San Diego Patent & Trademark Attorneys

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What rights do we receive with a patent?

A United States patent creates a property right that allows the owner the right to exclude other persons or business from making, using, selling or importing the patented technology. The patent right is basically a government sanctioned monopoly that lasts for about 20-years. The patent right is important for protecting the value of your technology, the profit your business may earn from the technology, and against infringing products. The United States patent right can also be an important foundation for international patent rights.

What does an inventor have to show to demonstrate that he or she is entitled to a patent?

To receive a patent in the United States, an inventor must prove to the Patent Office that his or her invention is new, useful, and that it is not an obvious variation of existing technology. In addition, an inventor must provide what is known as an “enabling” description of the invention. This means the inventor must teach others who are skilled in the relevant field how to make and use the invention.

What types of technologies may be patented?

Patents can be granted for mechanical devices, software, certain methods and processes, plants, chemical compositions, and even living organisms. Sometimes patents are issued for brand-new technologies, and other times patents are granted for improvements to existing technologies.

Are there different types of patents?

Yes, there are different types of patents. The basic patent rights are utility patents, design patents, and plant patents.

Utility patents are geared for protecting the function of an invention. These patents can be granted for manufactured items, processes, machines or compositions. These patents last about 20 years from the filing date, which is adjusted in some instances to account for patent office delays. To maintain utility patents in force, the inventor or owner must pay periodic maintenance fees over the course of the life of the patent.

Design patents are patents that cover the ornamental appearance of articles of manufacture. A design patent lasts 14 years from issue. While the design patent will not cover the function of an invention, it is still an important tool for inventors to protect their ideas. While design patents are only supposed to protect the ornamental appearance of a product, infringers will often seek to misappropriate the appearance as well as the function of the product. Practically speaking, there can be overlap between the protections afforded by trade dress, copyright and design patents. Typically, design patents are less expensive to acquire than utility patents and are pending for shorter periods of time prior to issuance.

Plant patents. Patents can be granted for particular strains of plants. Modification and selective breeding of plant species is commonplace, so patents are permitted on this subject matter.

Are there special requirements to be “patent attorneys”?

Yes. In addition to having a law degree, a person that holds himself or herself out as a patent attorney must pass a separate federal bar exam issued by the United States Patent and Trademark office. In addition, patent attorneys must have advanced educational backgrounds in science or engineering. Patent attorneys must also meet the ethical standards of the Patent Office and pass background checks by the FBI and state authorities.

Should we perform a patent search before we file for a patent application?

In almost every case, the answer is yes. A patent search is an important tool to determine whether the invention is novel. A patentability search and opinion is therefore useful to determine not only whether a product is new, but also whether the scope of available protection will be worth the costs of filing for a patent. The patent search can also help your patent attorney draft quality claims that are more likely to be allowed by the Patent Office. If you would like a free consultation to discuss a patent search and patentability assessment, please contact us here.

When is the best time to file for patent protection?

Currently, the best practice is to file a patent application before using, selling or offering to sell your invention, especially if foreign rights will ever be sought. The United States has a 12-month grace period to file for a patent after it is first made known publicly, used or sold, however, most countries in the world do not share this grace period and so use of the technology prior to filing for a patent can actually jeopardize international rights. Also, because of the America Invents Act, which was signed into law on September 16, 2011, the United States is changing to a “first-to-file” system as opposed to a “first-to-invent” system. This change is effective March 16, 2013. There will still be a 12 month grace period in the United States in some cases, but this new rule, which is similar to most of the rest of the world, will change what can be cited as prior art against an inventor. The patent office will no longer consider the “date of invention” but instead will just look to filing dates of other patents. Practically, this will incentivize the early filing of patents. Filing of patents before disclosure, use or sale is a conservative practice anyway since pre-filing disclosures can jeopardize international rights.

What changes has the America Invents Act brought to US patent law?

The America Invents Act was signed into law by President Obama on September 16, 2011. The Act presents a host of major changes to the patent laws of the United States. A primary effect of the law is that it moves America into a “first-to-file” system as opposed to the “first-to-invent” system that has been in place since the dawn of the patent system in the United States. These changes are effective as of March 16, 2013. The patent office will no longer consider the “date of invention” when assessing what qualifies as prior art that may be cited against an inventor trying to get a patent. Overall, this will encourage the early filing of patents by inventors and businesses.

On September 16, 2012 new rules were also adopted by the Act for challenging the validity of a patent.

    One new procedure allows third parties to challenge the issuance of a patent after publication, but before the application issues. This is a pre-issuance challenge. A third party may now challenge the patent application from the later of either (a) issuance of a notice of allowance or (b) six months after either publication or the issuance of a first office action. The procedure also allows a challenger to submit a description of why any prior art that is submitted should be considered relevant.
    Another post-issuance inter partes challenge to patent validity may also now be made within nine months of issuance of a patent. Challengers will be limited to prior publications and patent references for this type of challenge.
    Yet another post-issuance, or “post-grant” review procedure allows a party to raise challenges on any statutory basis within nine months of issuance, provided at least one challenged claim is determined more likely than not unpatentable and provided the challenger raises a novel or unsettled legal question. However, the decision based on this procedural device should be considered carefully because it can bar re-litigation of the matter in other courts, including the federal courts and the courts of the International Trade Commission.

The law of the America Invents Act also changes the interference practice in the Patent Office. An interference is a procedural device in the patent office that has historically been used to determine disputes of inventorship with competing patents. A new proceeding called a “derivative proceeding” has taken the place of the old proceeding. This proceeding is geared to figuring out whether somebody who filed a patent first using the “first-to-file” system took the claimed subject matter from somebody else and subsequently filed a patent without proper authorization.

Is a patent application confidential?

Yes, but not for long. A patent application is not a public record when it is first filed. However, a patent application is published 18 months after filing in accordance with the American Inventors Protection Act of 1999. There is a mechanism to opt out of publication, but to do so can jeopardize the right to file in foreign jurisdictions.

How do inventors make money from patents?

There are a variety of ways to generate income using patents. If an inventor has a marketable technology disclosed in his or her patent, there are several ways to use the patent to generate revenues. First and foremost, a patent owner has the right to exclude other persons or businesses from selling the technology in the patent. Consequently, a patent holder may benefit from higher profit margins from sale of the patented technology since other businesses cannot use the technology without permission. Some patent holders will generate revenues with their patents through licensing. Licensing of patent rights can generate royalties by permitting other businesses to make, use, sell or import the patented technology. Licenses and royalties are paid in different ways –sometimes on a per unit basis and sometimes based on percentage of net sales. In other cases, a patent holder may wish to sell his or her patent rights outright.

What are the major steps of the patent process?

After a search is completed, and presuming the search is favorable, an inventor will file an application with the Patent Office. Once filed, the application is “patent pending” and this begins a process that will ideally result in issuance of a patent. The applicant or applicant’s attorney will receive a filing receipt and a serial number will be assigned to the application. It may be several months after receiving the filing receipt before the patent office responds formally. It is not uncommon for an application to be pending for 18 to 24 months prior to formal examination by the Patent Office. A patent examiner will be assigned to the application. After filing, the examiner will issue what is known as an “office action”. An office action is fairly self-explanatory in that it is an action related to the application. In some cases, a patent examiner may issue what is known as a “restriction requirement” and require the inventor to pick a grouping of claims for examination –particularly if the examiner believes the inventor has tried to patent multiple inventions in the same application. In other instances, an office action will allow certain claims, object to certain claims on issues of form, or reject certain claims if the examiner has a substantive basis for doing so. The patent attorney will respond to the office action by either arguing or amending the claims of the patent application to place it in a better condition for issuance. If and when the patent attorney successfully argues or amends around the requirements of the office action, then the inventor will receive a “Notice of Allowability” that sets out the scope of allowable protection on the claims of the patent. Assuming the inventor agrees with the examiner and pays the appropriate fees, a patent will issue.

Is it useful to file a provisional patent application?

Sometimes. There can be strategic reasons for filing a provisional patent application. The provisional patent application does not have claims, and the application is never examined by the patent office; however, it can act as a placeholder for the inventor and can provide “patent pending” status to the inventor while the applicant is investigating the patentability or marketability of an invention. However, provisional patent applications have limitations. Most important, they only last 12 months. They will never ripen into a United States patent unless the inventor files a non-provisional application within 12 months that claims priority to the provisional application. In some cases the patent attorney will need to refamiliarize with the application prior to filing the non-provisional application, which can actually add costs. Contrary to popular myth, provisional patents must still contain a full disclosure to protect the subject matter that the applicant eventually desires to protect. Thus, a half-hearted disclosure may be inexpensive, but it will not protect the filing date for anything other than what is actually disclosed.

If somebody helps me build my invention, are they an inventor?

Sometimes, and this topic can present sticky issues. While a person who merely helps an inventor “reduce his or her idea to practice” is not an inventor, the answer is not always so clear. Technically, any person who materially contributes to the invention of at least one claim is potentially an inventor. For this reason, the question of inventorship spawns many disputes. This situation often comes up when inventors hire engineers or draftspersons to help build prototypes or document an invention. For this reason, it is very important for inventors to have appropriate nondisclosure agreements and consulting agreements in place with individuals or businesses who will assist with the inventing process. These documents should be drafted by attorneys to make sure the inventor, or the company who hires the inventor, will have proper ownership of the technology disclosed in the patent applications.

Is an invention protected while a patent is pending? How can I protect my invention while the patent application is pending?

By filing a patent application an inventor has taken the first steps toward protecting his or her invention. A case of patent infringement cannot be brought until a patent actually issues, however, a patent application establishes its applicant as first in line for ownership of any patent that ultimately issues. In addition, while an application is pending, an inventor can use contracts such as nondisclosure or confidentiality agreements to protect technology that is a subject of the patent application. Competent attorneys should be selected to draft contracts to fit the particular needs of an invention.

How do we protect our invention internationally?

In today’s global world, businesses must increasingly consider international protections for their intellectual property assets. In some cases, businesses will protect international patent rights by filing applications directly in the countries of interest. International treaties can be used to claim patent rights outside the United States that stem from applications originally filed in the United States. By the same token, the reverse is also true and foreign patent owners may use their filings outside of the United States to claim rights in the United States. One common device is the Patent Cooperation Treaty (“PCT”). While a PCT application will not result in the issuance of an “international patent,” the filing of a PCT application can extend the time for a business to enter jurisdictions outside the United States and claim benefits to an earlier application filed within the United States. If international markets are a possibility, seeking protection outside of the United States should be considered sooner than later. In most cases, PCT applications will need to be filed within 12-months of the earliest claimed date of filing of a patent for the invention.