreign application, such as absolute novelty, which may require filing even before filing of a U.S. patent application that must be considered or the applicant may be barred from filing a foreign application in many of the foreign countries. Each country has its own set of rules and treaties with the U.S. (or lack thereof) that must be considered well in advance of filing in a particular country. However, in general, a foreign application may typically be filed within one year of filing the related U.S. application (or within 30 months if a PCT application has been filed). Please contact us if you have any questions on foreign filings for any particular countries