The Patent Process

Berenato & White (including its predecessor firms) has procured over 2500 patents for its clients to protect their innovations.

Patent protection forms the cornerstone of most companies’ intellectual property programs.  Patent rights can drive the growth of startup, small, and medium sized companies, allowing them to compete against larger competitors.  Indeed, large companies, which have long recognized the competitive edge provided by patents, are some of the most prolific filers of patent applications. 

Patent rights protect innovation by granting the patent owner a right to exclude others from making, using, and selling in the United States and importing into the United States a product or practicing a method that “infringes” a claim of the patent.  Generally, this right lasts for 20 years from the filing date of a patent application underlying the patent.  In order to procure such protection, the innovator, whether an individual or corporation, must first submit the patent application to the U.S. Patent & Trademark Office (“PTO”) and undergo an examination process that can take several years before the PTO issues a patent.

Our attorneys at Berenato & White, LLC provide guidance and counsel throughout the patent procurement process, including in such decisions and counsel as:

 Determining what type of patent application to file

  • Utility patents are granted on any new and useful process, machine, manufacture, or composition of matter or any new and useful improvement thereof.  Utility patents protect structural, functional, or utilitarian features of an invention.
  • Design patents are granted on new, original, and ornamental designs for articles of manufacture, and general protect the appearance of such articles.  That is, a design patent protects how an article looks rather than its structural, functional, or utilitarian features.
  • Plant patents are granted on any asexually reproduced distinct and new variety of plant, including cultivated spores, mutants, hybrids and newly found seedlings, other than a tuber propagated plant or a plant found in an uncultivated state.

Assessing whether an idea is patentable:

There are three main hurdles to overcome in order to demonstrate to the PTO that an invention for a utility patent is patentable.  The invention must (1) meet the utility requirement of 35 U.S.C. § 101, (2) be novel over the “prior art” per 35 U.S.C.§ 102 and (3) be non-obvious to a person having ordinary skill in the art at the time the patent application is filed in accord with 35 U.S.C. § 103. 

At Berenato & White, we often recommend that our clients authorize us to commission a “patentability search” of the prior art before preparing a patent application.  Although such a search is not required, the search results can be very helpful in understanding the value of the patent and the scope of patent protection that may be available.  For example, the search may save the cost of preparing and filing a patent application if the invention is found in the prior art literature that is searched.  The search results also supply background information that allows a stronger patent application to be drafted.  Many clients find the search results and our analysis of those results instrumental in deciding how to proceed in protecting their intellectual property.

Choosing a provisional or non-provisional application:

  • Non-provisional applications:  A non-provisional application is a written document that includes a specification setting forth a written description of the invention, one or more claims, one or more drawings (when necessary), an oath or declaration, and filing, search, and examination fees.  The PTO examines non-provisional applications and, if the PTO determines the inventions claimed in an application are patentable, allows the applications and issues patents.
  • Provisional applications:  In contrast, provisional applications remain pending for a period of only 12 months, never mature into a patent, and are not examined by the PTO.  Within the 12-month period, the patent applicant must file a non-provisional application that claims the benefit of priority of the provisional application.  So why file a provisional application if a non-provisional application will need to be filed anyway within a year of the provisional application filing date?  There are several potential benefits to filing a provisional application.  For one, the provisional application establishes an effective filing date of a follow-up non-provisional application that claims its benefit of priority.  This earlier effective filing date may become important when attempting to overcome rejections based on intervening prior art references during examination of the non-provisional application.  The provisional application provides the inventor(s) with an additional 12 months in which to develop improvements to the invention.  Those improvements may be added to the specification and claims of the non-provisional application when it is filed in the PTO.  Further, a provisional application does not require claims and an oath or declaration, such that it can be less expensive to prepare than a non-provisional application, although caution should be practiced to ensure that the provisional application fully describes and enables the invention and provides “support” for the claims of the non-provisional application.  Finally, a provisional application also allows the applicant to mark goods covered by the provisional application with a “Patent Pending” label. 

Preparing a non-provisional application

A patent application must include a written description of the invention and of the manner and process of making and using the invention.  The description must be in such full, clear, concise and exact terms as to enable a person of ordinary skill in the technological area (or “art”) to which the invention pertains to make and the invention without undue experimentation.

Complying with these drafting requirements is much more entailed than simply filling out a form or checking certain boxes.  The specification desirably should include specific embodiments of the invention, whether in the form of schematics of a machine or experiments conducted in making and/or using a composition of matter.  The description should describe the specific improvement and convey information necessary for a complete understanding of the invention. 

A patent application contains multiple parts, including (1) the title, (2) cross-reference to related applications, (3) statement of federal sponsorship, (4) joint research agreement information, (5) a reference to sequence or computer program listings, (6) a background, (7) a brief summary of the invention, (8) a brief description of the drawings, (9), a detailed description of the invention, (10) one or more claims, and (11) an abstract.  Drawings may also be required, particularly with respect to mechanical and electrical inventions.  The drawings must satisfy formal requirements issued by the PTO.

Deciding whether to pursue foreign patent rights:

Generally, patents issued in the United States PTO extend to products made or methods practiced in the United States, used in the United States or sold in the United States.  With certain exceptions, U.S. patents do not protect against the sale and production of goods outside of the United States.  In a global economy, most companies want to obtain patent protection in at least Europe, Canada, China and Japan.  The European Patent Office, located in Munich, has the power to grant a so-called "bundle" of patents covering most of the major European countries.  Generally speaking, the process of obtaining foreign patents is slower and more cumbersome than the patent process in the United States.  The decision whether to obtain patents in other countries may often be deferred until almost one year after the initial filing of a U.S. patent application.  An international convention gives the applicant the benefit of the first filing date in a subscribing country so long as subsequent applications are filed within a year.  Most foreign countries require absolute novelty of an invention before granting a patent.  Publicly disclosing the invention prior to filing the U.S. patent application can place the invention in the public domain in many foreign countries and thus destroy absolute novelty.  As another option, an “International application” may be filed under the Patent Cooperation Treaty (PCT).

Responding to PTO communications such as office actions

In the case of a non-provisional utility patent application, it is not unusual for one to two years (and sometimes longer) to pass from the patent application filing date before the PTO substantively examines the patent application.  Typically, the PTO examiner will issue an office action rejecting some or all of the claims.  An initial rejection of the claims does not necessarily mean that a patent cannot be obtained.  However, the applicant will need to respond to the office action in writing.  The written response will often involve amendments to the claims and the submission of remarks disputing the rejections. 

Generally, the patent prosecution process for a utility application takes at least 2 years, more typically at least 3 years.  However, the process can take much longer if there are backlogs at the PTO, or if an impasse is reached with the examiner over the patentability of the invention.  As described below, there are several procedural devices that are available for expediting the examination process.

Expediting examination of the application

Backlogs of patent applications at the U.S. Patent & Trademark Office have resulted in a long patent examination process for many U.S. patents.  In some cases it may take two or more years before a patent application is substantively considered for the first time by a U.S. patent examiner.  However, there are several options available to a patent applicant to expedite this process.

  • Track I prioritized examination:  Section 11(h) of the Leahy-Smith American Invents Act (AIA) provides a patent applicant with a fee-based process for requesting the U.S. Patent & Trademark Office to “prioritize” examination of a patent application.  Also known as “Track I” prioritized examination, the request, if granted by the Patent Office, provides the patent application with special status whereby it is moved up in the queue of applications to be examined.  The goal of the Patent Office is to provide a final disposition on the application within twelve months, on average, of the date that prioritized status was granted.  “Final disposition” means that within twelve months one of the following will occur:  (i) mailing of a notice of allowance; (ii) mailing of a final office action, (iii) filing of a notice of appeal, (iv) completion of examination, (v) filing of a request for continued examination (RCE), or (vi) abandonment of the application.

The requirements for requesting prioritized examination include the following.  First, the application must be a utility or plant non-provisional application.  The procedure does not apply to design applications, reissue applications, provisional applications, or reexamination proceedings.  Second, the Track I prioritized examination request must be filed with the application or, if the application has already been filed, with a request for continued examination (RCE).  Third, the application must contain or be amended to contain no more than four independent claims and thirty claims total, and none of those claims may be multiple dependent claims. 

As of January 1, 2014, a request for prioritized examination costs $4,000 with discounts being available for small entities ($2,000) and micro-entities ($1,000).  The patent applicant must also pay other fees associated with the filing of a patent application, including the filing fee, search fee, examination fee, and any extra claim fees.

  • Petitions to make special:  The extra fee of Track I Prioritized Examination can be avoided if a patent application falls within a narrow list of requirements by which an application is deemed “special.”  A “Petition to Make Special” may be filed without a fee if the petition is based on the applicant’s age (65 years of age or older) or health, or if the invention will materially enhance the quality of the environment or contribute to the development or conservation of energy resources or contribute to countering terrorism.  Applications which have been made special will advance out of turn for examination and will continue to be treated as special throughout the entire prosecution of the application, except for appeal. 
     
  • Petitions to make special under accelerated examination:  Accelerated examination is not frequently selected by U.S. patent applicants, especially since the creation of Track I prioritized examination under the AIA.  The disfavor for accelerated examination is due to several factors.  First, an application submitted for accelerate examination is limited to three or fewer independent claims and twenty or fewer total claims, and the applicant is precluded from arguing the patentability of any dependent claim during appeal.  Second, at the time of filing, the applicant must provide a statement that a pre-examination search of U.S. patents and patent applications, foreign patent documents, and non-patent literature was conducted.  Third, the applicant must provide an accelerated examination support document that includes an Information Disclosure Statement citing the references most closely related to the subject matter of the claims.  For each reference, the support document must identify all the claim limitations that are disclosed by the reference, and must provide a detailed explanation of how each of the claims is patentable over the references.  In addition to the significant time and costs associated with preparing the support document, statements contained in the document potentially can be used against the applicant/patentee in a later litigation.
     
  • Patent prosecution highway:  The Patent Prosecution Highway (PPH) speeds up the examination process for corresponding applications filed in participating intellectual property offices.  For example, a patent applicant that has received a ruling from a participating foreign patent office, or when a corresponding PCT application has received a favorable Written Opinion, that at least one claim is allowable can use that final ruling to fast track examination in the U.S. Patent & Trademark Office.  The claims of the U.S. application must sufficiently correspond (or be amended to sufficiently correspond) to the allowed claim(s).  The PPH is only available if examination of the U.S. application has not yet begun. 

 

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