What is a Patent?
A patent protects an invention, for example a mechanical device, an electrical device, a combination of ingredients, or a method. A US patent must be filing within one year of a public disclosure or sale. Patent claims define what is owned, and if a device or method includes all the elements of at least one claim, it infringes the patent.
Patent Life Cycle
We offer the services of patent searches, patent drafting, patent filing, responding to Office Actions (examinations of the patent applications), and paying issue and maintenance fees.
First To File Patent System
US Patent laws have been changed to a first-to-file system. As a result, delays in filing a patent application may place obtaining a patent at risk.
Types Of Patent Applications
A design patent is essentially a set of drawings, not a detailed functional description of an invention. Infringement of a design patent is determined by comparing the appearance (ornamental design) of the drawings to the article. There are no dimensions in a design patent. The appearance of functional elements may be part of an ornamental design, but merely functional features may raise difficult issue when a design patent is enforced.
There are two kinds of utility patent applications, Provisional Applications and Non Provisional Applications. A Provisional Application is not examined, but provides a filing date for what is disclosed in the application, and need not require claims. However, most patent attorneys include at least one claim which may be required if foreign application are eventually filed.
A Non Provisional Application must be filed within one year of filing one or more Provisional Applications to benefit from the Provisional Applications. The Non Provisional Application must include a set of proposed claims which will be compared with prior art by a Patent Examiner in the US Patent and Trademark Office (USPTO). When a patent issues, the claims determine what is owned, and the specification and drawings provide support and explanation to the claims. The prior art is generally US Patents and Patent Applications filed before the filing date of the examined application, which may be the filing date of a Provisional Application when the examined application claims the benefit of one or more Provisional Application. Prior art may include foreign patents and applications, and any published (i.e., made public) documents. Allowed claims must include something new and not an obvious variation of elements in the prior art. An Examiner can combine features in several prior art documents to determine that claims in a new application are merely obvious combinations of prior art even if there is no prior art disclosing the combination of features. It is impossible to find all the prior art that may be cited when a patent application is examined and therefore impossible to guarantee that any patent application will result in a patent.
Generally, foreign patents must be filed before any public disclosure of an invention. However, there are international agreements which allow an applicant to benefit from the filing date of a national application when foreign applications are filed within one year of the national application filing date. The filing date may be a Provisional Application filing date, or a Non Provisional Application filing date. When a Provisional Application has been filed, an applicant seeking foreign patents generally needs to file both the US Non Provisional Application and foreign applications by the one year anniversary of filing the Provisional Application.
We cannot guarantee performance of foreign firms.
Patent Cooperation Treaty Patent Applications
Most countries (notably not including Argentina and Taiwan) are part of the Patent Cooperation Treaty (PCT) allowing a PCT application to be filed within one year of the national filing to obtain an additional 18 months to file foreign applications, however, a PCT Application does not lead to any form of international patent.
Foreign Patent Applications
We use foreign firms to file patents in their countries. While we have done our best to develop relationships with trusted foreign firms, we cannot guarantee results obtained by these foreign firms
Foreign patents must be filed within one year from the U.S. filing date in order to take advantage of the international convention relating to the filing of patents outside of the United States. Under this convention, any patent applications which are filed within one year from your United States filing date can be treated as if they were filed in that foreign country on the same day they were filed in the United States. The law in almost all countries requires that the application be filed in that country before the invention is known in that country. Since it takes about two months to translate and assemble a document for foreign filing, we must receive your instructions regarding any foreign filing at least two months before the one-year period has expired.
Alternatively, a Patent Cooperation Treaty (PCT) application may be filed within one year of filing the application in the United States, and thereby benefit from the filing date of the U.S. application. Having filed a PCT application, the applicant generally has thirty months (from the earliest filing date) to file applications in foreign countries (Switzerland being a notable exception to the thirty month rule). Nearly all industrial countries are members of the Patent Cooperation Treaty, the MOST notably exceptions being Argentina and Taiwan.
If you are interested in foreign patent protection, we recommend that you carefully consider your market and your overall goals. Costs of obtaining and enforcing foreign patents may be significant, for example, the translation costs may be significant. Careful consideration of all your options may substantially reduce cost. For example, a European Patent Office (EPO) patent may be filed and prosecuted in English, and translations may be obtained after allowance of the EPO patent. Thus, the decision to translate the patent into the various languages may be deferred until after the applicant knows the patent is granted, and knows what claims have been allowed.