Patents

If you hope to profit from a new invention, you should consider patenting it. A U.S. patent gives you the right to prevent others from making, using, or selling the same invention within the United States for a time prescribed by the patent laws. If you wish to extend that protection internationally, you will need to file for patents in other countries as well. For an overview of the US and international patent options, see our Patent Flowchart.

Timely filing of a patent application is critical to ensuring protection of your invention. Patent applications must be filed with the U.S. Patent and Trademark Office (PTO) within one year of the invention's first domestic public use or offer of sale, or from the first date of publication anywhere in the world. The process can be both lengthy and complicated. Because most foreign countries have stricter requirements, if you are interested in patent protection outside the U.S., your U.S. patent application should be filed before any public disclosure or use of your invention.

Our firm has extensive experience in obtaining patents for both businesses and individual clients locally, nationally and internationally. We keep you informed and involved throughout the application process and assist in the safe maintenance and protection of your U.S. patent once it has issued. We will also help you extend your patent protection internationally if desired.

For representative patents prosecuted by Ganz Law, see Utility Patents, PCT Patents, and Plant Patents, and Design Patents.

What is Patentable?

To be patentable, your invention must be novel and not obvious to a person skilled in the field to which the invention relates. It may be something totally new under the sun, or an incremental improvement on an existing technology. Types of patents include:

Applying for a Patent

Your application must include a detailed written description called a patent specification. The patent system is designed to promote progress in science and technology by granting exclusive rights in exchange for full disclosure of inventions. U.S. law therefore requires that you explain your invention in a manner that allows others in your field to make and use it.

The U.S. Patent and Trademark Office (PTO) begins its examination of your application with a patent search, in which complex rules define "prior art" activities and publications, which are used to determine whether the invention is novel and non-obvious. In general, any publication or promotion of the invention before the patent application was filed is considered prior art. Applicants for U.S. patents have a strict duty to disclose to the PTO all prior art they are aware of that might materially impact an invention's patentability.

It is often a good idea for an applicant to conduct his or her own prior art search before applying for a patent. Such searching helps evaluate the novelty and non-obviousness of the invention, and may determine whether there are any existing patents that could block some or all aspects of the inventive technology. Even in cases where prior art turns up, it may be possible to overcome the obstacle by showing that you conceived and diligently reduced your invention to practice from a time earlier than the effective date of the prior art. (For this reason, inventors should maintain dated, authenticatable records of their work on an invention from the first conception of the invention.)

Most patent applications are rejected the first time around, usually for technicalities, because significant prior art has been found, or because the examiner fails to appreciate differences between the invention and prior art. Typically, it may take one to two years before the PTO issues a first examination report, called an "office action".

Amendments and arguments may be offered in response to the office action. It is not unusual to have several rounds of examination, requiring amendments and further arguments. If the application is still unsuccessful, you may appeal within the PTO and, if necessary, to a federal court. The entire patent examination process, called prosecution, may take between two and three years, although you may mark your invention "patent pending" from the day the application is filed. Patent rights may not be asserted until a patent is formally issued or granted. The use of "patent pending" offers no real legal protection, but serves as a warning to potential copiers that legal hurdles may lie ahead. Under recent changes in the patent laws, there is now a procedure for publication of all patent applications filed after November 29, 2000.

Publication will occur 18 months after filing, or sooner if requested and a fee is paid. If the U.S. patent application is not yet the subject of any foreign application, the U.S. applicant for patent may request that it not be published and be maintained in secret until such time as it is granted. However, one advantage of publication is that an infringer would generally be responsible for damages that occur after the publication date. For non-published applications, damages will not accrue until the issuance date of the patent, which may be many months after the date the patent would have been published.

For even faster access to the patent-pending mark, you may file a simplified provisional application without the detailed formalities and "claims" for the invention required in a complete patent application. However, even though informal in nature, the provisional application should comply with the written description, enablement and best mode requirements of the patent laws. Filing a provisional application may also give you priority status in a race with a competitor. Nevertheless, a provisional application automatically loses its legal status 12 months after its filing date. A complete patent application must therefore be filed within this 12-month period, along with any international applications desired.

All patent applications are kept secret by the PTO until they issue as Letters Patent or are otherwise published. Maintenance fees are required three times over the life of a utility patent to maintain the patent in force for its full term. No maintenance fees are required for plant or design patents.

International Patents

U.S. patent is only valid within the United States, its territories and possessions. If you want legal protection in other countries, you must file for such protection in the countries of your choice.

The issue of novelty is critical in international patenting. Almost every country demands that your invention be absolutely novel at the time you file your application. Any publicly available information about it prior to a patent application is considered prior art. This could prevent you from promoting your product until every international application is on file. Consequently, if you anticipate making any international applications, you should not publicly disclose your invention prior to filing for patent protection in your country of interest or filing an initial patent application in a country that belongs to the Paris Convention. If disclosure is necessary, it should be done under a non-disclosure agreement so that the disclosure is not a "public disclosure."

Most countries, including the United States, have signed the Paris Convention, an international treaty that recognizes patent applications for one year from the day they are filed in their home countries. This means that once you file your application in the United States, you can safely promote your invention for almost a year before filing for a patent in a Paris Convention member country.

To further facilitate international patenting, you may also file an application under the Patent Cooperation Treaty (PCT), which has been signed by more than 90 nations. Your application will be centrally handled, searched, published and examined by a single patent office. Afterwards, a report will be sent to every member nation in which you wish to file a patent application for examination, rendering the national process quicker, more uniform and less costly. In addition, the treaty extends the time before you must file national applications from 12 to 30 months of your home-country filing. Protection for European Union (EU) member countries can be sought under a single application to the European Patent Office.


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