PATENT FAQs

The below is a summary of some answers and general information provided by the U.S. Patent Office with respect to a number of the more frequently raised questions regarding the law and procedures surrounding patents in the USA.

As this firm is not admitted to the patent bar and is therefore unable to practice in patent matters or before the U.S. Patent Office, this information is in no way intended or provided as legal advice. Instead, it is offered as a handy reference for individuals and companies with basic questions about the protection of their discoveries and inventions in the United States. To obtain answers to questions you might have as they apply to your own specific circumstances, you should request the assistance and counsel of a qualified patent attorney.

Even if a company is not planning to do business in the United States, filing for and obtaining patents in the USA for inventions is the best way to compete globally in an aggressive marketplace. A strong patent portfolio is also an excellent way of increasing the value of a company and ensuring an influx of licensing income in the company's home country. Of course, when considering how best to protect one's intellectual property, one should always consult competent legal counsel expert in the law of patents and admitted to the patent bar. Due to its excellent network of contacts among patent firms, SCANDIA-GERMANIA-DAVIS is well prepared to help you manage your U.S. patent needs and find excellent patent attorneys able to assist you in every area of technology.

Who is Entitled to File a Patent Application? - The right to apply for a patent with the Patent Office (herein "PTO") is allowed only to the actual inventor of an invention. The fact is that, except in a few instances, an application that is granted, yet submitted by anyone other than the inventor, would be deemed invalid by the PTO. In addition, it is criminally punishable to submit a patent application that contains a false statement relating to the identity of an inventor. Where the invention has more than one (1) inventor, a joint application that names all inventors is required. Both with respect to companies and individual inventors, the person who developed or provided one (1) or more concepts used in the creation of the invention is considered to be the actual inventor(s). Those who merely commission the creation of the invention, offer instructions, provide material or financial support, or who employ the inventor do not meet the definition of being an "inventor". When the employee of a company assigns his rights in an invention to the company or organization, the company becomes the owner.

The Two (2) Forms of Patent Applications - Patent applications can be characterized as being either Provisional or a Non-Provisional in nature:

Provisional Applications: The Provisional Application is a low-cost alternative that allows an inventor to secure an early filing date. This is a useful option in cases where more time is required to prepare a full application. It is also an alternative that allows an inventor some time to test or research the market for the invention for the purpose of deciding whether a Non-Provisional application should even be filed. By filing a Provisional Application, the applicant is afforded provisional protection for twelve (12) months. Such an application must include a written description of the invention, drawings (as applicable), and the names of the inventors. Unlike a Non-Provisional Application, this type of application requires neither the drafting of claims nor an oath or declaration. It is recommended that an applicant file at minimum one (1) claim. Provisional applications will not be examined for anything more than the above formalities. The present filing fees are $80 (small entity) and $160 (large entities). In the case no Non-Provisional Application is filed within twelve (12) months of the date of filing, the Provisional Application expires. However, where a Non-Provisional Application is filed and eventually granted based upon a subsequent Non-Provisional Application, the twelve (12) month Provisional status will not be subtracted from the twenty (20) year term of the patent. It should be noted that Provisional Applications may not be used in relation to applying for a design patent. Instead a Non-Provisional Application must be filed. The fees for design applications are $165 (small entity) and $330 (large entities).

Non-Provisional Applications: These applications require the following: a description, claims, a declaration or oath, drawings (as applicable), and the filing fee. The present filing fees are $375 (small entity) and $750 (large entities). Once the PTO has received a description, no less than one (1) claim, and any drawings, an official filing date will be granted. Where an application contains in excess of twenty (20) claims or multiple dependent claims, the above fees will be increased.

Is it Possible to Obtain a U.S. Patent by Means of a Non-U.S. Application - Since Austria, Denmark, Finland, Germany, Iceland, Norway, Sweden, Switzerland, and the United States are parties to the Paris Convention, citizens of these countries can apply for protection of an invention in one country based upon an earlier application in the other. Under the convention, a latter filed U.S. application will be considered to have been filed on the original filing date of the Non-U.S. application. In this manner, a Non-U.S. applicant obtains "priority" over applications for inventions of a similar nature. This "priority" will be granted over all applications filed in the U.S. subsequent to the filing of the Non-U.S. application and before the filing date of the latter filed U.S. application. These rules are slightly different with respect to design patents, which require that a U.S. application for a design patent be filed no more than six (6) months after the filing date of the Non-U.S. application. As to every other type of patent application, however, the rules require that any U.S. application be filed no less than twelve (12) months to the day from the filing of the Non-U.S. application. Where an inventor fails to file in accordance with these time restrictions, the inventor will be barred from filing any application for the subject matter of that invention. In many cases, as opposed of filing for a patent in one's home country, there can be significant benefits for a Non-U.S. citizen to file an original application for an invention with the U.S. Patent Office.

The Process of Examining a Patent Application - Patent examiners employed at the PTO to review patent applications are engineers expert in all areas of technology. An examiner reviews an application with respect to requirements under the law. At the same time, the examiner also reviews prior art contained in countless sources that contain all types of literature, printer materials, and granted patents, both U.S. and foreign. Actual examination of an application will usually begin somewhere between eight (8) and fourteen (14) months after the date of filing. After examination begins, the PTO may issue something called an office action, which usually ask for explanations, raise questions, or request further information. Each Office Action requires a response that must be received by the PTO no later than six (6) months after it is issued. If a patent is to be granted in the USA, it will generally be issued within one (1) to three (3) years after it was filed.

Is it Possible in United States to Patent Software? - The United States does allow software to be protected with a patent. However, whether the software is patentable depends upon the function the software actually performs when executed upon by a computer. Obtaining a patent in the USA for a software product has significant advantage over protecting that same product under the law of copyright. The law of copyright protects only against literal copying of the written work. The law of patents in the USA, on the other hand, offers protection to the entire process or concept that is integral to the piece of software. Importantly, the law of patent effectively keeps individuals from any use, creation, or sale of the patentable aspects of the software, even if an infringer were to independently invent the exact same software. In addition, when software is patentable, the need for traditional software licensing agreements might be obviated since patent laws offer significantly stronger protection.

What Do I Gain by Patenting my Invention? - Under the patent statutes, a registered patent provides its owner the sole right make, use, offering for sale, sell within the U.S. or import an invention into the United States. The right granted by a patent is exclusive and prohibits all others from these activities. The duration of these rights for utility patents is twenty (20) years from the filing date of the application and, for design patents, fourteen (14) years from the same. If an application containing common subject matter is based upon a prior application by reference, the time period for the rights will run from the filing date of the prior application. A registered patent further provides its owner the right to file suit for infringement in the U.S. federal courts. Payment of maintenance fees is, of course, required for the rights to continue in existence. Maintenance fees (with the exception of design patents) must be paid at 3 ½, 7 ½, and 11 ½ years subsequent to the day on which the patent was originally granted. Filing and maintenance fees can be lowered for smaller companies and individual inventors by filing a "small entity statement" with the PTO. The respective fees for maintenance of a patent for small and large entities are: $445/$890 at 3 ½ years, $1,025/$2,050 at 7 ½ years, and $1,575/$3,150 at 11 ½ years. If the owner of a patent fails to timely pay these maintenance fees, the USA patent will expire.

Does the PTO Hold the Details of My Invention Confidential? - With only two (2) exceptions, the PTO holds the contents of your application strictly confidential. Sixteen (16) months after an application is filed, the applicant has the choice of publishing the contents of the application or keeping the application confidential. If the applicant desires not to have the contents of the application published, the applicant must waive all future rights to file Non-U.S. applications based on the same application. Even if one decides not to allow publication at sixteen (16) months, the entire contents of the application will be made public if the patent is eventually issued. The only other deviation from the rule of strict confidentiality is that if the patent application is referenced by its serial number in another patent that has been issued, the application's contents need not be held confidential.

If I Fail to Register my Invention Do I Have Any Rights? - As opposed to the law of copyright and trademark, the law of patents in the USA does not offer protection of inventions under the common law. Thus, if you fail to apply for a patent, you will receive no protection for your invention in the United States. This will be the case regardless of whether one has previously applied for and received a patent in a foreign country. A patent from abroad, absent a subsequent parallel patent registration in the U.S., provides no protection for the invention in the United States.



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