Obtaining U.S. Letters Patent

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Law Offices of Charles L. Thoeming - Ascendant IP

Lafayette, CA

Practice Areas

Intellectual Property, Patents

What is Patentable?

Subject matter eligible for a "utility patent" includes "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof." 35 U.S.C. §101. A "design patent" can also be granted for "a new, original, and ornamental design for an article of manufacture." 35 U.S.C. §171. A "distinct and new variety of plant" that is invented, discovered, or asexually reproduced likewise may be eligible for a "plant patent." 35 U.S.C. §161.

Some subject matter cannot be patented. This prohibited subject matter includes laws of nature, physical phenomena, or abstract ideas such as purely mental processes or algorithms, which are either naturally occurring concepts or something that in and of itself provides "no useful, concrete, intangible result."

During the pendency of a U.S. patent application, the applicant should include the words "patent pending" on the item disclosed and claimed in the application. Once a patent is granted, the applicant should mark the item disclosed and claimed in the patent with the patent number or the words "patented" or "U. S. patent" to notify the public that the article is patented.

What Benefits are Conferred by a Patent?

A patent confers to the patentee, or owner of the patent, the right to exclude others from making, using, selling, offering to sell, or importing products that would read upon the claims of the issued patent. These basic rights embedded in a patent are limited to a term of usually 20 years from the date that the patent application was filed. During this patent term, the patent is maintained through the payment of maintenance fees paid to the Patent Office. In this fashion, patents are a valuable asset for a company whose products are covered by its own patents or patent's licensed from others. A patent or a portfolio of patents is evidence of a strong technological position in a given market or industry. Patents also can provide a source of revenue through licensing the patented technology to others.

When is an Idea Patentable?

Inventions typically occur as the result of confronting some problem for which no apparent solution is known to exist, or when the solution that exists cannot be used because of cost or certain disadvantages. Thus, solutions that arenew and original and are not obvious may be patented. Such ideas are the result of insight into a problem. These ideas are a creative act to envision a new way to assemble several complements, to arrange the steps of a process, or to eliminate or replace something that is unnecessary.

When this "Eureka!" moment happens, it is time to write down a description of the problem and the solution and the date that the idea came into being. When shared with others, this record is called a disclosure of invention. The inventor should, however, consult a patent attorney to evaluate what should be done with the idea before discussing it with others.

What is Involved in Getting a Patent?

The process of obtaining a patent starts with a conference with the client. The conference usually involves determining the nature of the invention and whether or not it is the proper subject for a patent, discussing the costs and timing involved in obtaining patent, discussing the nature of patents, and answering questions that the client has concerning patents.

Although there is no legal requirement for preliminary research to determine the state of the art of the subject of the invention, a patentability search is usually appropriate and the client will decide whether or not a patentability search or other preliminary research is to be conducted. Preliminary research is a separate item of work that is billed separately for a quoted fee.

Obtaining a patent is a process that generally takes about two years, sometimes slightly less and sometimes considerably longer. It starts with preparation and filing of a patent application, the cost of which is generally billed at an attorney's hourly rate. Cost also includes the out-of-pocket expenses involved, such as payment of government fees and payment to independent contractors such as draft persons who prepare application drawings. A professional fee for preparing and filing an application is usually quoted, the quote being based on the attorney's hourly rate and estimated time involved. In some instances, however, clients carry out development work while a patent application is being prepared and substantial revisions may have to be made to the originally prepared application in order to incorporate the ongoing development work. In such cases the attorney fees for preparing the application may be considerably more than originally quoted.

After an application is filed in the United States Patent and Trademark Office (PTO) it is examined by a Patent Examiner and written communications from the PTO to the attorney, called Actions, are sent. First Actions almost always involve rejecting all or some of the application claims as filed. First Actions normally are received about nine months to a year after the application is filed and a response to an Action must be filed within a time period specified in the Action. If a timely response to an Action is not filed, the application will become abandoned. While the patent application is pending there may be more than one Action which requires a response. Typically a patent will issue (or the application will become abandoned) within about two years. If an Appeal from the adverse Action is required, the time period before a final PTO decision is obtained is considerably longer.

An attorney cannot guarantee a favorable result. The client must understand that efforts to obtain a patent may be unsuccessful and that if a patent is obtained it may not produce an economic advantage for the client.

Work involved when responding to Patent Office Actions is billed at an hourly rate and normally a response to Patent Office Action involves no additional PTO costs. Attorney fees are usually approximately one third of the attorney fees required to prepare the original application. Of course this amount can be quite different depending upon the complexity of the issue raised by the PTO Action.

When an application is allowed by the PTO a Notice of Allowance will be mailed to the attorney by that agency. Actual issuance of a patent can only take place after an Issue Fee is paid to the PTO. A charge equivalent to roughly two hours attorney time will also be billed to the client for communications and other work involved in connection with issuance of a patent.Virtually each step of the procedure requires separate authorization from the client and the client can stop the procedure at any point. For example, after patentability research a client can decide not to file an application, or after an application is filed and a PTO Action issues a client can decide not to respond. Each increment of the work is separately billable, for example, the fee for preparing a patent application does not include any advance for future prosecution.

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