The Process of Securing Patent Protection
Aside from whether the invention is patentable, the other most important concern on the minds of inventors is the process by which a patent can be obtained. Inventors are free to pursue patents themselves (inventors who do such are known as pro se applicants) or to engage the services of a patent attorney to assist with the process. Which route they choose is often a function of how high the stakes are and whether the inventor has the capital to invest in legal assistance.
The area in which most pro se applicants get tripped up is in assembling and drafting the patent application. Often, inventors believe that, because they are in the best position to know their inventions, they must also be in the best position to describe their inventions.
However, a patent application is not just a description of an invention; it is a legal document filed with the United States Patent and Trademark Office (“USPTO”) claiming that invention. It is comparable to the difference between a real-estate advertisement and a deed. A property deed is a legal document that describes a piece of land and its metes and bounds; it does not describe the features of the house that would make it attractive to home purchasers. Similarly, a patent is all about its claims; it is not about describing the reasons that the invention is wonderful.
Patent applications can be provisional or non-provisional.
Provisional Patent Application
A provisional patent application is just that—an application. Unlike the non-provisional application, a provisional patent application will not result in a patent being issued. Its purpose is to serve as a placeholder. It gets the process “on record” so that a non-provisional application can be filed later to protect the same invention. Its importance lies in its speed and its ability to establish that the filer was first to this invention.
A provisional patent application is less expensive and has fewer requirements than a non-provisional application. It must include a filing fee and a cover sheet that identifies:
· the application as a provisional application for patent;
· the name(s) of all inventors;
· inventor residence(s);
· title of the invention;
· name and registration number of attorney or agent and docket number (if applicable);
· correspondence address; and
· any U.S. Government agency that has a property interest in the application.
The provisional application secures a filing date. Because it is filed and on record, it establishes that, as of the date on which an application was filed, the filer had “possession” of the invention. A provisional application for a patent has a pendency of twelve months from the date the provisional application is filed. An early filing date can make all the difference when competitors are trying to invent processes in attempts to solve the same problem. It also provides an applicant with a year in which to decide whether to file a non-provisional patent application.
The non-provisional utility patent application is the “regular” patent application. Unlike the provisional application, a non-provisional application may result in a patent being issued.
A patent application has three basic components: the specification, the claims, and the drawings. The application also requires fees, an oath or declaration stating that the invention is original and original to the inventor, and a translation if the application is based upon a foreign, non-English original application.
Claims can be thought of as the “metes and bounds” of a patent. They describe what the patent is claiming as the invention. The claims define how another product would be infringing on a patent just as in the case of a deed, the metes and bounds describe the real estate that the owners have the right to exclude others from trespassing. The claims answer the question: What about the invention described in the patent is new?
The specification is the written description of the invention. This is where the invention itself is described and where a reader who is “skilled in the art” can learn how to make and use the invention. This is the heart of the patent and also the “trade-off” made by the inventor, as it divulges to the world the mechanism by which the patented process can be reproduced. Patents can be thought of as social contracts. In exchange for telling the world how to make and use one’s invention, society gives one certain exclusive rights to that invention. According to the USPTO, the specification “must be in clear, full, concise, and exact terms to enable any person skilled in the art or science to which the invention pertains to make and use the same.”
The drawings illustrate the claims and the specification. These drawings can include schematics and flowcharts that explain the invention to the reader. Together with the specification and the claims, the non-provisional utility patent application describes what the invention is and how to make and use the invention.
The non-provisional application is sent to a patent examiner who conducts a search and examination on the application to determine if the invention is new, useful, and not obvious. The back and forth between the patent examiner and the patent attorney or patent agent is called patent prosecution.
This process of back and forth is why it is called “prosecution” and not merely “filing.” Patent attorneys and patent agents take an exam with the USPTO that is typically referred to as the “Patent Bar,” but officially called the “examination for registration to practice before the USPTO.”[i] In order to sit for the examination, applicants must have a science or engineering background.[ii] If the person passing the test is a licensed attorney, then he or she becomes a registered patent attorney. Otherwise the person is a patent agent.
The process of getting a patent is, theoretically, simple. If the invention is new, useful, and not obvious, then a patent should be granted. In actuality, the process is rarely simple and is largely adversarial. The applicant (through his/her patent attorney) tries to convince a patent examiner that the invention meets these three requirements and the examiner seeks to ensure that the inventor has met his burden and deserves the patent.
Keep in mind that by issuing the patent, the examiner will be preventing everybody else in the world from using that same patented process. As such, it’s important that the examiner ensure that the patent is deserved before issuing it.