Abandonment:
A patent application becomes abandoned for failure to file a complete and proper reply as the condition of the application may require within the time period provided under 37 CFR § 1.134 and § 1.136 unless an Office action indicates otherwise.
Abstract of the disclosure
A concise statement of the technical disclosure including that which is new in the art to which the invention pertains
Administrative Instructions
Set out the provisions and requirements in relation to the filing and processing of the international (patent) application under the PCT and are established by the Director General of WIPO
ADS
Application Data Sheet
Agent (patent)
(May be referred to as a practitioner or representative) - one who is not an attorney but is authorized to act for or in place of the applicant(s) before the Office, that is, an individual who is registered to practice before the Office.
will continue...
Regards
PP
AIPA
American Inventors Protection Act of 1999
Application number (patent)
The unique number assigned to a patent application when it is filed. The application number includes a two digit series code and a six digit serial number
Applicant
Inventor or joint inventors who are applying for a patent on their own invention, or the person mentioned in 37 CFR 1.42, 1.43 or 1.47 who is applying for a patent in place of the inventor.
Application (patent)
An application for patent filed under 35 U.S.C. 111(a) that includes all types of patent applications (i.e., utility, design, plant, and reissue) except provisional applications. The nonprovisional application establishes the filing date and initiates the examination process. A nonprovisional utility patent application must include a specification, including a claim or claims; drawings, when necessary; an oath or declaration; and the prescribed filing fee.
Assignment
A transfer of ownership of a patent application or patent from one entity to another. Record all assignments with the USPTO Assignment Services Division to maintain clear title to pending patent applications and patents.
Attorney
(May be referred to as a practitioner or representative) - an individual who is a member in good standing of the bar of any United States court or the highest court of any State and who is registered to practice before the Office.
Benefit claim
The claiming by an applicant in a nonprovisional application of a benefit of an invention disclosed in a prior-filed copending (under examination at the same time) provisional or nonprovisional application, or international application designating the U.S. for the purposes of securing an earlier-effective filing date for the nonprovisional application.
Bio-sequence listings
A document that must be included only if a nucleotide or amino acid sequence is part of the invention. With EFS, paper documents are not required for bio-sequence or subsequent bio-sequence submissions.
BPAI
Board of Patent Appeals and Interferences
BPAIIS
Board of Patent Appeals and Interferences Information System
Canceled claim
A claim that is canceled or deleted. "Canceled" is the status identifier that should be used when a claim is canceled in an application
Certificate of mailing
A certificate for each piece of correspondence mailed, prior to the expiration of the set period of time for response, stating the date of deposit with the U.S. Postal Service and including a signature
Chapter I
The first, mandatory phase under the Patent Cooperation Treaty that includes performance of an international-type search, issuance of an International Search Report, and publication of the application and Search Report by the International Bureau of WIPO
Chapter II
The second, optional phase under the Patent Cooperation Treaty that includes examination of the international application and issuance of an International Preliminary Examination Report.
CIP
Continuation-in-Part
Claims
Define the invention and are what aspects are legally enforceable. The specification must conclude with a claim particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention or discovery. The claim or claims must conform to the invention as set forth in the remainder of the specification and the terms and phrases used in the claims must find clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable (clearly understood ) by reference to the description. (See 37 CFR § 1.58(a)).
Classification
Patents are classified (organized) in the U.S. by a system using a 3 digit class and a 3 digit subclass to describe every similar grouping of patent art. A single invention may be described by multiple classification codes.
Coinventor
An inventor who is named with at least one other inventor in a patent application, wherein each inventor contributes to the conception (creation) of the invention set forth in at least one claim in a patent application.
Combination patent
A patent granted for an invention that unites existing components in a novel way
Common inventor
An inventor whose name is listed on multiple patent applications or granted patents, making the inventions at least partially the work of the same person.
Confirmation number
A four-digit number that is assigned to each newly filed patent application. The confirmation number, in combination with the application number, is used to verify the accuracy of the application number placed on correspondence filed with the Office to avoid misidentification of an application due to a transposition error (misplaced digits) in the application number. The Office recommends that applicants include the application's confirmation number (in addition to the application number) on all correspondence submitted to the Office concerning the application.
Contracting State
A national Office or an intergovernmental organization which is party to the Patent Cooperation Treaty.
Continuation
A second application for the same invention claimed in a prior nonprovisional application and filed before the first application becomes abandoned or patented
Continuing application
A continuation, divisional, or continuation-in-part patent application
Control No.
Unique number assigned to a patent reexamination request when it is filed, having a 2-digit series code (90 for ex parte reexamination requests; 95 for inter partes reexamination requests), and a 6-digit control number.
Counterpart
An application filed in a foreign patent office that is substantially similar to (like) the patent application filed with the USPTO and is based upon some or all of the same invention. The two applications would generally have the same applicant.
CRU
Central Reexamination Unit
Customer number
(Previously referred to as "payor number") - a number assigned by the Office that is used to simplify the submission of an address change, to appoint a practitioner, or to designate the fee address for a patent. Customer numbers are primarily used by attorneys and law firms, and must be requested using the "Request for Customer Number" form (PTO/SB/125).
Deceased inventor
A named inventor who has died prior to the filing of a patent application or during the prosecution of a patent application.
Declaration
a document in which an applicant for patent declares, under penalty of fine or imprisonment, or both (18 USC 1001), that (1) he or she is the original or sole inventor, (2) shall state of what country he or she is a citizen, (3) that he or she has reviewed and understands the contents of the specification and claims which the declaration refers to, and (4) acknowledges the duty to disclose information that is material to patentability as defined by 37 CFR § 1.56. An oath or declaration must be filed in each nonprovisional patent application.
Demand
Form PCT/IPEA/401, filed with an International Preliminary Examining Authority, demanding that an international application shall be the subject of an international preliminary examination.
Dependent claim
A claim that refers back to (depends on) and further limits a preceding dependent or independent claim. A dependent claim shall include every limitation of the claim from which it depends.
Design patent application
An application for a patent to protect against the unauthorized use of new, original, and ornamental designs for articles of manufacture
Design patent
May be granted to anyone who invents a new, original, and ornamental design for an article of manufacture
Designation
An indication made by applicant, in the Request for an International Application filed under the Patent Cooperation Treaty, as to the Contracting States in which protection for an invention is desired.
Disclaimer
A patentee, whether of the whole or any sectional interest therein, may, on payment of the fee required by law, make disclaimer (give up all or part of the owner's rights to enforce claims) of any complete claim , stating therein the extent of their interest in such patent. Such disclaimers are required to be in writing and recorded in the USPTO, and are considered as part of the original patent to the extent of the interest actually possessed by the disclaimant and by those claiming under him. Any patentee or applicant may disclaim or dedicate to the public the entire term, or any terminal part of the term (from a certain point in time through the projected end of the entire term), of the patent granted or to be granted. There are two types of disclaimers: a statutory disclaimer and a terminal disclaimer.
Disclosure
In return for a patent, the inventor gives as consideration a complete revelation (describes it) or disclosure of the invention for which protection is sought.
Disclosure document
The USPTO eliminated its Disclosure Document Program on February 1, 2007. For more information, see the Federal Register notice: http://www.uspto.gov/web/offices/com/sol/notices/71fr64636.pdf [PDF].
Divisional application
A later application for an independent or distinct invention disclosing and claiming (only a portion of and) only subject matter disclosed in the earlier or parent application.
Doctrine of equivalents
A judicially created theory for finding patent infringement when the accused process or product falls outside the literal scope of the patent claims. The essential objective inquiry is: “Does the accused product or process contain elements identical or equivalent to each claimed element of the patented invention?”
Drawing
Patent drawings must show every feature of the invention as specified in the claims. Omission of drawings may cause an application to be considered incomplete but are only required if drawings are necessary for the understanding of the subject matter sought to be patented.
Saturday, September 1, 2007
Patent FAQ
1. Is my invention patentable?
Your invention may be patentable if it meets certain requirements. First, the invention must fall within a category of invention that can be protected at all. Secondly it must be new, and sufficiently different from what others have done before. Thirdly, it must not have entered the public domain due to your own efforts to commercialize it.
2. What types of inventions can be patented?
You may patent a machine, an electronic circuit, a computer program, a process, a chemical composition, and many other useful articles or systems. You may patent a combination of known components, provided that the combination itself was not known before, and is not an obvious modification of what was known.
3. Are there inventions that can never be patented?
Yes. Certain kinds of ideas do not qualify. For example, the discoverer of a mathematical theorem is not entitled to a patent for the theorem. A pure mathematical algorithm, unconnected with a real-world problem, is not considered patentable.
However, sometimes an invention that might seem inherently unpatentable might turn out to be patentable anyway, if it is properly characterized in a patent application. Thus, a theorem of mathematics, while not patentable in itself, may still be protected when claimed as part of an automated method for solving a practical problem. Part of the job of the patent attorney is to characterize an invention so as to maximize the chance of securing a meaningful patent.
For many years, it was believed that methods of doing business were not patentable. But recent court decisions have held that a method of doing business may be patentable, provided that the method satisfies the requirements for patentability that apply to all other inventions. As a result of such court decisions, many patent applications relating to business methods have been filed.
4. How special does my invention have to be to deserve a patent?
First, to be patentable, the invention must be "new". This means that the invention must not have been described in a prior patent, or in any prior printed publication. The invention also must not have been generally known by others in the US.
Secondly, the invention must not be "obvious". In very general terms, an invention is "obvious" if the difference between the invention and the prior art would have been apparent to a person of ordinary skill in the relevant field. The question of "obviousness" is often a difficult and subjective one.
5. Do I need a design patent?
The patents described above are "utility" patents. A utility patent is what most people think of when they think of patents. A utility patent covers the way an object works. A design patent covers the way an object looks. A design patent protects only the appearance of a product, not its internal structure or its function.
Sometimes, the same idea can yield both a utility and a design patent application. But the two patents cover very different things.
Because a design patent covers only the appearance of a product, a design patent is usually a very limited form of protection. But it is also usually much less expensive and relatively easy to obtain. Also, if a design patent is infringed, it can sometimes be easier to collect damages than in the case of a utility patent.
Some inventors file both utility and design applications when the likelihood of obtaining a utility patent seems small.
Unless otherwise indicated in these materials, the word "patent" is meant to refer to a utility patent.
6. May I disclose the invention before it is patented?
It is best to keep your invention strictly confidential, at least until you file a patent application. If your invention is placed on sale, or advertised for sale, or sold, in the U.S., and more than one year passes, the invention is no longer patentable.
Thus, U.S. law gives you a one-year grace period. You may sell or advertise the invention, and still obtain a patent, provided that you file the patent application within one year of the first sale, advertisement, or offer.
If you disclose the invention before filing a patent application, a question may later arise concerning whether and when the invention was "on sale", and you may wish you hadn't made the disclosure.
Many times, an invention has been held to be "on sale" even when the inventor did not think it was "on sale". In fact, many major patent infringement suits have been won or lost just on this point. Be very careful in what you do with the invention before a patent application is filed. An "on sale" situation arises even if an offer is made in confidence. The best practice is to make no disclosure whatever until the application has been filed.
There are some exceptions to the one-year "on sale" rule. For example, the rule does not apply when the invention was sold only for experimental purposes. But you cannot count on the exception applying in your case.
If you are interested in foreign patents, be aware that the rules in most foreign countries are more strict. Your invention is not patentable in foreign countries if there has been any public disclosure, or any outright sale, before a patent application is filed. That is, in foreign countries, there is no one-year grace period. This is known as the rule of "absolute novelty". There are some exceptions to this rule, and you should not simply conclude that your foreign patent is barred, without first consulting a patent attorney. Also, most countries allow you to avoid the problem by filing an application in the U.S. before your first disclosure or sale, provided that you file in the foreign country within one year of your filing date in the U.S. In short, if you want foreign patent protection, be sure to file your U.S. application before you make any sale or public disclosure of the invention.
7. What about provisional patent applications?
A provisional patent application is a document that discloses the invention, and which stops the "clock" for purposes of the "on sale" rule. It can usually be filed for slightly less money than a regular patent application. However, a provisional application must be supplemented by a regular patent application within one year of filing. Thus, the cost advantage may be more imagined than real. Also, if you want foreign patents, the foreign patent applications must be filed within one year of the filing date of the provisional application, which is the same time within which you must supplement the provisional with a regular application.
8. Isn't there some kind of paper I can file inexpensively, in the Patent Office, to preserve my rights?
The U.S. Patent & Trademark Office allows inventors to file a "Disclosure Document" describing their inventions. But a Disclosure Document is not a patent application, and does not stop the clock for purposes of the "on sale" rule described above. It simply provides a means of establishing a date of invention, in the event of a dispute with another inventor who claims to have made the same invention at about the same time. In this sense, it analogous to sending yourself a certified letter containing your invention disclosure. A Disclosure Document is not examined by the Patent & Trademark Office, and does not create any patent rights.
9. What should be my first step in obtaining a patent?
Many inventors prefer to begin with a patentability search. As explained above, if the invention was patented or described in a prior publication, it is not patentable. The purpose of a search is to determine whether such patents or publications exist. Since the cost of a search usually is far less than the cost of a patent application, a search enables an inventor to spend a relatively small amount of money before deciding whether to spend a larger amount on a patent application.
A search is not mandatory. If you prefer, you may skip the search and file a patent application immediately. Some inventors have no time to do a search, because they need to file quickly, due to an approaching deadline. Others have confidence in their knowledge of their field, especially where they have recently obtained patents in the same area.
A search also has disadvantages. The search itself costs money, and if your invention is patentable, the total cost of obtaining the patent will be slightly greater with the search than without it. Also, no search is exhaustive; most patent searches are limited to U.S. patents only. A search covering all the literature ever published in the world would cost far more than the cost of a patent application. Thus, the results of a search cannot be taken as a guarantee that the invention is patentable. A search simply enables you to increase your level of confidence in the patentability of your invention.
10. What does a search cost?
A search costs about $875, including an opinion on patentability. The search is done at the U.S. Patent & Trademark Office, or on a computer database. Since most computer databases do not include the full texts of patents issued before the 1970s, a "key word" search will not reveal older patents. In some cases, it will be necessary to search for older patents in a different way, such as by using the Manual of Classification, maintained by the Patent & Trademark Office. The nature of the search depends, in part, on the nature of the invention. If the invention does not involve high technology, and if it could have been known before the 1970s, it may be appropriate to search the older records.
11. How do I apply for a patent?
Assuming you have done a search, and found nothing to bar the patent, or you have decided not to do a search and file an application, the next step is for me to write the patent application itself.
A patent application is a legal document which, if approved, is printed as a patent. In the case of utility patents, the application must include a detailed and complete written description of the invention, and a set of drawings (if the invention can be illustrated by drawings). The application also includes a set of claims, which are carefully written, single-sentence paragraphs which precisely define what the proposed patent will and will not cover.
The claims of the patent application are the most important part, but they are usually the most difficult to understand. Perhaps the most important reason to hire a patent attorney is to be sure that the claims are written correctly. If the claims are too narrow, a worthless patent may issue.
I prepare a draft patent application based on information I receive from the inventor(s), by phone, in writing, or in person. The draft may undergo multiple revisions, as the inventor makes corrections or has new ideas. When the inventor is finally satisfied with the application, I prepare the necessary papers to be signed, and the signed application is sent to the Patent & Trademark Office for filing.
Because it is not permissible to add new material to an application that has already been filed, and because the patent law requires that the application contain a complete disclosure, sufficient to teach someone skilled in the relevant art how to practice the invention, it is important that the application be complete. That is why a patent application may require several drafts.
12. How much does it cost to prepare the application?
There is no definite answer to this question because the time spent in writing an application can vary considerably, depending on the complexity of the invention, and on the number of drafts required. However, in the average case, in which the application is about 15-25 pages long, the project may take about 15-20 hours of my time. Since my hourly rate is $175, the cost of preparing and filing the application could be about $3500, possibly more and possibly less, plus government filing fees, plus the cost of drawings.
13. How much are the government fees?
Currently, the basic application fee for a "small entity", i.e. an independent inventor or a company having 500 or fewer employees, is $500, and can be higher, depending on the number of claims in the application. For a "large entity", the rates are doubled. Note that, though you may be a "small entity", your application may not qualify for small entity status if you have licensed the invention to a large company, or if a large company has any ownership interest, however small or indirect, in your invention.
14. How much do drawings cost?
The drawings, if prepared by my patent drafter, usually cost about $75-100 per sheet, but the per-sheet cost can be greater if the drawings are complex.
15. Is there a way to save on drawing costs?
Yes. Although the Patent & Trademark Office rules set strict standards for patent drawings, it is not necessary to file perfect drawings initially. It is permissible to file with informal drawings, as long as they are understandable to the Examiner. When the application is allowed, it then becomes necessary to submit formal drawings to replace the informal ones.
However, be aware that the formal drawings must not contain any "new matter" that was not in the original drawings. When the new drawings are submitted, the Patent & Trademark Office will check to be sure this requirement is met. In deciding whether or not to submit formal drawings at the time of first filing, one should consider whether the drawings themselves have significant informational content (i.e. do they illustrate a unique structure?), or whether they are more in the nature of flow charts and block diagrams, where the quality of the drawings is unrelated to the information they contain.
Also, because pending patent applications are now published, the requirements for drawings, even informal drawings, have become somewhat more strict in recent years. The drawings filed with the application must not be so informal that they cannot be properly reproduced in a published version of the application.
16. What happens after the application is filed?
The application is sent to a Patent Examiner. In mechanical cases, it often takes 8-12 months, or more, before an Examiner reviews the application. In some fields, such as electronics, computer software, information technology, or biotechnology, it may be as long as two years. A recent change to the patent law gives inventors a chance to recoup some of the patent term that would be otherwise lost due to excessive delays by the Patent & Trademark Office.
The Examiner does his own search, in an attempt to locate prior patents, or non-patent references, which anticipate or suggest what is recited in the claims of the application. If the Examiner finds such prior art, he issues an Official Action rejecting the claims.
A rejection occurs in probably 95% of all cases. Some patent applications are rejected repeatedly before a patent issues. The reason is that a patent is a government-granted monopoly, and public policy dictates that no monopoly be granted unless it is truly warranted by the inventor's creativity. The Examiner's job is to narrow the scope of the patent granted; the patent attorney's job is to obtain the broadest possible patent for the client.
Indeed, if the patent application is allowed on the first action, it may mean that the inventor did not ask for enough when filing the application. An initial allowance, though gratifying, should be reason to check to be sure that the claims are broad enough to protect the invention properly.
The process by which the attorney negotiates with the Examiner concerning the breadth of the patent is called "prosecution". (The latter term has nothing to do with litigation in court.)
17. What happens if my patent application is rejected?
First, keep in mind that a rejection is normal. The Examiner fully expects that you will respond and rebut the rejection.
The Official Action sets a deadline for response, usually three months, though this deadline may be extended by up to three more months, by payment of a government fee.
If the Examiner rejects the application because of prior art, it may be possible to amend the claims to overcome the rejection. Sometimes, the Examiner makes an error in interpreting a prior patent, or misunderstands the invention. In these cases, it may be enough simply to explain the error to the Examiner in writing.
The patent attorney prepares a response, usually called an "Amendment" to the application, and makes written arguments explaining why the invention is patentable.
The business of the Patent & Trademark Office is primarily conducted in writing, but the attorney may speak to the Examiner by telephone or in person, when circumstances so require.
Sometimes, the Examiner's only objections deal with formal matters, such as the attorney's choice of language in the claims. If so, a simple Amendment is usually all that is necessary to secure allowance. Often, the Examiner combines formal rejections with substantive ones, in the same action.
Sometimes, the Examiner's rejection appears nonsensical to the inventor. The Patent & Trademark Office employs thousands of examiners, who vary considerably in ability. Also, keep in mind that the Examiner is trained to analyze the words of the claims, because it is the claims that determine the scope of the patent. If the claims are reasonably broad (as they will be if the patent attorney is doing a good job), the Examiner is more likely to find prior art which contains the features recited in the claims.
18. What does it cost to prepare an Amendment?
There is no definite answer, because it depends on the amount of time taken to do the work. The time depends on how many references the Examiner has applied, and how many reasons for rejection he or she has given.
In most cases, an Amendment can be prepared in 5-10 hours, but there are some cases in which the amount is less than five hours, and there are many cases which require more than 10 hours. Thus, an Amendment may cost $850-1,750, or more.
19. What happens if the Examiner refuses to grant a patent?
It does happen that an Examiner cannot be persuaded, by written or oral arguments. Then, the only option may be an appeal.
An appeal is made to a board within the Patent & Trademark Office. The appeal may be conducted entirely in writing, but an oral hearing may be requested. Although the appeal board is part of the Patent & Trademark Office, it is sufficiently separated from the Examiner that it can be expected to render a reasonably impartial decision. Recent statistics show that the appeal board reverses the Examiner's decision in about one-third of the cases heard.
If the appeal board does not reverse the Examiner's decision, you can exercise further rights of appeal, in the courts. You may choose between two different kinds of court proceedings, one of which is a streamlined appeal to a higher court, and the other including a full trial on the issue of patentability. Naturally, the latter option is more expensive.
20. What happens when my patent application is allowed?
The Patent & Trademark Office issues a Notice of Allowance, which sets a three-month deadline for payment of the issue fee and publication fee. For small entities these fees total $1000. If the application was filed with informal drawings, it will also be necessary to supply formal drawings at this time. A patent usually issues about two or three months after payment of the issue fee.
21. How long is the patent in force?
For patent applications filed after June 7, 1995, the patent term begins on the date the patent issues, and ends on a date which is twenty years from the filing date.
There are some exceptions. For example, if the application claims the priority of an earlier application, its term is measured from the filing date of the earlier application. Also, utility patents are subject to payment of maintenance fees.
22. What are maintenance fees?
To keep a U.S. patent in force, a maintenance fee is due three times during the life of the patent. Such fees are due 3 1/2, 7 1/2, and 11 1/2 years after the issue date. If the maintenance fee is not paid, the patent expires. The fees become higher as the patent ages. For a limited time after a patent has lapsed for failure to pay a maintenance fee, it is possible to revive the patent, by paying a special surcharge to the government.
Maintenance fees are a relatively new phenomenon in the U.S., having been instituted in 1982. But most foreign countries have long required payment of annual maintenance fees, which are often called "annuities".
Regards
PP
Your invention may be patentable if it meets certain requirements. First, the invention must fall within a category of invention that can be protected at all. Secondly it must be new, and sufficiently different from what others have done before. Thirdly, it must not have entered the public domain due to your own efforts to commercialize it.
2. What types of inventions can be patented?
You may patent a machine, an electronic circuit, a computer program, a process, a chemical composition, and many other useful articles or systems. You may patent a combination of known components, provided that the combination itself was not known before, and is not an obvious modification of what was known.
3. Are there inventions that can never be patented?
Yes. Certain kinds of ideas do not qualify. For example, the discoverer of a mathematical theorem is not entitled to a patent for the theorem. A pure mathematical algorithm, unconnected with a real-world problem, is not considered patentable.
However, sometimes an invention that might seem inherently unpatentable might turn out to be patentable anyway, if it is properly characterized in a patent application. Thus, a theorem of mathematics, while not patentable in itself, may still be protected when claimed as part of an automated method for solving a practical problem. Part of the job of the patent attorney is to characterize an invention so as to maximize the chance of securing a meaningful patent.
For many years, it was believed that methods of doing business were not patentable. But recent court decisions have held that a method of doing business may be patentable, provided that the method satisfies the requirements for patentability that apply to all other inventions. As a result of such court decisions, many patent applications relating to business methods have been filed.
4. How special does my invention have to be to deserve a patent?
First, to be patentable, the invention must be "new". This means that the invention must not have been described in a prior patent, or in any prior printed publication. The invention also must not have been generally known by others in the US.
Secondly, the invention must not be "obvious". In very general terms, an invention is "obvious" if the difference between the invention and the prior art would have been apparent to a person of ordinary skill in the relevant field. The question of "obviousness" is often a difficult and subjective one.
5. Do I need a design patent?
The patents described above are "utility" patents. A utility patent is what most people think of when they think of patents. A utility patent covers the way an object works. A design patent covers the way an object looks. A design patent protects only the appearance of a product, not its internal structure or its function.
Sometimes, the same idea can yield both a utility and a design patent application. But the two patents cover very different things.
Because a design patent covers only the appearance of a product, a design patent is usually a very limited form of protection. But it is also usually much less expensive and relatively easy to obtain. Also, if a design patent is infringed, it can sometimes be easier to collect damages than in the case of a utility patent.
Some inventors file both utility and design applications when the likelihood of obtaining a utility patent seems small.
Unless otherwise indicated in these materials, the word "patent" is meant to refer to a utility patent.
6. May I disclose the invention before it is patented?
It is best to keep your invention strictly confidential, at least until you file a patent application. If your invention is placed on sale, or advertised for sale, or sold, in the U.S., and more than one year passes, the invention is no longer patentable.
Thus, U.S. law gives you a one-year grace period. You may sell or advertise the invention, and still obtain a patent, provided that you file the patent application within one year of the first sale, advertisement, or offer.
If you disclose the invention before filing a patent application, a question may later arise concerning whether and when the invention was "on sale", and you may wish you hadn't made the disclosure.
Many times, an invention has been held to be "on sale" even when the inventor did not think it was "on sale". In fact, many major patent infringement suits have been won or lost just on this point. Be very careful in what you do with the invention before a patent application is filed. An "on sale" situation arises even if an offer is made in confidence. The best practice is to make no disclosure whatever until the application has been filed.
There are some exceptions to the one-year "on sale" rule. For example, the rule does not apply when the invention was sold only for experimental purposes. But you cannot count on the exception applying in your case.
If you are interested in foreign patents, be aware that the rules in most foreign countries are more strict. Your invention is not patentable in foreign countries if there has been any public disclosure, or any outright sale, before a patent application is filed. That is, in foreign countries, there is no one-year grace period. This is known as the rule of "absolute novelty". There are some exceptions to this rule, and you should not simply conclude that your foreign patent is barred, without first consulting a patent attorney. Also, most countries allow you to avoid the problem by filing an application in the U.S. before your first disclosure or sale, provided that you file in the foreign country within one year of your filing date in the U.S. In short, if you want foreign patent protection, be sure to file your U.S. application before you make any sale or public disclosure of the invention.
7. What about provisional patent applications?
A provisional patent application is a document that discloses the invention, and which stops the "clock" for purposes of the "on sale" rule. It can usually be filed for slightly less money than a regular patent application. However, a provisional application must be supplemented by a regular patent application within one year of filing. Thus, the cost advantage may be more imagined than real. Also, if you want foreign patents, the foreign patent applications must be filed within one year of the filing date of the provisional application, which is the same time within which you must supplement the provisional with a regular application.
8. Isn't there some kind of paper I can file inexpensively, in the Patent Office, to preserve my rights?
The U.S. Patent & Trademark Office allows inventors to file a "Disclosure Document" describing their inventions. But a Disclosure Document is not a patent application, and does not stop the clock for purposes of the "on sale" rule described above. It simply provides a means of establishing a date of invention, in the event of a dispute with another inventor who claims to have made the same invention at about the same time. In this sense, it analogous to sending yourself a certified letter containing your invention disclosure. A Disclosure Document is not examined by the Patent & Trademark Office, and does not create any patent rights.
9. What should be my first step in obtaining a patent?
Many inventors prefer to begin with a patentability search. As explained above, if the invention was patented or described in a prior publication, it is not patentable. The purpose of a search is to determine whether such patents or publications exist. Since the cost of a search usually is far less than the cost of a patent application, a search enables an inventor to spend a relatively small amount of money before deciding whether to spend a larger amount on a patent application.
A search is not mandatory. If you prefer, you may skip the search and file a patent application immediately. Some inventors have no time to do a search, because they need to file quickly, due to an approaching deadline. Others have confidence in their knowledge of their field, especially where they have recently obtained patents in the same area.
A search also has disadvantages. The search itself costs money, and if your invention is patentable, the total cost of obtaining the patent will be slightly greater with the search than without it. Also, no search is exhaustive; most patent searches are limited to U.S. patents only. A search covering all the literature ever published in the world would cost far more than the cost of a patent application. Thus, the results of a search cannot be taken as a guarantee that the invention is patentable. A search simply enables you to increase your level of confidence in the patentability of your invention.
10. What does a search cost?
A search costs about $875, including an opinion on patentability. The search is done at the U.S. Patent & Trademark Office, or on a computer database. Since most computer databases do not include the full texts of patents issued before the 1970s, a "key word" search will not reveal older patents. In some cases, it will be necessary to search for older patents in a different way, such as by using the Manual of Classification, maintained by the Patent & Trademark Office. The nature of the search depends, in part, on the nature of the invention. If the invention does not involve high technology, and if it could have been known before the 1970s, it may be appropriate to search the older records.
11. How do I apply for a patent?
Assuming you have done a search, and found nothing to bar the patent, or you have decided not to do a search and file an application, the next step is for me to write the patent application itself.
A patent application is a legal document which, if approved, is printed as a patent. In the case of utility patents, the application must include a detailed and complete written description of the invention, and a set of drawings (if the invention can be illustrated by drawings). The application also includes a set of claims, which are carefully written, single-sentence paragraphs which precisely define what the proposed patent will and will not cover.
The claims of the patent application are the most important part, but they are usually the most difficult to understand. Perhaps the most important reason to hire a patent attorney is to be sure that the claims are written correctly. If the claims are too narrow, a worthless patent may issue.
I prepare a draft patent application based on information I receive from the inventor(s), by phone, in writing, or in person. The draft may undergo multiple revisions, as the inventor makes corrections or has new ideas. When the inventor is finally satisfied with the application, I prepare the necessary papers to be signed, and the signed application is sent to the Patent & Trademark Office for filing.
Because it is not permissible to add new material to an application that has already been filed, and because the patent law requires that the application contain a complete disclosure, sufficient to teach someone skilled in the relevant art how to practice the invention, it is important that the application be complete. That is why a patent application may require several drafts.
12. How much does it cost to prepare the application?
There is no definite answer to this question because the time spent in writing an application can vary considerably, depending on the complexity of the invention, and on the number of drafts required. However, in the average case, in which the application is about 15-25 pages long, the project may take about 15-20 hours of my time. Since my hourly rate is $175, the cost of preparing and filing the application could be about $3500, possibly more and possibly less, plus government filing fees, plus the cost of drawings.
13. How much are the government fees?
Currently, the basic application fee for a "small entity", i.e. an independent inventor or a company having 500 or fewer employees, is $500, and can be higher, depending on the number of claims in the application. For a "large entity", the rates are doubled. Note that, though you may be a "small entity", your application may not qualify for small entity status if you have licensed the invention to a large company, or if a large company has any ownership interest, however small or indirect, in your invention.
14. How much do drawings cost?
The drawings, if prepared by my patent drafter, usually cost about $75-100 per sheet, but the per-sheet cost can be greater if the drawings are complex.
15. Is there a way to save on drawing costs?
Yes. Although the Patent & Trademark Office rules set strict standards for patent drawings, it is not necessary to file perfect drawings initially. It is permissible to file with informal drawings, as long as they are understandable to the Examiner. When the application is allowed, it then becomes necessary to submit formal drawings to replace the informal ones.
However, be aware that the formal drawings must not contain any "new matter" that was not in the original drawings. When the new drawings are submitted, the Patent & Trademark Office will check to be sure this requirement is met. In deciding whether or not to submit formal drawings at the time of first filing, one should consider whether the drawings themselves have significant informational content (i.e. do they illustrate a unique structure?), or whether they are more in the nature of flow charts and block diagrams, where the quality of the drawings is unrelated to the information they contain.
Also, because pending patent applications are now published, the requirements for drawings, even informal drawings, have become somewhat more strict in recent years. The drawings filed with the application must not be so informal that they cannot be properly reproduced in a published version of the application.
16. What happens after the application is filed?
The application is sent to a Patent Examiner. In mechanical cases, it often takes 8-12 months, or more, before an Examiner reviews the application. In some fields, such as electronics, computer software, information technology, or biotechnology, it may be as long as two years. A recent change to the patent law gives inventors a chance to recoup some of the patent term that would be otherwise lost due to excessive delays by the Patent & Trademark Office.
The Examiner does his own search, in an attempt to locate prior patents, or non-patent references, which anticipate or suggest what is recited in the claims of the application. If the Examiner finds such prior art, he issues an Official Action rejecting the claims.
A rejection occurs in probably 95% of all cases. Some patent applications are rejected repeatedly before a patent issues. The reason is that a patent is a government-granted monopoly, and public policy dictates that no monopoly be granted unless it is truly warranted by the inventor's creativity. The Examiner's job is to narrow the scope of the patent granted; the patent attorney's job is to obtain the broadest possible patent for the client.
Indeed, if the patent application is allowed on the first action, it may mean that the inventor did not ask for enough when filing the application. An initial allowance, though gratifying, should be reason to check to be sure that the claims are broad enough to protect the invention properly.
The process by which the attorney negotiates with the Examiner concerning the breadth of the patent is called "prosecution". (The latter term has nothing to do with litigation in court.)
17. What happens if my patent application is rejected?
First, keep in mind that a rejection is normal. The Examiner fully expects that you will respond and rebut the rejection.
The Official Action sets a deadline for response, usually three months, though this deadline may be extended by up to three more months, by payment of a government fee.
If the Examiner rejects the application because of prior art, it may be possible to amend the claims to overcome the rejection. Sometimes, the Examiner makes an error in interpreting a prior patent, or misunderstands the invention. In these cases, it may be enough simply to explain the error to the Examiner in writing.
The patent attorney prepares a response, usually called an "Amendment" to the application, and makes written arguments explaining why the invention is patentable.
The business of the Patent & Trademark Office is primarily conducted in writing, but the attorney may speak to the Examiner by telephone or in person, when circumstances so require.
Sometimes, the Examiner's only objections deal with formal matters, such as the attorney's choice of language in the claims. If so, a simple Amendment is usually all that is necessary to secure allowance. Often, the Examiner combines formal rejections with substantive ones, in the same action.
Sometimes, the Examiner's rejection appears nonsensical to the inventor. The Patent & Trademark Office employs thousands of examiners, who vary considerably in ability. Also, keep in mind that the Examiner is trained to analyze the words of the claims, because it is the claims that determine the scope of the patent. If the claims are reasonably broad (as they will be if the patent attorney is doing a good job), the Examiner is more likely to find prior art which contains the features recited in the claims.
18. What does it cost to prepare an Amendment?
There is no definite answer, because it depends on the amount of time taken to do the work. The time depends on how many references the Examiner has applied, and how many reasons for rejection he or she has given.
In most cases, an Amendment can be prepared in 5-10 hours, but there are some cases in which the amount is less than five hours, and there are many cases which require more than 10 hours. Thus, an Amendment may cost $850-1,750, or more.
19. What happens if the Examiner refuses to grant a patent?
It does happen that an Examiner cannot be persuaded, by written or oral arguments. Then, the only option may be an appeal.
An appeal is made to a board within the Patent & Trademark Office. The appeal may be conducted entirely in writing, but an oral hearing may be requested. Although the appeal board is part of the Patent & Trademark Office, it is sufficiently separated from the Examiner that it can be expected to render a reasonably impartial decision. Recent statistics show that the appeal board reverses the Examiner's decision in about one-third of the cases heard.
If the appeal board does not reverse the Examiner's decision, you can exercise further rights of appeal, in the courts. You may choose between two different kinds of court proceedings, one of which is a streamlined appeal to a higher court, and the other including a full trial on the issue of patentability. Naturally, the latter option is more expensive.
20. What happens when my patent application is allowed?
The Patent & Trademark Office issues a Notice of Allowance, which sets a three-month deadline for payment of the issue fee and publication fee. For small entities these fees total $1000. If the application was filed with informal drawings, it will also be necessary to supply formal drawings at this time. A patent usually issues about two or three months after payment of the issue fee.
21. How long is the patent in force?
For patent applications filed after June 7, 1995, the patent term begins on the date the patent issues, and ends on a date which is twenty years from the filing date.
There are some exceptions. For example, if the application claims the priority of an earlier application, its term is measured from the filing date of the earlier application. Also, utility patents are subject to payment of maintenance fees.
22. What are maintenance fees?
To keep a U.S. patent in force, a maintenance fee is due three times during the life of the patent. Such fees are due 3 1/2, 7 1/2, and 11 1/2 years after the issue date. If the maintenance fee is not paid, the patent expires. The fees become higher as the patent ages. For a limited time after a patent has lapsed for failure to pay a maintenance fee, it is possible to revive the patent, by paying a special surcharge to the government.
Maintenance fees are a relatively new phenomenon in the U.S., having been instituted in 1982. But most foreign countries have long required payment of annual maintenance fees, which are often called "annuities".
Regards
PP
Patent Basics
What is Patent?
Patent, is a legal document granted by the government giving an inventor the exclusive right to make, use, and sell an invention for a specified number of years. Patents are also available for significant improvements on previously invented items.
The goal of the patent system is to encourage inventors to advance the state of technology by awarding them special rights to benefit from their inventions. Books, movies, and works of art cannot be patented, but protection is available for such items under the law of copyright. Patent law is one branch of the larger legal field known as intellectual property, which also includes trademark and copyright law.
Patent law centers round the concept of novelty and inventive step (or lack of obviousness). The right which they accord is to prevent all others, not just imitators but even independent devisors of the same idea from using the invention for the duration of the patent. The special potential of a patent is accordingly that it may be used to prevent all others from including any form of invention in their product and services. A patent thus poses serious difficulties for its competitors. This is why patents are not freely available for all industrial improvements but only what is judged to qualify as a patentable invention.
What is patentable?
To qualify for a patent, the invention must meet three basic tests. First, it must be novel, meaning that the invention did not
previously exist. Second, the invention must be non-obvious, which means that the invention must be a significant improvement to existing technology. Simple changes to previously known devices do not comprise a patentable invention. Finally, the proposed invention must be useful. Legal experts commonly interpret this to mean that no patent will be
granted for inventions that can only be used for an illegal or immoral purpose.
Some types of discoveries are not patentable. No one can obtain a patent on a law of nature or a scientific principle even if he or she is the first one to discover it. For example, Isaac Newton could not have obtained a patent on the laws of gravity, and Albert Einstein could not have patented his formula for relativity, E=mc2.
Under the law of the European Patent Convention (EPC), patents are only granted for inventions which are capable of industrial application, which are new and which involve an inventive step. An invention may be defined as a proposal for the practical implementation of an idea for solving a technical problem. An invention is capable of industrial application if it can be made or used in any kind of industry, including agriculture, as distinct from purely intellectual or aesthetic activity.
An invention is said to be new if, prior to the date of filing or to the priority date accorded to the application from an earlier application for the same invention, it was not already known to the public in any form (written, oral or through use), ie it did not form part of the state of the art. An invention is said to involve an inventive step if, in the light of what is already known to the public, it is not obvious to a so-called skilled person, ie someone with good knowledge and experience of the field.
Under the Indian patent law a patent can be obtained only for an invention which is new and useful. The invention must relate to a machine, article or substance produced by manufacture, or the process of manufacture of an article. A patent may also be obtained for an improvement of an article or of a process of manufacture. In regard to medicine or drug and certain classes of chemicals no patent is granted for the substance itself even if new, but a process of manufacturing and
substance is patentable. The application for a patent must be true and the first inventor or the person who has derived title from him, the right to apply for a patent being assignable.
What is not patentable?
Some inventions cannot be patented. Under the law of the European Patent Convention (EPC) the list of non-patentable subject-matter includes methods of medical treatment or diagnosis, and new plant or animal varieties. Further information on such fields can be obtained from a patent attorney. Nor may patents be granted for inventions whose exploitation would be contrary to public order or morality (obvious examples being land-mines or letter-bombs).The following are not
regarded as inventions: discoveries; scientific theories and mathematical methods; aesthetic creations, such as works of art or literature; schemes, rules and methods for performing mental acts, playing games or doing business; presentations of information; computer software.
Under the Indian law the following are non patentable (as mentioned under section 3 and 5 of Indian Patents Act, 1970):-
An invention which is frivolous or which claims anything obvious contrary to well established natural laws. An invention the primary or intended use of which would be contrary to law or morality or injurious to public heath. The mere discovery of a scientific principle or the formulation of an abstract theory.
The mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant.
A substance obtained by a mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance The mere arrangement or re-arrangement or duplication of known devices
each functioning independently of one another in a known way. A method or a process of testing applicable during the process of manufacture for rendering the machine, apparatus or other equipment more efficient or for the improvement or restoration of the existing machine, apparatus or other equipment or for the improvement or control of manufacture.
A method of agriculture or horticulture. Any process for the medicinal, surgical, curative, prophylactic or other treatment of human being or any process for a similar treatment of animals or plants to render them free of disease or to increase their economic value or that of their products.
No Patent shall be granted in respect of an invention relating to Atomic energy. Claiming substances intended for use, or capable of being used, as food or as medicine or drug Relating to substance prepared or produced by chemical processes (including Alloys, optical glass, semiconductor and inter-metallic compounds), no patent shall be granted in respect of claims for the substances themselves, but claims for the methods or processes of manufacture shall be patentable. The criteria under the US laws are also quite similar as above. Books, movies, and works of art cannot be patented, but protection is available for such items under the law of copyright.
History of Patents
The first patent law was passed by the city of Venice in 1474. It protected the interests of inventors by assuring them the right to their inventions and prohibiting unauthorised copying. In 1624, the Statute of Monopolies was enacted in England. This allowed patents to be granted for a limited period to the true and first inventor. The increasing number of national patent laws led in 1883 to the conclusion of the Paris Convention, providing a guarantee of equal treatment for patent applicants in all its member states. It was originally adopted by 20 countries from around the world and has since been adopted by most
others.
In addition, most of the worlds nations have signed several other treaties dealing with patent issues during the 20th century. For example, more than 120 countries have signed the 1994 Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS). This treaty strengthened legal protection for patents worldwide.
In the United States, patent law dates to 1641, when the first patents for inventions were issued by the Massachusetts Bay Colony for the manufacture of salt. The Constitution of the United States, which became effective in 1789, gave Congress the power to enact federal patent laws. Congress adopted the first patent law in 1790 as one of its first actions. It has frequently amended U.S. patent law since then. The current patent law was adopted in 1952 and is administered by the U.S.
Patent and Trademark Office (PTO), an agency within the Department of Commerce. Despite the early development of patent law in the United States, there was no central administrative office to determine the validity of U.S. patents until the PTO was established in 1836. Since then, the PTO has examined all applications for patents to decide whether they meet the requirements of the patent laws.
The Patent Act, 1970 came into force on 20.4.1972 replacing Indian Patents and Designs Act, 1911. The Patents Act, 1970 in comparison with Indian Patents and Designs Act, 1911 has far more reaching effect in some areas such as food, Drug and Medicines where all the patents granted under this category and deemed to be endorsed with the words License of Right. India has become a member of the Paris Convention and PCT w.e.f. 7.12.1998 and by virtue of this, the Head Office of
Patent Office & its Branch offices have become receiving offices for the purpose of international applications filed under PCT.
In view of these developments, the Patents Rules, 1972 have been amended by incorporating a new chapter IIA dealing with international application which can be filed at Head office of the Patent office at Calcutta or Branch Offices at Delhi, Chennai & Mumbai w.e.f. 17.11.99 as applicable. The present Act under Chapter IVA provides specific provisions for the grant of EMR (Exclusive Marketing Rights) with a view to fulfill its international obligation under the provisions of article
70.8 & 70.9 of TRIPs agreement which are in force w.e.f. 1.1.1995.
Patent Offices
A U.S. patent for an invention is the grant of a property right to the inventor(s), issued by the U.S. Patent and Trademark Office. Despite the early development of patent law in the United States, there was no central administrative office to determine the validity of U.S. patents until the PTO was established in 1836. Since then, the PTO has examined
all applications for patents to decide whether they meet the requirements of the patent laws.
The right conferred by the patent grant is, in the language of the statute and of the grant itself, "the right to exclude others from making, using, offering for sale, or selling" the invention in the United States or "importing" the invention into the United States.
To get a U.S. patent, an application must be filed in the U.S. Patent and Trademark Office. Since June 8, 1995, the United States Patent and Trademark Office (USPTO) has offered inventors the option of filing a provisional application for patent which was designed to provide a lower-cost first patent filing in the United States and to give U.S. applicants parity with foreign applicants under the GATT Uruguay Round Agreements.
A provisional application for patent is a U. S. national application for patent filed in the USPTO under 35 U.S.C. §111(b). It
allows filing without a formal patent claim, oath or declaration, or any information disclosure (prior art) statement. It provides the means to establish an early effective filing date in a non-provisional patent application filed under 35 U.S.C. §111(a). It also allows the term "Patent Pending" to be applied. A non provisional utility patent application must be in the English language or be accompanied by a verified translation in the English language and a fee set forth in 37 CFR §1.17(i).
Under the Indian Patents Act, 1970 sections 73-76 talk about Patent Office. It is the office along with its branches established to administer various provisions relating the grant of patent and maintenance of Register of patents under the Act. The Head Office of Patent Office is located at Calcutta and branch offices are located at Mumbai, Delhi & Chennai.
The Patent Office is under the charge of Controller General of Patents, Designs & Trade Marks who is the Controller of Patents for the purpose of the Act. The Central Government has power to specify for the purpose of facilitating the registration of Patents, the establishment of Head Office and branch offices at the places it may think fit. The Patent Offices and branch offices shall have seal of Patent Office. The Patent office and its Branches are having territorial jurisdiction on a
zonal basis as given in the introduction chapter.
Officers and employees of the Patent Offices, who are in service, are prohibited from requiring, taking any right or interest in a patent issued by the office directly or indirectly except by inheritance or bequest. The Officers and employees are also prohibited from furnishing information on a matter which is being dealt with under the Act and from assisting in the preparation of a document to be filed in the Patent Office under the Act or for conducting a search in the Patent office
records except when required or authorized by this Act or under the directions in writing of Central Government or Controller or by order of a Court.
The European Patent Office (EPO) grants European patents for the contracting states to the European Patent Convention (EPC), which was signed in Munich on 5 October 1973 and entered into force on 7 October 1977. It is the executive arm of the European Patent Organisation, an intergovernmental body set up under the EPC, whose members are the EPC
contracting states. The activities of the EPO are supervised by the Organisations Administrative Council, composed of delegates from the contracting states.
The European Patent Convention (EPC) makes it possible to obtain patent protection in up to 20 European countries on the basis of a single application. The applicant decides which countries the European patent should cover. European patents are granted by the European Patent Office (EPO) using a unitary and centralised procedure conducted in one of its three official languages English, French or German. They have the same legal effects as national patents in each country for which they are granted. European patents are cost-effective and time-saving so as to obtain sound protection in a range of European countries.
Identification of patents and patent applications.
An assignment relating to a patent must identify the patent by the patent number. An assignment relating to a national patent application must identify the national patent application by the application number (consisting of the series code and the serial number, e.g., 07/123,456). An assignment relating to an international patent application which designates the United States of America must identify the international application by the international application number (e.g., PCT/US90/01234).
If an assignment of a patent application filed under 1.53(b) is executed concurrently with, or subsequent to, the execution of the patent application, but before the patent application is filed, it must identify the patent application by its date of execution, name of each inventor, and title of the invention so that there can be no mistake as to the patent application intended. If an assignment of a provisional application under 1.53(c) is executed before the provisional application is filed, it must identify the provisional application by name of each inventor and title of the invention so that there can be no mistake as to the provisional application intended.
The patent or patent application to which an assignment relates must be identified by patent number or application number unless the assignment is executed concurrently with or subsequent to the execution of the application but before the application is filed. Then, the application must be identified by the date of execution, the name(s) of the inventors, and the title of the invention. If an assignment of a provisional application is executed before the provisional application
is filed, it must identify the provisional application by name(s) of the inventors and the title of the invention.
The Office makes every effort to provide applicants with the application numbers for newly filed patent applications as soon as possible. It is suggested, however, that an assignment be written to allow entry of the identifying number after the execution of the assignment. An example of acceptable wording is:
"I hereby authorize and request my attorney, (Insert name), of (Insert address), to insert here in parentheses (Application number, filed) the filing date and application number of said application when known."
Filing of Patents
USA
To obtain patent protection in the United States, an inventor must file a patent application with the PTO. This application has three parts: (1) the specification, which gives a general description of the invention; (2) the claims, which provide more detailed statements explaining exactly how the invention works or is assembled; and (3) drawings that illustrate the invention. A specially trained official, called a patent examiner, reviews the application to determine if it qualifies for a patent.
The applicant receives no patent rights until the PTO approves and issues the patent. During the patent examination process, the patent examiner may ask the applicant to answer various questions about the invention. The law requires the patent applicant to disclose all information in his or her possession that is relevant to whether the patent should be issued. Because this process often goes back and forth several times between the applicant and the examiner, a patent examination can be very time-consuming and the legal fees can be expensive.
A provisional application for patent has a pendency lasting 12 months from the date the provisional application is filed. The 12-month pendency period cannot be extended. Therefore, an applicant who files a provisional application must file a corresponding non-provisional application for patent during the 12-month pendency period of the provisional application in order to benefit from the earlier filing of the provisional application. In accordance with 35 U.S.C. §119(e), the corresponding non-provisional application must contain or be amended to contain a specific reference to the provisional application.
However, converting a provisional application to a non-provisional application (versus filing a non-provisional application claiming the benefit of the provisional application) will have a negative impact on patent term. The term of a patent issuing from a non-provisional application resulting from the conversion of a provisional application will be measured from the original filing date of the provisional application. By filing a provisional application first, and then filing a corresponding non-provisional application that references the provisional application within the 12-month provisional application pendency period, a patent term endpoint may be extended by as much as 12 months.
The provisional application must be made in the name(s) of all of the inventor(s). It can be filed up to one year following the date of first sale, offer for sale, public use, or publication of the invention. (These pre-filing disclosures, although protected in the United States, may preclude patenting in foreign countries.)
A filing date will be accorded to a provisional application only when it contains:
A written description of the invention, complying with all requirements of 35 U.S.C. §112 ¶ 1 and Any drawings necessary to understand the invention, complying with 35 U.S.C. §113. If either of these items are missing or incomplete, no filing date
will be accorded to the provisional application.
To be complete, a provisional application must also include the filing fee as set forth in 37 C. F. R. 1.16(k) and a cover sheet identifying:
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 US Government agency that has a property interest in the application.
A non provisional utility patent application must include a specification, including a claim or claims; drawings, when necessary;
an oath or declaration; and the prescribed filing fee. A complete non provisional utility patent application should contain the elements listed below:
Utility Patent Application Transmittal Form or Transmittal Letter
Fee Transmittal Form and Appropriate Fee
Application Data Sheet (see 37 CFR § 1.76)
Specification (with at least one claim)
Drawings (when necessary)
Oath or Declaration
Nucleotide and/or Amino Acid Sequence Listing (when necessary)
If the patent examiner finds that the invention meets the three basic legal tests viz., novelty, non obviousness and usefulness the PTO will grant a patent. Under current U.S. law, a patent is valid for 20 years from the date the patent application is filed. The patent is granted to the individual or individuals who made the invention. If that person is an employee who did the work as part of a job, however, the employer has a right to use the invention as well. A patent only grants rights within the jurisdiction that issued it. Therefore, a U.S. patent will not provide any rights in other countries.
A patent application becomes abandoned for failure to file a complete and proper reply as the condition of the application may require within the time period provided under § 1.134 and § 1.136 unless an Office action indicates otherwise. Abandonment may be either of the invention or of an application. An abandoned application, in accordance with 37 CFR §§ 1.135 and 1.138, is one which is removed from the Office docket of pending applications. An application that has been declared abandoned is "dead" and no longer pending. Abandonment occurs under several circumstances. The most common reason is when the USPTO does not receive a response to an Office action letter from an applicant within 6
months from the date the Office action letter was mailed.
The U.S. government grants patents for machines; compositions of matter, such as new chemical compounds to be used in industry; manufactured items; and industrial processes, provided they meet a number of strict legal tests. Patents are also available for significant improvements on previously invented items. Special patents can be obtained for the invention or discovery and asexual reproduction of certain distinct and new types of vegetation.
Patents may also be granted for certain types of industrial designs, such as a distinct tread pattern on the soles of hiking boots or tennis shoes. Computer programs have been granted patent protection, as have various living organisms, such as specialized mice that were bred to help in cancer research. Books, movies, and works of art cannot be patented, but protection is available for such items under the law of copyright.
Europe
Under the law of the European Patent Convention (EPC), patents are only granted for inventions which are capable of industrial application, which are new and which involve an inventive step. A European patent can be granted on the basis of a direct European patent application, which may be a first filing or, more commonly, one claiming the priority of a
national application filed within the previous 12 months. A European patent application can also be derived from an international application filed under the Patent Cooperation Treaty (Euro-PCT application), either with or without a priority claim.
The Patent Cooperation Treaty (PCT) offers a simplified patent application procedure for over 100 countries worldwide. It enables inventors to file a single international application designating many countries, instead of having to file separately for national or regional patents. In the international phase, an international search and on request international preliminary examination is performed. In the national or regional phase, the patent granting procedure is then carried out by the relevant national or regional patent offices. As a regional office, the EPO also grants European patents on the basis of international applications filed under the PCT.
All the EPC contracting states offer the possibility, as a first step, of applying for a national patent. Filing a patent application
with a national office gives the advantage of a relatively inexpensive foot in the door and allows applicants to deal with a patent authority which is local and speaks their own language. If they decide that they also need protection in other countries, they then have 12 months to file applications for the same invention elsewhere and claim the benefit
of the filing date of the first application (priority claim).
European patent applications may be filed either with the European Patent Office in Munich, The Hague or Berlin, or with national patent offices in the contracting states. Applicants may, within 12 months of the date on which a national or European patent application was filed, claim for the same invention the date of this first application for a subsequent national or European filing. The application is published 18 months after the date on which the European or national first
application was filed (priority date). The search report is published either with the application or later on. Applicants then have six months to decide whether or not to pursue their application by requesting substantive examination.
The three criteria for patentability are novelty, inventive step, and industrial applicability. If a European patent is granted,
competence is transferred to the designated contracting states, where it affords the same level of legal protection as a national patent. On average it takes 44 months to obtain a European patent. Under certain circumstances more rapid processing is possible at no extra cost. A European patent is valid for 20 years from the date on which the application was filed.
Within nine months of the date of grant, any third party may file opposition against a patent they believe does not comply with the substantive provisions of the EPC. The EPO opposition division's decision in such matters holds good in all the contracting states designated for the patent concerned. Appeals may be lodged against the decisions of the Receiving Section, the examining divisions and the opposition divisions. The members of the boards of appeal of the EPO are
impartial, their decisions being governed solely by the provisions of the EPC. Where necessary, cases may be referred to the Enlarged Board of Appeal as the body responsible for ensuring uniform application of the law.
The mission of the EPO is to support innovation, competitiveness and economic growth for the benefit of the citizens of Europe. Its task is to grant European patents for inventions, on the basis of a centralised procedure. By filing a single application in one of the three official languages (English, French and German) it is possible to obtain patent protection in some or all of the EPC contracting states.
The European Patent Office (EPO) grants European patents for the contracting states to the European Patent Convention (EPC), which was signed in Munich on 5 October 1973 and entered into force on 7 October 1977. It is the executive arm of the European Patent Organisation, an intergovernmental body set up under the EPC, whose members are the EPC contracting states. The activities of the EPO are supervised by the Organisations Administrative Council, composed of delegates from the contracting states.
The wide-ranging economic significance of patents can be derived from the fact that patentees can prevent competitors from exploiting their inventions for up to 20 years. This enables them to recoup their development costs and gives them enough time to get a fair return on their investment. Effective patent protection is a stimulus to R&D and a key requirement for raising venture capital. It fosters technical innovation, which is crucial to competitiveness and overall economic
growth.
India
In India as per the Patent Act of 1970, an application for a patent may be made by the actual inventor of the invention, or an
assignee of the right to make an application or a legal representative of either. It is the person who first applies for a patent who is entitled to the grant. A prior inventor of the invention who applies subsequently will not get the patent as against the first applicant. A person who has merely communicated the idea to another, who actually gave practical shape to the idea and developed the invention, cannot claim to be the first and true inventor. A foreign national resident abroad is not prohibited from making an application and obtaining a Patent in India.
An application for a patent in the prescribed form along with the prescribed fee should be filed in appropriate office of the patent office. An application is required to be filed according to the territorial limits where the applicant or the first mentioned applicant in case of joint applicants for a patent normally resides or has domicile or has a place of business or the place from where the invention actually originated. If the applicant for the patent or party in a proceeding having no business places or domicile in India, the appropriate office will be according to the address of service in India given by the applicant or party in a proceeding.
Patent Office Branch, Mumbai- The States of Gujarat, Goa, Maharashtra, Madhya Pradesh and the Union Territories of Daman and Diu and Dadra and Nagar Haveli
Patent Office Branch, New Delhi- The State of Haryana, Himachal Pradesh,Jammu& Kashmir, Punjab, Rajasthan, Uttar Pradesh and Delhi and the Union Territory of Chandigarh.
Patent Office Branch, Chennai -The States of AndhraPradesh Karnataka, Kerala, Tamilnadu and Pondicheri and the Union Territories of Laccadive, Minicoy and Aminidivi Islands.
Patent Office (Head Office), Kolkata - Rest of India
The application should be accompanied by a provisional or complete specification. A provisional specification should describe the invention only briefly and need not contain the claims. Where the application is accompanied by a provisional specification, a complete specification should be filed within 12 months from the date of filing the application. If this is not done, the application will deemed to be abandoned.
The complete specification should fully and particularly describe the invention and the method by which it is to be carried out. It should disclose the best method of performing the invention known to the applicant and end with a claim or claims defining the scope of the invention for which protection is claimed. The claim should relate to single invention. They should be clear and be fairly based on the matter disclosed in the specification. The specification should be accompanied by drawings where appropriate and necessary. The specification should relate to single invention.
The application is examined by examiners of patents to see whether it complies with the requirements of the Act and the Rules, whether there is any lawful ground of objection to the grant of patent, and whether the invention has already been published or claimed by any other person. The examiner makes a search in publications available in the Patent Office and specification of prior applications and Patents to see whether the same invention has already been published or claimed or is the subject matter of existing or expired patents.
After examination of the application, the Patent Office will communicate to the applicant, the objections if any to grant of a
patent. The objections generally relate to the drafting of the specifications and claims, anticipation of any of the claims in prior publication of any specification or claims, or documents. In many cases these objections can be overcome by suitably amending the description of the invention and the claims and in some cases by insertion of the reference to the prior specification number. If the objections are not satisfactorily met, the Controller of Patents, after giving an
opportunity of hearing to the applicant will refuse the application.
Where the application has satisfactorily removed the official objections the controller will accept the complete specification and advertise it in the Official Gazette. From the date of acceptance to the date of sealing of the patent the applicant will get the benefits of the grant except that he will not be entitled to institute infringement proceedings until the patents is sealed. Any person interested may give notice of opposition within three months from the date of advertisement in the Official Gazette. The Controller will forward the copy a copy of the notice of opposition to the applicant who may file their evidence in support of their respective cases and the matter will be heard and decided.
Where an application is accepted either without opposition, a patent will be granted if a request for sealing is made by the
applicant. An inventor, if he so desires, may make a request for mentioning his name in the patent. The Controller, if satisfied, will cause his name to be mentioned as inventor in the patent granted, in the complete satisfaction and in the register of patents. The mention of the inventors name in the patent will not confer or derogate from any rights under the patent.
Under Indian law the term of patent is not the same for all kinds of invention as in most of other developed countries. In respect of process patents relating to drugs and fruits, the term is five years from the date of sealing the patents or seven years from the date of patent i.e. the date of filing the complete specifications whichever is shorter. In respect of all other patents the term is 14 years from the date of patent.
A patent can be kept alive only by paying the renewal fee from time to time. Also in case of any improvement in or modification of a previous invention already patented, a patent called patent of addition may be obtained. The term of the patent of addition will run concurrently and terminate with the main patent. No renewal fee is payable so long as the main patent remains in force.
Regards
PP
Patent, is a legal document granted by the government giving an inventor the exclusive right to make, use, and sell an invention for a specified number of years. Patents are also available for significant improvements on previously invented items.
The goal of the patent system is to encourage inventors to advance the state of technology by awarding them special rights to benefit from their inventions. Books, movies, and works of art cannot be patented, but protection is available for such items under the law of copyright. Patent law is one branch of the larger legal field known as intellectual property, which also includes trademark and copyright law.
Patent law centers round the concept of novelty and inventive step (or lack of obviousness). The right which they accord is to prevent all others, not just imitators but even independent devisors of the same idea from using the invention for the duration of the patent. The special potential of a patent is accordingly that it may be used to prevent all others from including any form of invention in their product and services. A patent thus poses serious difficulties for its competitors. This is why patents are not freely available for all industrial improvements but only what is judged to qualify as a patentable invention.
What is patentable?
To qualify for a patent, the invention must meet three basic tests. First, it must be novel, meaning that the invention did not
previously exist. Second, the invention must be non-obvious, which means that the invention must be a significant improvement to existing technology. Simple changes to previously known devices do not comprise a patentable invention. Finally, the proposed invention must be useful. Legal experts commonly interpret this to mean that no patent will be
granted for inventions that can only be used for an illegal or immoral purpose.
Some types of discoveries are not patentable. No one can obtain a patent on a law of nature or a scientific principle even if he or she is the first one to discover it. For example, Isaac Newton could not have obtained a patent on the laws of gravity, and Albert Einstein could not have patented his formula for relativity, E=mc2.
Under the law of the European Patent Convention (EPC), patents are only granted for inventions which are capable of industrial application, which are new and which involve an inventive step. An invention may be defined as a proposal for the practical implementation of an idea for solving a technical problem. An invention is capable of industrial application if it can be made or used in any kind of industry, including agriculture, as distinct from purely intellectual or aesthetic activity.
An invention is said to be new if, prior to the date of filing or to the priority date accorded to the application from an earlier application for the same invention, it was not already known to the public in any form (written, oral or through use), ie it did not form part of the state of the art. An invention is said to involve an inventive step if, in the light of what is already known to the public, it is not obvious to a so-called skilled person, ie someone with good knowledge and experience of the field.
Under the Indian patent law a patent can be obtained only for an invention which is new and useful. The invention must relate to a machine, article or substance produced by manufacture, or the process of manufacture of an article. A patent may also be obtained for an improvement of an article or of a process of manufacture. In regard to medicine or drug and certain classes of chemicals no patent is granted for the substance itself even if new, but a process of manufacturing and
substance is patentable. The application for a patent must be true and the first inventor or the person who has derived title from him, the right to apply for a patent being assignable.
What is not patentable?
Some inventions cannot be patented. Under the law of the European Patent Convention (EPC) the list of non-patentable subject-matter includes methods of medical treatment or diagnosis, and new plant or animal varieties. Further information on such fields can be obtained from a patent attorney. Nor may patents be granted for inventions whose exploitation would be contrary to public order or morality (obvious examples being land-mines or letter-bombs).The following are not
regarded as inventions: discoveries; scientific theories and mathematical methods; aesthetic creations, such as works of art or literature; schemes, rules and methods for performing mental acts, playing games or doing business; presentations of information; computer software.
Under the Indian law the following are non patentable (as mentioned under section 3 and 5 of Indian Patents Act, 1970):-
An invention which is frivolous or which claims anything obvious contrary to well established natural laws. An invention the primary or intended use of which would be contrary to law or morality or injurious to public heath. The mere discovery of a scientific principle or the formulation of an abstract theory.
The mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant.
A substance obtained by a mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance The mere arrangement or re-arrangement or duplication of known devices
each functioning independently of one another in a known way. A method or a process of testing applicable during the process of manufacture for rendering the machine, apparatus or other equipment more efficient or for the improvement or restoration of the existing machine, apparatus or other equipment or for the improvement or control of manufacture.
A method of agriculture or horticulture. Any process for the medicinal, surgical, curative, prophylactic or other treatment of human being or any process for a similar treatment of animals or plants to render them free of disease or to increase their economic value or that of their products.
No Patent shall be granted in respect of an invention relating to Atomic energy. Claiming substances intended for use, or capable of being used, as food or as medicine or drug Relating to substance prepared or produced by chemical processes (including Alloys, optical glass, semiconductor and inter-metallic compounds), no patent shall be granted in respect of claims for the substances themselves, but claims for the methods or processes of manufacture shall be patentable. The criteria under the US laws are also quite similar as above. Books, movies, and works of art cannot be patented, but protection is available for such items under the law of copyright.
History of Patents
The first patent law was passed by the city of Venice in 1474. It protected the interests of inventors by assuring them the right to their inventions and prohibiting unauthorised copying. In 1624, the Statute of Monopolies was enacted in England. This allowed patents to be granted for a limited period to the true and first inventor. The increasing number of national patent laws led in 1883 to the conclusion of the Paris Convention, providing a guarantee of equal treatment for patent applicants in all its member states. It was originally adopted by 20 countries from around the world and has since been adopted by most
others.
In addition, most of the worlds nations have signed several other treaties dealing with patent issues during the 20th century. For example, more than 120 countries have signed the 1994 Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS). This treaty strengthened legal protection for patents worldwide.
In the United States, patent law dates to 1641, when the first patents for inventions were issued by the Massachusetts Bay Colony for the manufacture of salt. The Constitution of the United States, which became effective in 1789, gave Congress the power to enact federal patent laws. Congress adopted the first patent law in 1790 as one of its first actions. It has frequently amended U.S. patent law since then. The current patent law was adopted in 1952 and is administered by the U.S.
Patent and Trademark Office (PTO), an agency within the Department of Commerce. Despite the early development of patent law in the United States, there was no central administrative office to determine the validity of U.S. patents until the PTO was established in 1836. Since then, the PTO has examined all applications for patents to decide whether they meet the requirements of the patent laws.
The Patent Act, 1970 came into force on 20.4.1972 replacing Indian Patents and Designs Act, 1911. The Patents Act, 1970 in comparison with Indian Patents and Designs Act, 1911 has far more reaching effect in some areas such as food, Drug and Medicines where all the patents granted under this category and deemed to be endorsed with the words License of Right. India has become a member of the Paris Convention and PCT w.e.f. 7.12.1998 and by virtue of this, the Head Office of
Patent Office & its Branch offices have become receiving offices for the purpose of international applications filed under PCT.
In view of these developments, the Patents Rules, 1972 have been amended by incorporating a new chapter IIA dealing with international application which can be filed at Head office of the Patent office at Calcutta or Branch Offices at Delhi, Chennai & Mumbai w.e.f. 17.11.99 as applicable. The present Act under Chapter IVA provides specific provisions for the grant of EMR (Exclusive Marketing Rights) with a view to fulfill its international obligation under the provisions of article
70.8 & 70.9 of TRIPs agreement which are in force w.e.f. 1.1.1995.
Patent Offices
A U.S. patent for an invention is the grant of a property right to the inventor(s), issued by the U.S. Patent and Trademark Office. Despite the early development of patent law in the United States, there was no central administrative office to determine the validity of U.S. patents until the PTO was established in 1836. Since then, the PTO has examined
all applications for patents to decide whether they meet the requirements of the patent laws.
The right conferred by the patent grant is, in the language of the statute and of the grant itself, "the right to exclude others from making, using, offering for sale, or selling" the invention in the United States or "importing" the invention into the United States.
To get a U.S. patent, an application must be filed in the U.S. Patent and Trademark Office. Since June 8, 1995, the United States Patent and Trademark Office (USPTO) has offered inventors the option of filing a provisional application for patent which was designed to provide a lower-cost first patent filing in the United States and to give U.S. applicants parity with foreign applicants under the GATT Uruguay Round Agreements.
A provisional application for patent is a U. S. national application for patent filed in the USPTO under 35 U.S.C. §111(b). It
allows filing without a formal patent claim, oath or declaration, or any information disclosure (prior art) statement. It provides the means to establish an early effective filing date in a non-provisional patent application filed under 35 U.S.C. §111(a). It also allows the term "Patent Pending" to be applied. A non provisional utility patent application must be in the English language or be accompanied by a verified translation in the English language and a fee set forth in 37 CFR §1.17(i).
Under the Indian Patents Act, 1970 sections 73-76 talk about Patent Office. It is the office along with its branches established to administer various provisions relating the grant of patent and maintenance of Register of patents under the Act. The Head Office of Patent Office is located at Calcutta and branch offices are located at Mumbai, Delhi & Chennai.
The Patent Office is under the charge of Controller General of Patents, Designs & Trade Marks who is the Controller of Patents for the purpose of the Act. The Central Government has power to specify for the purpose of facilitating the registration of Patents, the establishment of Head Office and branch offices at the places it may think fit. The Patent Offices and branch offices shall have seal of Patent Office. The Patent office and its Branches are having territorial jurisdiction on a
zonal basis as given in the introduction chapter.
Officers and employees of the Patent Offices, who are in service, are prohibited from requiring, taking any right or interest in a patent issued by the office directly or indirectly except by inheritance or bequest. The Officers and employees are also prohibited from furnishing information on a matter which is being dealt with under the Act and from assisting in the preparation of a document to be filed in the Patent Office under the Act or for conducting a search in the Patent office
records except when required or authorized by this Act or under the directions in writing of Central Government or Controller or by order of a Court.
The European Patent Office (EPO) grants European patents for the contracting states to the European Patent Convention (EPC), which was signed in Munich on 5 October 1973 and entered into force on 7 October 1977. It is the executive arm of the European Patent Organisation, an intergovernmental body set up under the EPC, whose members are the EPC
contracting states. The activities of the EPO are supervised by the Organisations Administrative Council, composed of delegates from the contracting states.
The European Patent Convention (EPC) makes it possible to obtain patent protection in up to 20 European countries on the basis of a single application. The applicant decides which countries the European patent should cover. European patents are granted by the European Patent Office (EPO) using a unitary and centralised procedure conducted in one of its three official languages English, French or German. They have the same legal effects as national patents in each country for which they are granted. European patents are cost-effective and time-saving so as to obtain sound protection in a range of European countries.
Identification of patents and patent applications.
An assignment relating to a patent must identify the patent by the patent number. An assignment relating to a national patent application must identify the national patent application by the application number (consisting of the series code and the serial number, e.g., 07/123,456). An assignment relating to an international patent application which designates the United States of America must identify the international application by the international application number (e.g., PCT/US90/01234).
If an assignment of a patent application filed under 1.53(b) is executed concurrently with, or subsequent to, the execution of the patent application, but before the patent application is filed, it must identify the patent application by its date of execution, name of each inventor, and title of the invention so that there can be no mistake as to the patent application intended. If an assignment of a provisional application under 1.53(c) is executed before the provisional application is filed, it must identify the provisional application by name of each inventor and title of the invention so that there can be no mistake as to the provisional application intended.
The patent or patent application to which an assignment relates must be identified by patent number or application number unless the assignment is executed concurrently with or subsequent to the execution of the application but before the application is filed. Then, the application must be identified by the date of execution, the name(s) of the inventors, and the title of the invention. If an assignment of a provisional application is executed before the provisional application
is filed, it must identify the provisional application by name(s) of the inventors and the title of the invention.
The Office makes every effort to provide applicants with the application numbers for newly filed patent applications as soon as possible. It is suggested, however, that an assignment be written to allow entry of the identifying number after the execution of the assignment. An example of acceptable wording is:
"I hereby authorize and request my attorney, (Insert name), of (Insert address), to insert here in parentheses (Application number, filed) the filing date and application number of said application when known."
Filing of Patents
USA
To obtain patent protection in the United States, an inventor must file a patent application with the PTO. This application has three parts: (1) the specification, which gives a general description of the invention; (2) the claims, which provide more detailed statements explaining exactly how the invention works or is assembled; and (3) drawings that illustrate the invention. A specially trained official, called a patent examiner, reviews the application to determine if it qualifies for a patent.
The applicant receives no patent rights until the PTO approves and issues the patent. During the patent examination process, the patent examiner may ask the applicant to answer various questions about the invention. The law requires the patent applicant to disclose all information in his or her possession that is relevant to whether the patent should be issued. Because this process often goes back and forth several times between the applicant and the examiner, a patent examination can be very time-consuming and the legal fees can be expensive.
A provisional application for patent has a pendency lasting 12 months from the date the provisional application is filed. The 12-month pendency period cannot be extended. Therefore, an applicant who files a provisional application must file a corresponding non-provisional application for patent during the 12-month pendency period of the provisional application in order to benefit from the earlier filing of the provisional application. In accordance with 35 U.S.C. §119(e), the corresponding non-provisional application must contain or be amended to contain a specific reference to the provisional application.
However, converting a provisional application to a non-provisional application (versus filing a non-provisional application claiming the benefit of the provisional application) will have a negative impact on patent term. The term of a patent issuing from a non-provisional application resulting from the conversion of a provisional application will be measured from the original filing date of the provisional application. By filing a provisional application first, and then filing a corresponding non-provisional application that references the provisional application within the 12-month provisional application pendency period, a patent term endpoint may be extended by as much as 12 months.
The provisional application must be made in the name(s) of all of the inventor(s). It can be filed up to one year following the date of first sale, offer for sale, public use, or publication of the invention. (These pre-filing disclosures, although protected in the United States, may preclude patenting in foreign countries.)
A filing date will be accorded to a provisional application only when it contains:
A written description of the invention, complying with all requirements of 35 U.S.C. §112 ¶ 1 and Any drawings necessary to understand the invention, complying with 35 U.S.C. §113. If either of these items are missing or incomplete, no filing date
will be accorded to the provisional application.
To be complete, a provisional application must also include the filing fee as set forth in 37 C. F. R. 1.16(k) and a cover sheet identifying:
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 US Government agency that has a property interest in the application.
A non provisional utility patent application must include a specification, including a claim or claims; drawings, when necessary;
an oath or declaration; and the prescribed filing fee. A complete non provisional utility patent application should contain the elements listed below:
Utility Patent Application Transmittal Form or Transmittal Letter
Fee Transmittal Form and Appropriate Fee
Application Data Sheet (see 37 CFR § 1.76)
Specification (with at least one claim)
Drawings (when necessary)
Oath or Declaration
Nucleotide and/or Amino Acid Sequence Listing (when necessary)
If the patent examiner finds that the invention meets the three basic legal tests viz., novelty, non obviousness and usefulness the PTO will grant a patent. Under current U.S. law, a patent is valid for 20 years from the date the patent application is filed. The patent is granted to the individual or individuals who made the invention. If that person is an employee who did the work as part of a job, however, the employer has a right to use the invention as well. A patent only grants rights within the jurisdiction that issued it. Therefore, a U.S. patent will not provide any rights in other countries.
A patent application becomes abandoned for failure to file a complete and proper reply as the condition of the application may require within the time period provided under § 1.134 and § 1.136 unless an Office action indicates otherwise. Abandonment may be either of the invention or of an application. An abandoned application, in accordance with 37 CFR §§ 1.135 and 1.138, is one which is removed from the Office docket of pending applications. An application that has been declared abandoned is "dead" and no longer pending. Abandonment occurs under several circumstances. The most common reason is when the USPTO does not receive a response to an Office action letter from an applicant within 6
months from the date the Office action letter was mailed.
The U.S. government grants patents for machines; compositions of matter, such as new chemical compounds to be used in industry; manufactured items; and industrial processes, provided they meet a number of strict legal tests. Patents are also available for significant improvements on previously invented items. Special patents can be obtained for the invention or discovery and asexual reproduction of certain distinct and new types of vegetation.
Patents may also be granted for certain types of industrial designs, such as a distinct tread pattern on the soles of hiking boots or tennis shoes. Computer programs have been granted patent protection, as have various living organisms, such as specialized mice that were bred to help in cancer research. Books, movies, and works of art cannot be patented, but protection is available for such items under the law of copyright.
Europe
Under the law of the European Patent Convention (EPC), patents are only granted for inventions which are capable of industrial application, which are new and which involve an inventive step. A European patent can be granted on the basis of a direct European patent application, which may be a first filing or, more commonly, one claiming the priority of a
national application filed within the previous 12 months. A European patent application can also be derived from an international application filed under the Patent Cooperation Treaty (Euro-PCT application), either with or without a priority claim.
The Patent Cooperation Treaty (PCT) offers a simplified patent application procedure for over 100 countries worldwide. It enables inventors to file a single international application designating many countries, instead of having to file separately for national or regional patents. In the international phase, an international search and on request international preliminary examination is performed. In the national or regional phase, the patent granting procedure is then carried out by the relevant national or regional patent offices. As a regional office, the EPO also grants European patents on the basis of international applications filed under the PCT.
All the EPC contracting states offer the possibility, as a first step, of applying for a national patent. Filing a patent application
with a national office gives the advantage of a relatively inexpensive foot in the door and allows applicants to deal with a patent authority which is local and speaks their own language. If they decide that they also need protection in other countries, they then have 12 months to file applications for the same invention elsewhere and claim the benefit
of the filing date of the first application (priority claim).
European patent applications may be filed either with the European Patent Office in Munich, The Hague or Berlin, or with national patent offices in the contracting states. Applicants may, within 12 months of the date on which a national or European patent application was filed, claim for the same invention the date of this first application for a subsequent national or European filing. The application is published 18 months after the date on which the European or national first
application was filed (priority date). The search report is published either with the application or later on. Applicants then have six months to decide whether or not to pursue their application by requesting substantive examination.
The three criteria for patentability are novelty, inventive step, and industrial applicability. If a European patent is granted,
competence is transferred to the designated contracting states, where it affords the same level of legal protection as a national patent. On average it takes 44 months to obtain a European patent. Under certain circumstances more rapid processing is possible at no extra cost. A European patent is valid for 20 years from the date on which the application was filed.
Within nine months of the date of grant, any third party may file opposition against a patent they believe does not comply with the substantive provisions of the EPC. The EPO opposition division's decision in such matters holds good in all the contracting states designated for the patent concerned. Appeals may be lodged against the decisions of the Receiving Section, the examining divisions and the opposition divisions. The members of the boards of appeal of the EPO are
impartial, their decisions being governed solely by the provisions of the EPC. Where necessary, cases may be referred to the Enlarged Board of Appeal as the body responsible for ensuring uniform application of the law.
The mission of the EPO is to support innovation, competitiveness and economic growth for the benefit of the citizens of Europe. Its task is to grant European patents for inventions, on the basis of a centralised procedure. By filing a single application in one of the three official languages (English, French and German) it is possible to obtain patent protection in some or all of the EPC contracting states.
The European Patent Office (EPO) grants European patents for the contracting states to the European Patent Convention (EPC), which was signed in Munich on 5 October 1973 and entered into force on 7 October 1977. It is the executive arm of the European Patent Organisation, an intergovernmental body set up under the EPC, whose members are the EPC contracting states. The activities of the EPO are supervised by the Organisations Administrative Council, composed of delegates from the contracting states.
The wide-ranging economic significance of patents can be derived from the fact that patentees can prevent competitors from exploiting their inventions for up to 20 years. This enables them to recoup their development costs and gives them enough time to get a fair return on their investment. Effective patent protection is a stimulus to R&D and a key requirement for raising venture capital. It fosters technical innovation, which is crucial to competitiveness and overall economic
growth.
India
In India as per the Patent Act of 1970, an application for a patent may be made by the actual inventor of the invention, or an
assignee of the right to make an application or a legal representative of either. It is the person who first applies for a patent who is entitled to the grant. A prior inventor of the invention who applies subsequently will not get the patent as against the first applicant. A person who has merely communicated the idea to another, who actually gave practical shape to the idea and developed the invention, cannot claim to be the first and true inventor. A foreign national resident abroad is not prohibited from making an application and obtaining a Patent in India.
An application for a patent in the prescribed form along with the prescribed fee should be filed in appropriate office of the patent office. An application is required to be filed according to the territorial limits where the applicant or the first mentioned applicant in case of joint applicants for a patent normally resides or has domicile or has a place of business or the place from where the invention actually originated. If the applicant for the patent or party in a proceeding having no business places or domicile in India, the appropriate office will be according to the address of service in India given by the applicant or party in a proceeding.
Patent Office Branch, Mumbai- The States of Gujarat, Goa, Maharashtra, Madhya Pradesh and the Union Territories of Daman and Diu and Dadra and Nagar Haveli
Patent Office Branch, New Delhi- The State of Haryana, Himachal Pradesh,Jammu& Kashmir, Punjab, Rajasthan, Uttar Pradesh and Delhi and the Union Territory of Chandigarh.
Patent Office Branch, Chennai -The States of AndhraPradesh Karnataka, Kerala, Tamilnadu and Pondicheri and the Union Territories of Laccadive, Minicoy and Aminidivi Islands.
Patent Office (Head Office), Kolkata - Rest of India
The application should be accompanied by a provisional or complete specification. A provisional specification should describe the invention only briefly and need not contain the claims. Where the application is accompanied by a provisional specification, a complete specification should be filed within 12 months from the date of filing the application. If this is not done, the application will deemed to be abandoned.
The complete specification should fully and particularly describe the invention and the method by which it is to be carried out. It should disclose the best method of performing the invention known to the applicant and end with a claim or claims defining the scope of the invention for which protection is claimed. The claim should relate to single invention. They should be clear and be fairly based on the matter disclosed in the specification. The specification should be accompanied by drawings where appropriate and necessary. The specification should relate to single invention.
The application is examined by examiners of patents to see whether it complies with the requirements of the Act and the Rules, whether there is any lawful ground of objection to the grant of patent, and whether the invention has already been published or claimed by any other person. The examiner makes a search in publications available in the Patent Office and specification of prior applications and Patents to see whether the same invention has already been published or claimed or is the subject matter of existing or expired patents.
After examination of the application, the Patent Office will communicate to the applicant, the objections if any to grant of a
patent. The objections generally relate to the drafting of the specifications and claims, anticipation of any of the claims in prior publication of any specification or claims, or documents. In many cases these objections can be overcome by suitably amending the description of the invention and the claims and in some cases by insertion of the reference to the prior specification number. If the objections are not satisfactorily met, the Controller of Patents, after giving an
opportunity of hearing to the applicant will refuse the application.
Where the application has satisfactorily removed the official objections the controller will accept the complete specification and advertise it in the Official Gazette. From the date of acceptance to the date of sealing of the patent the applicant will get the benefits of the grant except that he will not be entitled to institute infringement proceedings until the patents is sealed. Any person interested may give notice of opposition within three months from the date of advertisement in the Official Gazette. The Controller will forward the copy a copy of the notice of opposition to the applicant who may file their evidence in support of their respective cases and the matter will be heard and decided.
Where an application is accepted either without opposition, a patent will be granted if a request for sealing is made by the
applicant. An inventor, if he so desires, may make a request for mentioning his name in the patent. The Controller, if satisfied, will cause his name to be mentioned as inventor in the patent granted, in the complete satisfaction and in the register of patents. The mention of the inventors name in the patent will not confer or derogate from any rights under the patent.
Under Indian law the term of patent is not the same for all kinds of invention as in most of other developed countries. In respect of process patents relating to drugs and fruits, the term is five years from the date of sealing the patents or seven years from the date of patent i.e. the date of filing the complete specifications whichever is shorter. In respect of all other patents the term is 14 years from the date of patent.
A patent can be kept alive only by paying the renewal fee from time to time. Also in case of any improvement in or modification of a previous invention already patented, a patent called patent of addition may be obtained. The term of the patent of addition will run concurrently and terminate with the main patent. No renewal fee is payable so long as the main patent remains in force.
Regards
PP
Introduction-Intellectual Property Rights (IPR)
Intellectual property is a generic term which encompasses all expressions of human creativity. Ownership of intellectual property is usually expressed as 'intellectual property rights'. These are individual rights which result from assertion of ownership of intellectual property. In general, these are monopoly rights to use the intellectual property. There are many different ways in which rights may be asserted. Some of these are automatic, some require formal registration to achieve protection. In any case, it is for the owner of these rights to police for infringement.
The different forms are summarised as:
> Copyright
> Design rights
> Registered Trade Marks
> Patents
> Know-how
Any intellectual property rights are subject to limitations in several ways:
> rights exist for a limited period;
> rights are restricted geographically;
> rights are limited by subject matter;
> rights are potentially limited by competition and free movement requirements.
In law, intellectual property (IP) is an umbrella term for various legal entitlements which attach to certain names, written and recorded media, and inventions. The holders of these legal entitlements may exercise various exclusive rights in relation to the subject matter of the IP. The term intellectual property reflects the idea that this subject matter is the product of the mind or the intellect. The term implies that intellectual works are analogous to physical property and is consequently a matter of some controversy.
Intellectual property laws and enforcement vary widely from jurisdiction to jurisdiction. There are inter-governmental efforts to harmonise them through international treaties such as the 1994 World Trade Organization (WTO) Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs), while other treaties may facilitate registration in more than one jurisdiction at a time. Disagreements over medical and software patents and the severity of copyright enforcement have so far prevented consensus on a cohesive international system.
To know more...
http://www.corporate.coventry.ac.uk/cms/jsp/polopoly.jsp?d=2862
World Trade Organization (WTO)
It is an international organization designed to supervise and liberalize international trade. The WTO came into being on January 1, 1995, and is the successor to the General Agreement on Tariffs and Trade (GATT), which was created in 1947, and continued to operate for almost five decades as a de facto international organization.
The World Trade Organization deals with the rules of trade between nations at a near-global level; it is responsible for negotiating and implementing new trade agreements, and is in charge of policing member countries' adherence to all the WTO agreements, signed by the bulk of the world's trading nations and ratified in their parliaments.Most of the WTO's current work comes from the 1986-94 negotiations called the Uruguay Round, and earlier negotiations under the GATT. The organization is currently the host to new negotiations, under the Doha Development Agenda (DDA) launched in 2001.
The WTO is governed by a Ministerial Conference, which meets every two years; a General Council, which implements the conference's policy decisions and is responsible for day-to-day administration; and a director-general, who is appointed by the Ministerial Conference. The WTO's headquarters are in Geneva, Switzerland.
To knoe more...
http://www.fpif.org/briefs/vol2/v2n14wto.html
Trade-Related Aspects of Intellectual Property Rights (TRIPS)
The Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) is an international agreement administered by the World Trade Organization (WTO) that sets down minimum standards for many forms of intellectual property (IP) regulation. It was negotiated at the end of the Uruguay Round of the General Agreement on Tariffs and Trade (GATT) in 1994.
Specifically, TRIPS contains requirements that nations' laws must meet for: copyright rights, including the rights of performers, producers of sound recordings and broadcasting organizations; geographical indications, including appellations of origin; industrial designs; integrated circuit layout-designs; patents; monopolies for the developers of new plant varieties; trademarks; trade dress; and undisclosed or confidential information. TRIPS also specifies enforcement procedures, remedies, and dispute resolution procedures.
The TRIPS agreement introduced intellectual property law into the international trading system for the first time, and remains the most comprehensive international agreement on intellectual property to date. In 2001, developing countries concerned that developed countries were insisting on an overly-narrow reading of TRIPS, initiated a round of talks that resulted in the Doha Declaration: a WTO statement that clarifies the scope of TRIPS; stating for example that TRIPS can and should be interpreted in light of the goal "to promote access to medicines for all."
TRIPS has been criticised by the alter-globalization movement, regarding for example its consequences with regards to the AIDS pandemic in Africa.
To know more...
http://www.uspto.gov/web/offices/com/doc/uruguay/finalact.html
General Agreement on Tariffs and Trade (GATT)
The General Agreement on Tariffs and Trade (typically abbreviated GATT) was originally created by the Bretton Woods Conference as part of a larger plan for economic recovery after World War II. The GATT's main purpose was to reduce barriers to international trade. This was achieved through the reduction of tariff barriers, quantitative restrictions and subsidies on trade through a series of different agreements. The GATT was an agreement, not an organization. Originally, the GATT was supposed to become a full international organization like the World Bank or IMF called the International Trade Organization. However, the agreement was not ratified, so the GATT remained simply an agreement. The functions of the GATT have been replaced by the World Trade Organization which was established through the final round of negotiations in the early 1990s.
The history of the GATT can be divided into three phases: the first, from 1947 until the Torquay round, largely concerned which commodities would be covered by the agreement and freezing existing tariff levels. A second phase, encompassing three rounds, from 1959 to 1979, focused on reducing tariffs. The third phase, consisting only of the Uruguay Round from 1986 to 1994, extended the agreement fully to new areas such as intellectual property, services, capital, and agriculture. Out of this round the WTO was born.
To know more...
http://www.ciesin.columbia.edu/TG/PI/TRADE/gatt.html
Uruguay Round
The Uruguay Round was a trade negotiation lasting from September 1986 to April 1994 which transformed the General Agreement on Tariffs and Trade (GATT) into the World Trade Organization (WTO). It was launched in Punta del Este in Uruguay (hence the name), followed by negotiations in Montreal, Geneva, Brussels, Washington, D.C., and Tokyo, with the 20 agreements finally being signed in Marrakech - the Marrakesh Agreement.
To know more...
http://www.uspto.gov/web/offices/com/doc/uruguay/uraaact.html
Regards,
PP
The different forms are summarised as:
> Copyright
> Design rights
> Registered Trade Marks
> Patents
> Know-how
Any intellectual property rights are subject to limitations in several ways:
> rights exist for a limited period;
> rights are restricted geographically;
> rights are limited by subject matter;
> rights are potentially limited by competition and free movement requirements.
In law, intellectual property (IP) is an umbrella term for various legal entitlements which attach to certain names, written and recorded media, and inventions. The holders of these legal entitlements may exercise various exclusive rights in relation to the subject matter of the IP. The term intellectual property reflects the idea that this subject matter is the product of the mind or the intellect. The term implies that intellectual works are analogous to physical property and is consequently a matter of some controversy.
Intellectual property laws and enforcement vary widely from jurisdiction to jurisdiction. There are inter-governmental efforts to harmonise them through international treaties such as the 1994 World Trade Organization (WTO) Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs), while other treaties may facilitate registration in more than one jurisdiction at a time. Disagreements over medical and software patents and the severity of copyright enforcement have so far prevented consensus on a cohesive international system.
To know more...
http://www.corporate.coventry.ac.uk/cms/jsp/polopoly.jsp?d=2862
World Trade Organization (WTO)
It is an international organization designed to supervise and liberalize international trade. The WTO came into being on January 1, 1995, and is the successor to the General Agreement on Tariffs and Trade (GATT), which was created in 1947, and continued to operate for almost five decades as a de facto international organization.
The World Trade Organization deals with the rules of trade between nations at a near-global level; it is responsible for negotiating and implementing new trade agreements, and is in charge of policing member countries' adherence to all the WTO agreements, signed by the bulk of the world's trading nations and ratified in their parliaments.Most of the WTO's current work comes from the 1986-94 negotiations called the Uruguay Round, and earlier negotiations under the GATT. The organization is currently the host to new negotiations, under the Doha Development Agenda (DDA) launched in 2001.
The WTO is governed by a Ministerial Conference, which meets every two years; a General Council, which implements the conference's policy decisions and is responsible for day-to-day administration; and a director-general, who is appointed by the Ministerial Conference. The WTO's headquarters are in Geneva, Switzerland.
To knoe more...
http://www.fpif.org/briefs/vol2/v2n14wto.html
Trade-Related Aspects of Intellectual Property Rights (TRIPS)
The Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) is an international agreement administered by the World Trade Organization (WTO) that sets down minimum standards for many forms of intellectual property (IP) regulation. It was negotiated at the end of the Uruguay Round of the General Agreement on Tariffs and Trade (GATT) in 1994.
Specifically, TRIPS contains requirements that nations' laws must meet for: copyright rights, including the rights of performers, producers of sound recordings and broadcasting organizations; geographical indications, including appellations of origin; industrial designs; integrated circuit layout-designs; patents; monopolies for the developers of new plant varieties; trademarks; trade dress; and undisclosed or confidential information. TRIPS also specifies enforcement procedures, remedies, and dispute resolution procedures.
The TRIPS agreement introduced intellectual property law into the international trading system for the first time, and remains the most comprehensive international agreement on intellectual property to date. In 2001, developing countries concerned that developed countries were insisting on an overly-narrow reading of TRIPS, initiated a round of talks that resulted in the Doha Declaration: a WTO statement that clarifies the scope of TRIPS; stating for example that TRIPS can and should be interpreted in light of the goal "to promote access to medicines for all."
TRIPS has been criticised by the alter-globalization movement, regarding for example its consequences with regards to the AIDS pandemic in Africa.
To know more...
http://www.uspto.gov/web/offices/com/doc/uruguay/finalact.html
General Agreement on Tariffs and Trade (GATT)
The General Agreement on Tariffs and Trade (typically abbreviated GATT) was originally created by the Bretton Woods Conference as part of a larger plan for economic recovery after World War II. The GATT's main purpose was to reduce barriers to international trade. This was achieved through the reduction of tariff barriers, quantitative restrictions and subsidies on trade through a series of different agreements. The GATT was an agreement, not an organization. Originally, the GATT was supposed to become a full international organization like the World Bank or IMF called the International Trade Organization. However, the agreement was not ratified, so the GATT remained simply an agreement. The functions of the GATT have been replaced by the World Trade Organization which was established through the final round of negotiations in the early 1990s.
The history of the GATT can be divided into three phases: the first, from 1947 until the Torquay round, largely concerned which commodities would be covered by the agreement and freezing existing tariff levels. A second phase, encompassing three rounds, from 1959 to 1979, focused on reducing tariffs. The third phase, consisting only of the Uruguay Round from 1986 to 1994, extended the agreement fully to new areas such as intellectual property, services, capital, and agriculture. Out of this round the WTO was born.
To know more...
http://www.ciesin.columbia.edu/TG/PI/TRADE/gatt.html
Uruguay Round
The Uruguay Round was a trade negotiation lasting from September 1986 to April 1994 which transformed the General Agreement on Tariffs and Trade (GATT) into the World Trade Organization (WTO). It was launched in Punta del Este in Uruguay (hence the name), followed by negotiations in Montreal, Geneva, Brussels, Washington, D.C., and Tokyo, with the 20 agreements finally being signed in Marrakech - the Marrakesh Agreement.
To know more...
http://www.uspto.gov/web/offices/com/doc/uruguay/uraaact.html
Regards,
PP
Welcome you all.....
Hai Techies/learners!!!
I warmly welcome you all to this knowledge sharing “Patent Panthers” Blog. This Blog is dedicated to the IPR professionals, new bees to IPR field and the students/teachers interested in knowing about IPR, in particular Patents. Here visitors are encouraged to ask IPR relates queries, views, opinion and also we can discuss about new rules and amendments implemented in IPR space.
I hope it would be more useful for all, who want to know about Patents and to update themselves in the field of IPR.
I am looking forward your co-operation
Regards,
Panther
I warmly welcome you all to this knowledge sharing “Patent Panthers” Blog. This Blog is dedicated to the IPR professionals, new bees to IPR field and the students/teachers interested in knowing about IPR, in particular Patents. Here visitors are encouraged to ask IPR relates queries, views, opinion and also we can discuss about new rules and amendments implemented in IPR space.
I hope it would be more useful for all, who want to know about Patents and to update themselves in the field of IPR.
I am looking forward your co-operation
Regards,
Panther
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