Patent laws

This article is written by Tripti M Kumar, pursuing a Diploma in Intellectual Property, Media and Entertainment Laws from LawSikho. The article has been edited by Aatima Bhatia(Associate, LawSikho) and Smriti Katiyar (Associate, LawSikho).

Introduction

If you are an entrepreneur, especially a small business owner, the patent process is something you should get used to. In this new day and age, where we run out of things to invent, a novelty in a product is highly valued. Patent laws all over the world help you protect this novelty. The uniqueness of a product can bring monetary benefits as well as recognition for the same. This article is going to give you a brief idea about the US patent system as well as resources where one can easily learn about the same.

What is a patent?

The patent is an exclusive right granted for an invention. If one has an invention, like a new and technical solution to a problem, a novel product, or process a new way of achieving better results with some technical advance, having a patent on your name for an invention gives you the right to commercially exploit your idea for a period, which gives the inventor a monopoly over the idea for a certain period and also patenting gives you the right to decide if the invention can be used by others and on what terms.

Having a granted patent in the US for your invention gives you the right to exclude others from using, selling the invention in the United States as well as importing the invention in the United States. Since it is a right to exclude others, that is; you can stop others from using your idea without your consent which is committing patent infringement it can also be called a negative right.

Although patent law is complex, you can quickly understand the basics of the three main types of patents that inventors should know: utility patent design patents, and plant patents.  The most common of these types is undoubtedly the utility patent, which covers inventions that operate in a unique way to produce a useful result. When people talk about a “patent,” they are usually referring to a utility model.

Is the invention patentable?

To answer this question, the United States Patent and Trademark Office has conveniently made a list of FAQs that will help you find out whether your invention is patentable or not.  Some of the basic questions that one should ask before applying for a patent are:

  • Who can apply for a patent?
  • What can and cannot be patented?
  • How do I know if my invention is patentable?
  • How long does patent protection last?
  • How much does it cost to get a patent?

The first and the foremost basic criteria to be checked first is if the invention in question, or any similar invention has been publicly disclosed, if yes then the said invention is not patentable. This is called patent search. It is the process of examining whether the invention already exists in the market, and if so how your invention is different from it. For a patent grant to be successful, one should prove the uniqueness of the product. The product should be novel.

Applying for a patent in the US

Before we get two the steps of getting a patent, we need to understand there are two ways one can apply for a patent:

  1. Through a registered patent attorney
  2. by yourself (Pro Se)

USPTO highly recommends getting a Patent Attorney involved since patenting an invention involves complexities. A patent attorney is suggested in most cases because the job of the patent attorney is to present your invention in such a way that it more closely brings out the core uniqueness of your invention, which is likely to be patentable to distinguish it from other inventions, this often can cost double the whole patenting procedure. A patent attorney specially trained in patent drafting knows industrial property rights. They guide individual inventors or companies through the process necessary to obtain a patent and then enforce their rights in case of patent infringement.

But USPTO has also made provisions for inventors and small business owners who have access to very limited resources. Independent inventors and small business owners are eligible for pro bono help from USPTO. A person when filing for a patent can either hire a registered patent attorney or do it on their own which is also referred to as Pro Se.

Steps to getting a US patent 

  • Breakdown your invention- You should create a specification that includes an executive summary, background, executive summary, detailed description, and your conclusion, including implications and scope. In addition to this, you must define the legal scope of your patent. you must first: 

a) determine whether your invention has commercial potential

b)make sure that it meets the requirements for patentability, and

  • Patent search – A patent search is a search for granted patents and published patent applications for inventions that could be considered important references to the “state of the art” when applying for a patent. The state of the art is anything in the public domain, patented or not, that can determine whether an invention is new or not.  A patent finder examines the drawings and text of patents and patent applications to find inventions that may be similar to an inventor’s new invention. In addition to keyword searching, the patent finder uses the patent classification system to find relevant patents.
  • Choosing the type of patent protection – There are three major types of patent protection the USPTO offers:

a) utility patent – If you have a  useful new invention that is not obvious to others in the field of the invention, you may be eligible for a utility patent. Utility patents are grouped into five categories: a process, a mechanism, a prototype, a composition of matter, or an addition of an existing idea.

 b) design patent –  A registered design is awarded for product designs, for example for an IKEA chair. You can even get a  computer screen icon design patent.

c)plant patent- This patent protects the owner by preventing other people or companies from creating the type of plant or benefiting from the plant for at least 20 years from the filing date.

  • Provisional application- A provisional patent application allows you to file without a formal patent claim, oath or declaration, or any information disclosure (prior art) statement. Under US patent law, a provisional application is a legal document filed with the US Patent and Trademark Office (USPTO) that establishes an early filing date but does not become a patent granted unless the applicant files a regular non-provisional patent application within one year. There is no  “provisional patent”. A provisional application contains a description, that is, a description and a drawing (s) of an invention (drawings are required if necessary to understand the object to be patented ) but does not require formal declarations, oaths or Inventors’ statements or any Information Disclosure Statement (IDS).
  • Registering for e-filing – You can file your patent application by mail or fax, but the easiest way is online through the USPTO website here. The electronic filing system (EFS-Web) enables the online filing of patent applications, amendments, and other documents. EFSWeb has some practical advantages: 
  1. send an application anytime and from anywhere with Internet access 
  2.  receive immediate confirmation of  receipt of documents at the PTO 
  3.  send an application to the PTO without having to go to the PTO office emails to receive express mail 
  4. Receive a receipt or wait to receive a postal receipt and submit an application without having to prepare an application submission, billing submission, postcard or check receipt, or credit card payment form credit (CCPF).
  • Formal application – after the filling of the application, there is an examination done by USPTO. In the examination, the corresponding application is verified for the patentability parameters, its compliance with the legal requirements, and the granting of a patent. At the time of examination, the Patent Office issues the Examination Report (ERF) / Office Action with a series of objections/requirements that must be submitted within at least 2 months from the ERF issue date. The patent attorney can send a response no later than 6 months after the date of the first official notification. The patent examiner sets a “shorter statutory time” to respond, which is normally 3 months for an official complaint. The abbreviated legal deadline is the time you can respond without paying a response fee. You can respond for up to 6 months, but only if you request an extension and pay.  Once the accusation is over,  some claims may be accepted to be admitted, or all are denied, or all are admitted. In many situations, few claims will be allowed and few can be denied. There is also another provision of the Request for Continuing Examination (RCE) that will allow law enforcement to resume.

After completing the patent application, you must file it with the USPTO and pay a fee. Once the examiner has understood the applicant’s invention, she investigates the prior art and determines whether the claimed invention meets the legal requirements. The granting of a patent application can take up to three years. It is not uncommon for the examiner to ask an applicant to amend claims or for an applicant to appeal a denial.

Conclusion

As discussed earlier, although the patent process takes a lot of time, it is an essential part of building a business and monetizing its assets. Patents can offer individuals and businesses great value and a higher return on investment in the development of new technologies. Patents must be pursued with a smart strategy that balances business interests to implement the technology with a variety of options on how, where, and when to apply for patents. For example, by taking into account international considerations and regulations in certain countries,  a company can make significant savings and improve patent rights. 

References

  1. https://www.nolo.com/legal-encyclopedia/understanding-patent-applications-29661.html 
  2. https://www.inc.com/larry-kim/how-to-file-a-patent-in-8-easy-steps.html 
  3. https://www.nolo.com/legal-encyclopedia/types-patents.html 

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