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Anyone serious about getting a patent ought to be familiar with the information on this page.
There are several different types of patents. The most common patent is called a utility patent, which is basically a patent on an apparatus or a method. A design patent is sometimes compared with a copyright, and is basically a patent on a very specific design. Another type of patent is called a plant patent, which is a patent on a new plant species that was altered by man. It is important to note that something naturally occurring cannot be patented, such as a naturally occurring plant. However, if something naturally occurring is altered by man, that alteration can be patented. For example, if a gardener cross-breeds two particular types of plants, the offspring of those plants may be patentable. In another example, if a scientist discovers a new enzyme never before known to man he cannot patent it. However, if the new enzyme is found to be useful in a drug, the use of the enzyme in that drug may be patentable.
An independent inventor also needs to understand the difference between a provisional patent application and a non-provisional patent application.
A provisional patent application is unlike a non-provisional application since it will never be examined, but is used to establish a priority date. The provisional application is designed to buy the inventor more time to decide if he wants to pursue a non-provisional patent application, which requires more work and is typically more expensive. Basically, a provisional patent application is a simple description of an idea along with any applicable drawings. Provisional applications currently costs $100 to file in the U.S., while a non-provisional application costs at least $500 to $1000 depending on the size of the organization. The provisional patent application will automatically become abandoned at the one year anniversary of the provisional patent filing.
As long as a non-provisional patent application is filed before the one year anniversary date the non-provisional patent application may claim the priority date of the provisional patent application. This will be advantageous since any reference which happens to describe the inventor’s idea (patent or non-patent reference) with a priority date after the date of the provisional patent application cannot be used against the non-provisional patent application.
An individual wondering whether or not his invention will make enough money to justify the pursuit of a patent may file the rather inexpensive provisional patent application and use the year to market the idea before making the decision to file for a patent. Normally, the publication or sale of an invention more than one year prior to filing a patent application will disqualify it from being patentable. However, during this trial year the inventor may feel secure that he still has the option of obtaining a patent even if his non-provisional patent application is filed more than one year after selling or publishing his invention.
A non-provisional patent application requires a few more components than the provisional patent application. It requires a set of claims, a description of the invention, any applicable drawings of the invention, an abstract, a filing fee, and an oath or declaration.
Some parts of a non-provisional patent application are required (i.e., the claims, description, figures, fees, and declaration of oath). Others, such as assignments and information disclosure statements, may not be required but may have some advantages.
Claims – The claims are the most important part of a patent application. Here the invention is described in one sentence and is interpreted very literally by the patent examiner. Several claims may be included (and usually are) if there are several embodiments of the invention that the inventor desires to protect. Patent law will only allow one patent per invention, so if a patent application includes multiple claims that are dissimilar enough to be construed as two different inventions, the patent office will force the inventor to choose between his inventions; one will be examined and the other will be allowed to be re-filed for a separate examination. If there are more than twenty claims, the U.S. Patent Office will charge an additional fee for every claim over twenty. The purpose of the rest of the application is to support the claims.
Description – The description is usually written with reference to drawings that show the invention. Patent law requires that a patent application be described in enough detail so that someone of ordinary skill in the art will be able to make and use the invention. It is also required that the best way to make and use the invention be disclosed in the patent application. It is recommended that the description also include alternative ways of making and using the claimed invention. Each claim should be fully supported in the description.
Figures – If an invention can be shown in a figure, they must be included. Figures are typically referred to in the description.
Abstract – An abstract is a brief summary of the material disclosed in the description, and is required for non-provisional patent applications.
Declaration – The inventor(s) is(are) required to sign an oath or a declaration stating that they believe that they truly are inventors, that they are familiar with the content of the patent application, and that they will disclose to the patent office any information that they are familiar with that may help determine patentability of the invention. Inventorship is determined by the claims. Anyone who contributed to any part of the claims is considered an inventor. Just because an engineer was assigned by management to work on the idea prior to filing a patent on the invention does not mean that he or she is an inventor even though some of his ideas are included in the description portion of the patent application.
Assignment – Usually ownership of a patent belongs equally to the inventors, regardless of how much they contributed to the claims. Most organizations require that employees assign (or transfer their ownership) to the organization if the invention was developed for a work-related project. In such situations, the organization will technically own the pending or granted patent although the inventors will still be asked to sign an assignment (document transferring the ownership of the patent). Typically a patent attorney will try to have the assignment signed at the same time as the oath or declaration is signed. It is also wise to record the assignment with the patent office, which can be done at the time of filing.
Information Disclosure Statement – An information disclosure statement may be filed at the same time the non-provisional patent application is filed, but it may be filed at any time during the pending period of the patent application. An information disclosure statement is a list of the references that the inventors or anyone else (including the attorney or agent) feel affects the patentability of the invention claimed in the non-provisional patent application. There is a form provided by the U.S. Patent Office that an inventor may use to list the references. Typically, most of the references will be U.S. patent references (either published patent applications or granted patents), but foreign and non-patent references are also required by law to be submitted. if they are known. If there is doubt about whether a reference will affect the patentability of the invention of the patent application, the inventor should err on the side of caution and submit the reference.
Fee – As is typical with most organizations, there is a fee to file a non-provisional patent application. An individual or an organization with less than 500 employees is usually considered a small entity and may pay a smaller filing fee (unless they have license agreement with a large entity). Organizations with more than 500 employees typically qualify as a large entity and may pay twice as much as a smaller entity would. An inventor should either consult with a patent agent or patent attorney or reference the U.S. Patent’s website to determine if they qualify as a small entity because there are exceptions to the general outline stated above.
A U.S. Patent only grants rights within the United States. If an inventor wants patent protection in another country, he or she will need to file a patent application in that country as well. Filing a foreign patent application is typically more complicated and more expensive than filing a U.S. patent. This is due in part because patent laws differ between countries. Most countries in the world will not grant a patent on a business method or on a surgical procedure where it is possible to do so in the United States. Plus, each country will require its own set of fees. Even large companies that invest a lot of resources into patents will be selective when filing foreign patent applications. However, if the inventor wants to protect a global market, he must consider foreign patent filings.
Selecting which countries to file in – When considering foreign patent filings, the inventor needs to understand that he probably doesn’t have the resources to file a patent application in every country in the world. He must choose. Typically the countries with the best economies will be the best choice, such as Canada and many of the European countries. The major industries of those countries also ought to be considered as well as the country’s ability to manufacture the invention. It won’t make sense for an inventor to seek a patent on a novel drug in the Congo if the Congo doesn’t produce pharmaceuticals nor has any future plans to do so. Another factor that an inventor should consider is how well a country enforces patents. Many major companies have turned away from filing patent applications in Russia and China, for example, because they feel those countries would not be capable of enforcing their rights if there was an infringement issue within those countries.
Patent Cooperation Treaty – One option an inventor has is to file a patent application through the Patent Cooperation Treaty (PCT). This buys the inventor time to decide which countries he wants to file a patent application in. The deadline for filing a patent in a foreign country or through the PCT is typically one year after the filing date of the U.S. patent application. If the inventor knows for sure which countries he wants to file in, he may do so immediately. However, if the inventor wanted to see what kind of demand he could create for his invention he can file the PCT application and wait for a search by an international search authority. This search report can also be used to determine the strength of the patent application. After the international search is performed, the inventor must decide which countries he wants to file in. He will have to pay a fee for each country that the application enters into and perhaps pay for a translation of the application as well. One advantage of the PCT application is that the international search will probably be relied on by the foreign patent office and may speed up the granting of a patent.
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