Patent Attorney, Lawyer Law Firm. Handling Patent Prosecution & Litigation Cases

Types of U.S. Patent Applications

When inventors consider how to protect their rights in a new invention, they often do not full appreciate all of the patent options available to them.  There are three types of patents in the U.S: utility, design, and plant.  Utility patents are the most common type of patent protection.  Utility patents are typically available for inventions which serve a function, although other elements of the invention may be covered by design patents or copyrights. 

There are two types of utility patent applications that can be filed with the U.S. Patent and Trademark Office (USPTO): provisional and nonprovisional.  Unlike a nonprovisional patent application, a provisional application is not examined by the USPTO and is not required to have a formal patent claim.  A provisional application provides the means for establishing a U.S. filing date for your invention, which can be claimed in a later filed nonprovisional application.  Provisional patent applications allow an inventor to use the term “Patent Pending” in connection with the description of the invention, but will automatically abandon 12 months after they are filed.

How to Patent according to the Patent Office

So you have a unique product or idea that you believe should be patented.  The United States Patent and Trademark Office (or USPTO) has a dedicated page on their website offering information on how to file for a patent, which is a great resource to use if you are thinking about filing for a patent.

On this page, the USPTO has listed definitions and links for the filing of three different types of patent applications.  Those include:

-          Utility Patent Application

-          Design Patent Application

-          Plant Patent Application 

Each of the links take you to a new page that provides detailed information on how to file that particular type of patent and the supporting documentation that is needed for each of these patent applications.  However, there is a considerable amount of information for each of these patents that needs to be reviewed in order to correctly submit the application and required supporting documents.  The USPTO has noted that if you are looking to have legal assistance in the filing of your patent application that “you should select an attorney/agent who is registered to practice before the PTO”.  Due to the complex nature in filing of a patent application, having an experienced and registered patent attorney could increase your chances for a successful filing with the USPTO.   

Overview of Patents

Welcome to Patent Law Radio.  We bring you the best in patent and invention news, legal advice and information.  From patent prosecution to patent litigation, we cover the issues here.

Matt Plessner:  Hello and thanks for tuning in to Patent Law Radio. My name is Matt Plessner and today we would just like to give you an overview of patents.  What are they?  How do you know when you should patent something and so on and so forth?  And to help us out, we are speaking today with patent attorney Jason Young from the Traverse Legal office of Traverse City, Michigan.  Jason, thanks a lot for joining us today.

Jason Young:  My pleasure. 

Overview of Patents

Matt Plessner:  Now Jason, to start us off, can you please tell us what it means to patent something?

Jason Young:  Sure.  A patent is a right granted by the federal government to exclude others from making, using, selling or importing an inventor’s invention in the United States and its territories, and that’s one of the common misconceptions a lot of people have about patents.  It’s not the right to do something.  It’s not a monopoly necessarily, but it is a right to exclude others from those activities.  Making, using, selling and/or importing, or offering for sale too.  So, if somebody has a patent right, then they’re entitled to block other people from engaging those activities with respect to the invention that is covered by the patent in the U.S.  A patent is national in scope.  It has no effect outside the United States and its territories.  There is no such thing as international patent yet.  But as soon as a product that infringes a patent hits the shores of the U.S., then the patent holder can do something about it. 

Matt Plessner:  And Jason, what can be patented?

Patent Lawyer Update: Federal Circuit Examines Intent to Deceive Factor for Falsely Marked Goods in Pequignot

35 U.S.C. § 292 provides a powerful tool for enforcing patent rights against infringers who falsely mark a good as patented or patent pending when it is not actually patented or pending. § 292 provides that any person may sue for the penalty against infringers falsely marking a good as patented, where such infringers “shall be fined not more than $500 for every such offense.”

Along with the false marking element, § 292 also requires that the marking of an unpatented good is done with intent to deceive the public. Closely connected with the second § 292 element, liability for patent infringement requires that the infringer had notice of the infringement and ignored such notice.

An easy way for a valid patent owner to satisfy the notice requirement is to mark each patented good with the appropriate issued patent numbers. However, valid patent owners must take care in marking the goods so as not to open themselves up to § 292 patent infringement liability by mismarking a patented good or, conversely, by marking an unpatented and non-pending good as patented.

If you have a patent issue, or wish to register a patent, you may contact one of our patent attorneys for a free evaluation or call 866.936.7447 (International Toll Free).

Contributory Infringement of Patent Rights

35 U.S.C. § 271(c) provides:

Whoever offers to sell or sells within the United States or imports into the United States a component of a patented machine, manufacture, combination or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use, shall be liable as a contributory infringer.

How do you determine if someone is infringing a patent?

Patent infringement is a two step legal analysis.  First, the claims of the patent are construed to determine, as a matter of law, what they mean.  Claim construction, or the meaning of the patent claims, is generally determined by review of intrinsic evidence pertaining to the patent.  Intrinsic evidence includes the patent itself (claims, specification, drawings), the file history comprising records of the prosecution of the patent before the U.S.P.T.O, prior art made of record during the prosecution, and file history records of any related patent applications claiming common priority to the patent at issue.  If claim meaning cannot be determined by the intrinsic evidence, extrinsic evidence may be considered.  Extrinsic evidence may include technical dictionaries or treatises contemporary in time to the priority date of the patent and relevant to the particular field or industry, industry use, prior art patents, evidence of what one of ordinary skill in the relevant field knew and/or inventor or expert testimony. 

Provisional Patent Application

Q. What is a provisional patent? A.  There isn’t a provisional patent.

Rather, one type of application for a patent that may be filed with the USPTO is a provisional patent application.  Generally speaking, a provisional patent application preserves a filing/priority date and stays alive for one year, after which the applicant may elect to convert it to a regular utility patent application, or allow the provisional application to die.  Unlike regular utility patent applications, the USPTO does not examine the provisional application.  It merely sits on the PTO shelf.  If the applicant elects to convert it to a utility case, then regular PTO examination of the case proceeds.  If the applicant elects to discontinue patenting efforts for the subject matter, the provisional application merely expires and the file remains unpublished.

Patent Attorney Woes?

The USPTO is allowing a fewer percentage of patents than it did 10 years ago.  In 1998, the USPTO allowance rate was over 70%.  Yet in 2008, the USPTO allowance rate was less than 45%.  Why is it harder to get a patent today?

Patent Attorney Pitfalls

Whether attacking patent claims as part of building defenses to allegations of infringement, or trying to procure patent protection for technology, our patent attorneys are on the outlook for pitfalls in patent claim language.

Patent Attorneys as Specialists

Patent law is one of the few areas of law recognized as a specialty.  Though attorneys in other areas of law may limit their practices to a particular field (such as real estate law, family law, etc.), those practice areas are generally not recognized as specialties.  Under ethical rules governing attorney conduct in most states, patent attorneys may hold themselves out to the public as specialists.  Patent attorneys usually are registered to practice before the United States Patent and Trademark Office (USPTO).  This registration allows the attorney to file and prosecute patent applications before the USPTO on behalf of clients.  Patent attorneys may also litigate patent infringement, patent validity and/or patent enforceability disputes in court.  Patent litigations are generally federal court cases.  Patent attorneys may also typically prepare and negotiate patent licenses or other contracts involving patent rights, perform patent due diligence investigations, analyze patent portfolios, give advice for developing patenting programs, and/or prepare patent infringement and/or patent validity analyzes and opinions.