Topics on this page
- Patent Application Process
- Maintenance and Expiration
- Patent Protection in Other Countries
If a person invents a new product or process, that individual ("inventor") may consider applying for a patent. A patent is a property right granted to an inventor by the U.S. government. This right allows the 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." Note that this is a right to exclude others. It is not a right for the inventor to make, use, offer for sale, sell, or import the invention. For example, an inventor may create a patentable device which contains a part that happens to be covered by another's patent. As such, in practicing one's own invention, the inventor would also be engaging in an infringing activity.
The patent laws define what is considered patentable subject matter as well as the patent application process. The laws are codified in Title 35 of the U.S. Code. Under these laws, any person who "invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent" subject, of course, to statutory conditions and requirements. In addition, the invention must be useful, novel, and non-obvious.
Read the Law: U.S. Code, Title 35 §§ 101-103; § 154
Patent Application Process
The U.S. Patent and Trademark Office ("USPTO") administers the patent application process and utilizes the rules and regulations established under Title 37 of the Code of Federal Regulations and the Manual of Patent Examining Procedure. There are various fees associated with filing a patent application, such as filing, search, and examination fees. However, these fees may be reduced based on the status of the inventor (e.g., small entity or micro entity status).
Read the Regulations: Code of Federal Regulations, Title 37 §§ 1.16, 1.27, 1.29
An inventor may file an application and conduct prosecution proceedings before the USPTO on their own behalf ("pro se") or may hire a registered patent attorney or patent agent to act on their behalf. The USPTO provides a Pro Se Assistance Program and other resources to aid inventors in preparing patent applications as well as a directory of registered patent attorneys and agents. In addition, there are regional patent pro bono programs such as the Federal Circuit Bar Association Regional Patent Pro Bono Program’s Inventor Assistance Program to assist inventors with filing a patent application.
Before incurring the expense associated with filing a patent application, an inventor may consider determining whether their invention has been previously disclosed. For example, an inventor may perform a search of prior patents and publications ("prior art search"). An invention may not be patentable if the invention has already been patented or described in a publication. Patents and published patent applications may be searched using the USPTO's patent database or the Patent Public Search tool. Further, the USPTO Scientific and Technical Information Center located in Alexandria, VA is available to the public and provides access to scientific and technical journals.
There are three types of patent applications:
- design, and
- plant patents.
The most common application filed with the USPTO is a utility patent.
Also, a patent application may be filed as a non-provisional or provisional application.
- A provisional application allows one to establish an early filing date and has fewer formal requirements.
- Within 12 months of filing a provisional application, a non-provisional application claiming priority to the provisional application must be filed complying with all statutory requirements.
Read the Law: U.S. Code, Title 35 § 111; § 161; § 171
The inventor or person applying for a patent is known as the applicant.
A utility patent application filing includes several documents, such as a specification, drawings (if necessary), oath or declaration, application data sheet, transmittal letter, and fees.
- The specification should include a title, background of the invention, a summary of the invention, a detailed description of the invention, claims, and an abstract and should comply with the required format (e.g., paper size, margins, line spacing, font, and in the English language).
- The description of the invention should be "in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same." That is, the description should teach how to make and use the invention.
- The specification of a non-provisional application must include at least one claim "particularly pointing out and distinctly claiming the subject matter" which the inventor regards as the invention.
- The claims are essential for a patent application because the claims define the scope of the patent's protection.
The application may be filed with the USPTO by U.S. mail, hand delivery to the office located in Alexandria, VA, or through the USPTO electronic filing system (EFS-Web). There is an additional fee for mailed or hand delivered filings ("non-electronic filing fee").
Read the Regulations: Code of Federal Regulations, Title 37 § 1.42; §§ 1.51-1.54; § 1.63; §§ 1.71-1.78
When an application has been filed and accepted as complete, a patent examiner will review the application. The patent examiner will review the application including the claims, for compliance with legal requirements and conduct a prior art search to determine if the claimed invention is useful, novel, and non-obvious. If the examiner finds that the claimed invention is patentable, then a patent is granted. However, if the examiner does not find the claimed invention patentable, then the examiner will notify the applicant or attorney of record by providing an Office Action which states the reasons for the rejections or objections. It is not unusual for a claimed invention to be rejected on the first Office Action.
The applicant may request reconsideration by filing a reply to the Office Action within the time period set for response. A proper reply must specifically address each rejection or objection in writing which "distinctly and specifically points out the supposed errors in the examiner's action." The reply must be a bona fide attempt to advance prosecution. For example, a general statement that the claims are patentable would not meet the requirements for a proper reply. A reply may also include amendments to the claims. Such amendments must be supported by the original description and not introduce new matter. In addition, the applicant must "clearly point out the patentable novelty" of the amended claims over the state of the art.
If the reply is considered proper, the examiner will reconsider and determine whether the claims are rejected, objected to, or allowed. If the examiner maintains the rejection or objection and deems the action final, the applicant may appeal the examiner's decision to the Patent Trial and Appeal Board or file a request for continued examination. There are additional fees associated with these activities.
If the examiner determines the claims are allowable, a Notice of Allowance and Fee(s) Due will be sent to the applicant. If the applicant pays the issue fees in a timely manner, the USPTO will issue the patent. The patent term is generally for 20 years from the filing date of the patent application.
Read the Law: U.S. Code, Title 35 §§ 102-103; § 112
Read the Regulations: Code of Federal Regulations, Title 37 § 1.104; §§ 1.111-114; §§ 1.134-136; § 1.311; § 1.314; § 41.31
Maintenance and Expiration
Maintenance fees must be paid to keep a utility patent in force beyond 4, 8, and 12 years after the issue date. The fees are due at 3.5, 7.5, and 11.5 years after issue. If the maintenance fee is not paid, the patent expires on the same date the patent was issued in the 4th, 8th, or 12th year after issue.
When a patent expires, whether by term expiration or failure of payment, the patent owner loses the right to exclude others. This means the patent owner can no longer enforce the patent against others and therefore, others may make, use, offer for sale, sell, or import the invention.
Read the Regulation: Code of Federal Regulations, Title 37 § 1.362
The unauthorized making, using, offering to sell, or selling any patented invention within the United States, or importing into the United States any patented invention during the term of the patent, is considered infringement of the patent. If a patent has been infringed, the patent owner may bring a civil action in federal court seeking damages. In addition, the patent owner may also seek an injunction to prevent the continuation of the infringing activity.
As mentioned above, a patented invention may infringe another's patent.
Read the Law: U.S. Code, Title 35 § 271; § 281; § 283; § 284
Patent Protection in Other Countries
The patent rights granted by the U.S. government are only effective in the United States. Other countries have their own patent laws that may differ in some aspects as compared to U.S. patent laws. For patent protection in other countries, the inventor may file a patent application in each country, employing local agents in each country, or an international patent application may be filed utilizing the process established under the Patent Cooperation Treaty ("PCT"). The PCT is an international treaty and is administered by the International Bureau of the World Intellectual Property Organization.
The PCT process allows for the filing of a single international application with effect in the member countries. In addition, the Office of International Patent Cooperation at the USPTO can assist inventors.
Read the Law: U.S. Code, Title 35 § 351; §§ 361-365
Read the Regulation: Code of Federal Regulations, Title 37 §§ 1.431-1.438