Patel & Alumit, Patent and Trademark: Attorney Search and Registration Services

A patent is a grant of the exclusive rights to an inventor; specifically the right, within the U.S. to exclude others from making, using, selling or importing the invention. A patent is considered personal property, and may be assigned or licensed by the owner

2. What are the different types of patents?

Utility patents are patents granted for any new, useful and non-obvious machine, material or process. Design patents are patents granted for any new and non-obvious design of an article of manufacture. In addition, the Patent Office issues plant patents on new varieties of asexually reproduced plants.

3. What is the term of a patent?

Utility Patents are normally valid for 20 years from the priority filing date –usually the original filing date – of a patent application. Design Patents are valid for a term of only 14 years. A patent term can be extended if the examination period exceeds a prescribed period of time.

4. What happens when the term of a patent expires?

When a patent on an invention expires or goes abandoned, the invention enters the public domain. The invention can then commercially exploited by others.

5. How do patents, trademarks and copyrights differ?

• A Patent is the grant of a limited monopoly to an inventor, to exclude others from making, using, selling or importing a patented invention or design

• A Trademark is a word, name, symbol or device which indicates the identity of the source of a product or service. A trademark prevents others from using a confusingly similar mark to market the same products or services.

• A Copyright is a bundle of rights regarding a creative work fixed in a tangible medium, such as a sound recording, text or film. A copyright grants the ‘owner’, the exclusive right to reproduce, copy, perform, display or prepare derivative works of the copyrighted work. Copyright registrations are issued by the U.S. Copyright Office rather than the Patent and Trademark Office.

6. Who can apply for a patent?

Only an inventor or inventors can apply for a patent. In order to obtain a patent, all co-inventors must submit oaths or declarations. If an inventor dies or becomes incapacitated after conceiving of an invention and reducing it to practice, the legal representative of the inventor can file the patent application on the inventor’s behalf.
If the inventor works for a company, only the inventor (employee) may apply for the patent. The Patent Office does not adjudicate questions of ownership of inventions under a work for hire, however the Patent Office will accept for recordation assignments of patent rights. If a person obtains a patent under false pretenses, the patent is invalid. Moreover, the applicant can be subjected to criminal prosecution.

7. What can be patented?

Any new, useful and non-obvious process, machine, material or composition of matter; or an improvement to any of these, can be the subject of a utility patent. Any new and non-obvious ornamental characteristic to an article of manufacture can be the subject of a design patent.

Ideas and abstract concepts cannot be patented. Only inventions that can be completely described so that they can be reproduced by a person of similar skill in the art of the invention as the inventor can be patented.

In addition, mathematical algorithms, physical phenomena, the laws of nature, perpetual motion machines, and inventions against public policy, such as doomsday devices cannot be patented.

8. What are the requirements of novelty and non-obvious?

Regarding novelty (originality), an invention cannot be patented if the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention by the applicant for a patent. Similarly, if the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country more than one year prior to the application for patent in the United States, it cannot be patented

Regarding non-obviousness, an invention is non-obvious if the subject matter sought to be patented would not be obvious to someone of similar skill in the art of the invention as the inventor.

9. What happens if an inventor publishes an invention prior to filing an application?

Once an invention is published; sold, shown to the public, or described in a printed publication, the inventor has one year from the first date of publication to file a patent application for the invention. If an invention has been published for more than one year, it is in the public domain.

10. What are the Functions of the United States Patent and Trademark Office?

The United States Patent and Trademark Office (USPTO, “PTO” or Office) is an agency organized under the U.S. Department of Commerce. The goals of the PTO are to:
• Grant patents to protect the rights of inventors
• Register trademarks to protect the identities of businesses
• Advise and assist other agencies of the government in matters involving intellectual property
• Promote industrial and technological progress through the preservation, classification, and dissemination of patent information
The main functions of the PTO regarding new inventions are to:

• Examine applications and grant patents
• Publish and disseminate patent information
• Record assignments of patents
• Maintain search files of U.S. and foreign patents
• Supply copies of patents and official records to the public
• Provide training to practitioners and applicants on patent statutes and regulations

11. Why do I need a patent attorney?

Hiring a patent attorney is not a requirement of the PTO. Inventors are free to draft and submit their own patent applications, and respond to office actions to eventually obtain a patent. However, preparing patent applications and conducting proceedings before the PTO can be a complex undertaking. Inventors frequently hire patent attorneys familiar with patent laws, rules, and Office practices and procedures to prosecute applications. Patent attorneys are also skilled in obtaining broader protection for an invention

12. How to choose a patent attorney?

Patent Attorneys are licensed attorneys who are also licensed to practice before the USPTO. Along with an expertise in patent law, a patent attorney should have at least some understanding of the technology used in an invention. For more inventions of more technological complexity, patent attorneys with particular expertise in the technology area of the invention may be necessary. Persons who are not licensed with the USPTO as patent agents or attorneys are not permitted to represent inventors before the USPTO.

13. What is the Document Disclosure Program – DDP?

A method of establishing evidence of the date an invention was conceived and reduced to practice. Disclosure Documents are retained for two years and destroyed, unless, they are referred to in a separate letter, or in a related patent application filed within those two years.

14. What are the necessary parts of a non-provisional patent application?

In order to be complete, a non-provisional patent application must include: A complete written description of the invention, the parts that comprise it and it is used – called a “specification” – and any drawings necessary to help explain the specification. An oath or declaration signed by the inventor or inventors. At least one claim; and the statutory filing fee

15. What is the proof of submission of a patent application?

Properly submitted patent applications are examined for completeness, and receive an application number and filing date. A filing receipt is issued by the Office –usually within one to three months – confirming the application number and filing date.

16. How is the filing date of an application for patent determined?

The filing date of an application for patent is:

a) The date on which a specification (including at least one claim) and any drawings necessary to understand the subject matter sought to be patented are received by the USPTO; or

b) The date on which the last part completing the application is received in the case of a previously incomplete or defective application.

17. What is a provisional application for a patent?

A provisional application permits an applicant to obtain a priority filing date for an invention. A provisional application must contain a detailed description of an invention, including any drawings – which may be informal – necessary to understand an invention; along with the proper filing forms and filing fee.

Provisional applications have a one year duration, at which time they become abandoned. There are no extensions of time or renewals. However, any (non-provisional) patent application filed while a provisional application is pending, on the same subject matter, and claiming the priority of the provisional application, will be able to use the filing date of the provisional.

If a non-provisional patent application is filed more than one year after the provisional application, the non-provisional cannot avail itself of the provisional filing date.

A provisional application is therefore an inexpensive way to obtain a filing date, and the legal right to the phrase “patent pending.” However, there are drawbacks to filing a provisional patent application. First, provisional applications are not examined, thereby lengthening the amount of time an application will be before the Office. Furthermore, since the term of a utility patent is 20 years from the filing date, the time period between filing a provisional application and a subsequent non-provisional application reduces the life of the patent. In addition, the 18 month publication date runs from the priority filing date, which would also be the filing date of the provisional application.

Finally, provisional applications cannot be used in conjunction with design patent applications, and a provisional application, in and of itself, will not result in an issued patent.

18. Are all patent applications made public?

No. By default, the Patent Office publishes all applications 18 months after the filing date. However, an inventor may make a non-publication request when a design or utility patent is filed, and the patent office will not publish the application.

A non-publication request may be filed with a design or utility application. Since provisional applications expire after one year, they are never published. All issued patents are published.

19. How to protect the inventor’s interest against misuse of the invention prior to the grant of the patent?

The filing of a patent application obtains a filing date for an applicant, and the legal right to use the phrase “patent pending” in conjunction with an invention. By affixing the words “patent pending” to an invention, the inventor provides notice that a patent is pending on the invention – that rights in the invention are being claimed.

However, an inventor does not obtain patent rights in an invention until a patent for the invention has been issued. Therefore, while a patent is pending on an invention, the inventor does not have the legal right to prevent others from making, using or selling the invention.

20. How does the USPTO conduct examination of patent applications?

Once a complete utility or design application for patent has been submitted to the Patent Office, it is assigned for examination to one of several examining technology centers. The application is then assigned to an individual examiner. The examiner analyzes the application to make sure that it meets the statutory requirements for a patent. The examiner will then either object to, or allow the application.

Once a decision has been reached by an examiner, an applicant is notified of the examiner’s decision.

21. What is an Office Action?

An office action is a written statement by an regarding an application. An office action may be a notice of allowance, or an objection to the application. In the case of an adverse office action, the reasons for the examiner’s rejection or objection will be stated, and an applicant is given a limited time to correct the application according to the office action, or make arguments regarding the office action.

22. Can the applicant request for reconsideration of decision?

Yes. The request for reconsideration must be made in writing and must distinctly and specifically point out the supposed errors in the examiner’s Office Action and should also reply to every ground of objection and rejection in the prior Office action.

23. Can the inventor file an amended application upon rejection of the first application?

Yes. The applicant must clearly point out why he or she thinks the amended claims are patentable in view of the objections made by examiner in the Office Action. He or she must also show how the claims as amended avoid such references or objections.

24. What is Final Rejection?

After the second or later consideration, the decision to reject (or other action) the patent application is made final. The applicant’s reply is then limited to an appeal in the case of rejection of any claim and further amendment is restricted. Petition may be taken to the Director in the case of objections or requirements not involved in the rejection of any claim.

25. Can an application for amendment be filed after the Final Rejection?

Yes. After final rejection or action, amendments may be made by canceling claims or complying with any requirement of form which has been made in an Office action. However, no amendment can be made as a matter of right in appealed cases. After decision on appeal, amendments can only be made as provided in the rules.

26. What is interference?

Interference is the process initiated by the USPTO in order to establish the veracity of the different claims as well as determine the ‘first inventor’, when two or more applications filed by different inventors stake claim to the same invention.

Interference proceedings may also be instituted between an application and a patent already issued, provided that the patent has not been issued, nor the application been published, for more than one year prior to the filing of the conflicting application, and provided also that the conflicting application is not barred from being patentable for some other reason.

27. What is “conception of the invention” and “reduction to practice?

Conception of the invention refers to the completion of the devising of the means for accomplishing the result. Reduction to practice refers to the actual construction of the invention in physical form.

28. What is Notice of Allowance?

Notice of Allowance is the written confirmation from the USPTO that the patent application is considered allowable. This can be made either at the first stage of examination or during subsequent stages of reconsideration.

The notice would also request the payment of the patent issue fee. If the patent issue fee is not paid within three months from the date of notice, the application will be regarded as abandoned.

29. Can patents be transferred or sold?

Yes. A patent is personal property and may be transferred, sold, mortgaged, bequeathed by a will or passed to the heirs of a deceased patentee. The patent law provides for the transfer or sale of a patent, or of an application for patent, by an instrument in writing.

30. What is an assignment?

An assignment is a written instrument through which a patent can be transferred, sold, mortgaged etc. as any other personal property. The assignee, when the patent is assigned to him or her, becomes the owner of the patent and has the same rights that the original patentee had.

An assignment, grant, or conveyance of any patent or application for patent should be acknowledged before a notary public or officer authorized to administer oaths or perform notaries’ acts.

31. What are the common types of assignments?

The patent may be transferred in full or in part. There may also be a grant that conveys the same character of interest as an assignment but only for a particularly specified part of the United States.

A mortgage of patent property passes ownership thereof to the mortgagee or lender until the mortgage has been satisfied and a retransfer from the mortgagee back to the mortgagor, the borrower, is made.

A conditional assignment also passes ownership of the patent and is regarded as absolute until canceled by the parties or by the decree of a competent court.

32. When to notify the assignments with the USPTO?

An assignment, grant, or conveyance of any patent or application for patent should be acknowledged before a notary public or officer authorized to administer oaths or perform notaries’ acts.

The details of the assignment, grant, or conveyance of a patent or an interest in a patent (or an application for patent) must be notified to the USPTO within three months from its date.

33. Can there be joint ownerships of patents?

Yes. Patents may be owned jointly by two or more persons and joint owner of a patent, no matter how small the part interest, may make, use, offer for sale and sell and import the invention for his or her own profit provided they do not infringe another’s patent rights, without regard to the other owners, and may sell the interest or any part of it, or grant licenses to others, without regard to the other joint owner, unless the joint owners have made a contract governing their relation to each other.

34. Can the patents be licensed?

Yes. The owner of a patent may grant licenses to others. A patent license agreement is in essence nothing more than a promise by the licensor not to sue the licensee. No particular form of license is required; a license is a contract and may include whatever provisions the parties agree upon, including the payment of royalties, etc.

35. What is infringement of patents?

Infringement of a patent is the unauthorized making, using, offering for sale, or selling any patented invention within the United States or U.S. Territories, or importing into the United States of any patented invention during the term of the patent.

If a patent is infringed, the patentee may sue for relief in the appropriate federal court and ask the court for an injunction to prevent the continuation of the infringement and may also ask for an award of damages.

36. What is Patent Marking?

Patent Marking is the marking of the word “Patent” along with the number of the patent, done by a patent holder or his licensed/authorized representative, who makes or sells patented articles. Failure to do this would mean that the patentee may not recover damages from an infringer, unless the infringer was duly notified of the infringement and continued to infringe after the notice.

37. What are ‘Patent Pending’ and ‘Patent Applied For’?

“Patent Applied For” or “Patent Pending” are phrases to give information that an application for patent has been filed in the USPTO. However, these do not have any legal effect. The protection afforded by a patent will start only upon the actual grant of the patent.

38. What is the Paris Convention for the Protection of Industrial Property?

It is an international treaty accepted by more than 140 countries, including the United States. The basic tenets of the Paris Convention for the Protection of Industrial Property are to:

• Provide the same rights in patent and trademark matters that it gives to its own citizens to people from other countries as well.

• Provide for the right of priority in the case of patents, trademarks and industrial designs (design patents). This gives the applicant the right to apply for protection in all the other member countries, within a certain period of time, based on a regular first application filed in one of the member countries. These later applications will be regarded as if they had been filed on the same day as the first application, provided the subsequent applications are filed within 12 months in the case of first applications for patent and six months in the case of industrial designs and trademarks.

39. What is Patent Cooperation Treaty?

The Patent Cooperation Treaty signed in Washington, D.C., in June of 1970 and which came into force on January 24, 1978, has more than 90 signatories now. The basic tenet of the Treaty is to facilitate the filing of applications for patent on the same invention in member countries through centralized filing procedures and a standardized application format.

The timely filing of an international application affords applicants an international filing date in each country which is designated in the international application and provides (1) a search of the invention and (2) a later time period within which the national applications for patent must be filed.

40. Is the US patent valid in a foreign country?

The patents from USPTO are valid within the territory of the United States and have no effect in a foreign country. An inventor who wishes patent protection in other countries must apply for a patent in each of the other countries or in regional patent offices.

41. Can an inventor in US file for a foreign patent before a patent application is made for grant of the US patent?

Yes. But, the applicant will need a license from the Director of the USPTO before applying for a patent in a foreign country. Such a license is also required if the foreign application is to be filed before the expiration of six months from the filing of an application in the United States, unless a filing receipt with a license grant is issued earlier.

A license is not required after six months of the U.S. filing unless the invention has been ordered to be kept secret. In such a case, the consent to the filing abroad must be obtained from the Director of the USPTO during the period the order of secrecy is in effect.

42. Can foreign applicants apply for patents in US?

The patent laws of the United States make no discrimination with respect to the citizenship of the inventor. Any inventor, regardless of his or her citizenship, may apply for a patent on the same basis as a U.S. citizen.

43. How can foreign applicants apply for the US Patent?

Foreign applicants can apply for US patents. The important facts to be kept in mind are:

• If any application for patent has been filed in any foreign prior to the application in the United States, the applicant should provide copy of the foreign application certified by the patent office of the country in which it was filed is to secure this right of priority.

• If no claim for foreign priority is made, details of all similar inventions filed more than a year before the filing in the United States should be included in the oath or declaration.

• An applicant in a foreign country can make the oath or affirmation before any diplomatic or consular officer of the United States, or before any officer having an official seal and authorized to administer oaths in the foreign country, whose authority shall be proved by a certificate of a diplomatic or consular officer of the United States.

• A foreign applicant can avail of the services of any patent attorney or agent who is

44. Can a US patent attorney or agent represent a foreign applicant?

Yes. Any patent attorney or agent, who is registered to practice before the United States Patent and Trademark Office, can represent foreign applicants.

45. Why are patents necessary?

Patents are important because it offers the following incentives and benefits to the inventors:

• Recognition for their creativity

• Financial reward, if the invention is commercially viable
The patents encourage further and continuous innovations that help to improve the quality of our lives.

46. What are the rights of a patent owner?

The patent gives the holder, the right to decide as to who can use the patented invention for the period in which the invention is protected. The invention cannot be made, used, distributed or sold without the authorization of the patent owner. The patent owner is also conferred the right to transfer, sell, mortgage or license the patent, just like any other personal property.

Intellectual Property Law Helping Businesses and Entrepreneurs Nationwide

Intellectual Property Law
Helping Businesses and Entrepreneurs Nationwide