Frequently Asked Questions
Q: What is a Patent?
A: patent is a property right granted by the Government of
the United States of America to an inventor “to exclude others
from making, using, offering for sale, or selling the invention
throughout the United States or importing the invention into the
United States” for a limited time in exchange for public
disclosure of the invention when the patent is
granted.
What can be patented –utility
patents may be granted for a new, nonobvious and useful:
- Process
- Machine
- Article of manufacture
- Composition of matter
- Improvement of any of the above
What cannot be patented:
- Laws of nature
- Physical phenomena
- Abstract ideas
- Literary, dramatic, musical, and
artistic works (these can be Copyright protected). For
more information, visit the Copyright
Office.
- Inventions which are:
- Not useful (such as perpetual motion
machines); or
- Offensive to public morality
Invention must also be:
- Novel
- Nonobvious
- Adequately described or enabled (for
one of ordinary skill in the art to make and use the
invention)
- Claimed by the inventor in clear and
definite terms
Note: In addition to utility patents,
encompassing one of the categories above, patent protection may
be available for (1) ornamental design of an article of manufacture
or (2) asexually reproduced plant varieties as design and plant
patents.
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Q: How do recent Federal Circuit and
Supreme Court cases affect how Utility Patent Applications
should be drafted and prosecuted before the USPTO?
A: The courts have placed an ever greater burden on the patent
applicant, during both application drafting and prosecution. To
avoid being narrowed during litigation, applications should
unambiguously describe what the invention is and the full scope
of coverage claimed by the applicant. Items disclosed in the
application but not specifically claimed may be held to have
been dedicated to the public. Descriptions should be drafted
with an awareness that, if there is a question as to the
scope of a claim or the meaning of a claim term, the courts look
closely at the written description and any statements made by
the applicant during application prosecution.
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Q: What are general considerations with
respect to acquiring international patent protection for an
invention?
A: Each case is unique. Consultation is required in
order to develop a strategy which fits each particular
circumstance. Generally, international patent protection requires a
considerable investment. A US Patent Application resulting in a
Patent creates exclusionary rights only within the United States
of America. When deciding where to obtain additional patent
protection we may suggest evaluating each country that is or may
become a potential market for the invention. The size of the
potential market and the likelihood of competitors making or
practicing your invention absent patent protection versus the
cost of patent protection and the costs and likelihood of patent
enforcement in that market may be weighed.
Delaying the expense of prosecution, within the applicable
time limits, in individual
countries allows a client to further test the marketability of
the invention before committing to a large investment for
application prosecution in multiple countries.
Care should be taken to file any PCT or other international
applications in the desired country(s) before the specific
novelty requirements of the desired country(s) are lost and or
opportunities to claim an earlier filing date based upon a prior
application have passed.
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Q: How does use of the USPTO's Electronic
Filing System (EFS) and Patent Application Information Retrieval
(PAIR) improve the patent application process?
A: EFS and PAIR are the first steps toward the USPTO's goal
of a paperless patent application process. The EFS authoring software checks that all
required application parts are present, lowering the opportunity
for administrative errors that may arise during final
photocopying and mail deposit of a large paper application.
Rather than relying upon the postal service for delivery of a
patent application to the USPTO, encrypted electronic filing
provides an immediate secure transmission of the application and
simultaneous return of a receipt and serial number to the
applicant.
PAIR gives the applicant access to the same application
status information that the examiners use. Previous status
inquiry practice often took months to return a reply, if any
from the USPTO. PAIR enables instant status checks of whether or
not office actions/ responses have been issued/received.
Prior to patent issue, patent term extension data may be
verified and if necessary disputed - providing the longest
possible patent term for applications delayed by the USPTO.
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