Tag: patent

A patent applicant does not receive full patent rights until the patent office grants a patent. This article explores your options when a competitor starts copying your invention while your patent application is pending but before your patent is granted.

A person or entity that files a patent application on an invention has patent pending status until a patent issues or the application is abandoned. However, patent pending means that the patent applicant requested that the government grant a patent. Patent pending does not mean that a patent will necessarily be granted. The Patent Office might determine that a patent should not be granted because the application does not meet the requirements for obtaining a patent, for example, the application may be denied if the invention is not new.

The rights that are provided for patent holders are not the same as those provided for patent applicants during the patent pending phase. This is because not every application will become a patent. Therefore, it would not be appropriate to allow patent applicants to stop others from making, using, selling, and importing the invention (e.g. patent rights) described in their patent application because it is possible the Patent Office might later determine a patent should not be granted.

What can be done about copiers during the patent pending stage?

Provisional Rights
There is a section of the law that provides that a patent applicant can get a reasonable royalty for sales of products or services (e.g. copiers or would be infringes) that are covered by a resulting patent. These rights are known as provisional rights (35 U.S.C. 154 – the use of the word “provisional” is unrelated to “provisional” as used to reference a provisional patent application and does not depend on whether or not a provisional application was filed).

The problem with provisional rights as that there are many requirements that must exists in order for a patent applicant to have provisional rights cover a copier or would be infringer. These requirements include (1) the royalties only begin after your application is published and do not begin on the date the application was filed, (2) the copier must have actual notice of your application, which means they must receive a copy of the published patent application or have otherwise read it, (3) the claims in your application must be substantially identical when the patent application is granted as they were when the application was published, and (4) you cannot seek back royalties under the provisional rights section until you actually obtain a patent.

The most problematic requirement is the substantial identical requirement. Changes are often made to the claims during the patent prosecution stage where your patent attorney negotiates with the patent examiner regarding the scope of the patent protection that will be allowed in a resulting patent. Due to the common nature of such changes, generally recovery of royalties under the provisional rights section is unusual.

Notice letter
Even though provisional rights might be rare, you may choose to have a letter sent to a copier to put them on actual notice of your published patent application by attaching a copy to the letter. The letter might request that the copier stop or might invite the copier to a licensing discussion. This may produce results, especially if the startup and design costs are significant for the invention at issue. The copier might not want to invest in those costs if it would be forced to shutdown when you obtain a patent. However, the copier may choose to ignore your letter. There is no requirement that the copier respond. The copier may conclude that you will not obtain a patent or if you do obtain a patent it will not cover the copiers goods/services. Further the copier might try to redesign the product/service to avoid the subject matter of the patent application after receiving your notice.

Speeding Up Application Processing
Once you notice an infringer you might decide to request that the Patent Office speed up the consideration of your patent application. However, sometimes you can benefit from a delay at the patent office where a competitor builds a market and then you are able to take over the market or obtain licensing fees once a patent is granted.

Other IP Claims
It is possible that you might be able to make other intellectual property claims depending on your circumstances, such as claims of breach of contract, copyright infringement, trade dress infringement, trade secret misappropriation, or other infringement infringement.

Conclusion
It can be frustrating to see competitors selling copies of your product in the marketplace while a patent application is pending but before an application is granted. Occasionally a notice letter to the copier will be effective. In other instances you may need to wait until a patent is granted to take action.

Photo credit to flickr user David Goehring under this creative commons license.

What happens after a patent application is filed depends on whether a provisional patent application or a non-provisional patent application was filed. If a non-provisional patent application is filed, once the patent office receives the complete patent application they will place your application in a queue to be examined by a Patent Examiner.

Non-Provisional Applications – Timing
Depending on the backlog of patent applications to be examined, it could take about 21 months, on average, for an Examiner to begin the examination process on your patent application. This time frame can be shortened if a priority examination is requested and granted. When the Patent Examiner picks up your application for examination, the examiner will do a prior art search (a search of the prior patents and patent applications and other sources of prior art) to determine whether your invention, as set forth in the claims of your patent application, is new and otherwise meets the requirements for patentability.

The Patent Prosecution (Negotiation) Stage
At least some claims are rejected (or another objection is raised) as a result of the first substantive examination in about 77 to 95 percent of all patent applications. When claim rejections or other objections are found by the examiner, the examiner will issue an office action explaining the reasons for the rejections and objections.

Many patents result from patent applications that received at least one rejection in an office action after the first substantive examination by the examiner. In most cases, the office action is not the end of the road, but rather the beginning of a negotiation (known as patent prosecution) between the patent attorney, on your behalf, and the Examiner at the USPTO as to the scope of the protection that will be granted over your invention in a resulting patent.

If you decide you would like to respond to the office action and proceed forward with the patent application, we will review the office action and advise you of the options for responding and the strategy corresponding to each option. We will endeavor, where possible, to explain the relative likelihood of success and cost with each option.

There are a number of ways to respond to an office action. One way is for the attorney to draft a written response to the office action which amends the wording of the claims and/or makes arguments on behalf of the patent applicant on why the application should be allowed to issue into a patent. Another means that can be employed is for the patent attorney to setup a telephone interview with the examiner were the attorney can discuss the issues raised by the Examiner in the Office Action and seek to place the patent application in condition for allowance.

After the first written response is filed, the Examiner, if convinced, may allow the patent to be granted. However, the Examiner may issue a second office action responding to the attorney’s written response. Where again, the attorney will advise the client regarding the options for responding in a manner similar to the first office action. The attorney may then prepare a written response or hold a telephone interview or both. The office action issuance and response can occur any number of times, if government fees are payed to continue the prosecution, depending on the client goals.

Sometimes patents are allowed at the first office action, after the first office action, after a one or more subsequent office actions, or after appeal. In certain circumstances, an appeal can be pursued to the Patent Trial and Appeals Board (PTAB), if the Examiner maintains a position which is incorrect under the law. Further appeals to the courts can be pursued, although relatively rare.

Whether your patent application is granted relatively quickly depends on many factors including: the goals of the client, the scope of protection sought, the degree to which the subject matter area of the invention is crowded (e.g. many similar inventions disclosed in the previously), how close your invention is to other inventions in the field, the disposition of the Examiner, and whether a patent search was performed before that application was filed, among other factors.

Provisional Patent Applications
Provisional patent application are not examined by the U.S. Patent and Trademark Office. Instead, they act to provide you with a priority filing date with respect to the subject matter disclosed in the provisional patent application. In order to receive a patent based on the subject matter disclosed in a provisional patent application, a non-provisional patent application must be filed within one year of the filing of the provisional application and make a claim of priority to the provisional application. Then that subsequently filed non-provisional application will proceed as described above. For more information on whether to start with a provisional or non-provisional click here.

Generally for newly issued patents, the patent will expire 20 years from the earliest filing date. However, the patent will expire earlier if maintenance fees are not paid. Maintenance fees must be paid to the United States Patent and Trademark Office (USPTO) at 3.5, 7.5, and 11.5 years after the date the utility patent issues. Maintenance fees are not required for U.S. design patents; they are required for utility patents. The USPTO provides a six month grace period after the 3.5, 7.5, and 11.5 year due dates, within which the maintenance fee can be paid with an additional surcharge.

Some patents receive a patent term extension from the USPTO, if under certain circumstances the USTPO takes too long to examine the patent application and grant the patent. Patent term extension periods are generally shown on the first page of a patent. You should seek advice of a patent attorney when trying to determine whether a particular patent is expired.

The maintenance fees are set by the USPTO and change periodically. The maintenance fees increase progressively so that the 7.5 and 11.5 year fees are greater than the 3.5 year fee and the 11.5 year fee is greater than the 7.5 year fee. This progressive fee structure incentivizes patent owners to let their patent expire unless they are generating a certain financial benefit to the patent owner at the time each respective maintenance fee becomes due.

Photo credit to flickr user kermitfrosch under this creative commons license.

Generally, you cannot obtain a single patent that is effective in every country in the world. Patent protection must generally be secured in each foreign country or jurisdiction through a local patent in that country or jurisdiction. However, regional patents exist that span across multiple countries. One example of a regional patent is a European patent, where European member countries of the European Patent Office (EPO) recognize EPO patents.

Apart form regional patents, there exists an international patent application called a PCT patent application that provides a process for reserving your right to file patent applications in foreign countries and participating regions, such as the EPO.

Paris Convention v. PCT
For member countries of the Paris Convention, generally foreign patent applications must be filed within 12 months of the earliest national application filed in a member country. Therefore if the applicant first filed a patent application in the United States, the applicant would have 12 months from the U.S. filing to file foreign applications in Paris Convention member countries claiming priority and receiving the benefit of the filing date of the U.S. patent application.

The PCT (Patent Cooperation Treaty) application process generally gives the applicant an additional 18 months to consider whether and in which countries to pursue patent protection. If the applicant first filed a patent application in the United States, then filed a PCT application within 12 months of the U.S. filing, the applicant would generally have an additional 18 months to nationalize the PCT application in the foreign countries in which the applicant desired patent protection.

However some PCT member countries do not provide the full 18 months for nationalization, but instead require nationalization at a much sooner time. It is important to consult early in the process with an attorney regarding the deadlines that would be applicable to your case.

PCT Member Countries
Over 140 countries are PCT member countries. Therefore by filing a PCT application, you can reserve your option to pursue patents in over 140 countries. Not all countries are PCT member countries. The PCT application process has two steps, the international stage and the national stage. Residents or nationals of any PCT member country are eligible to file a PCT application.

International Stage
A PCT patent application must be filed within 12 months of the first filing of a national patent application (such as a U.S. provisional or non-provisional patent application). An example application process flow is provided in figure 1 below.

The example of in figure 1 shows that at point A a U.S. Patent Application was filed. Then 12 months later at point B a PCT application was filed claiming priority to the U.S. Patent Application. It is also possible to file the PCT application first before any national application.

The PCT application can be filed through a receiving office in PCT member countries, such as the U.S. Patent and Trademark Office or through the international bureau at WIPO.

After the PCT application is filed, an International Searching Authority (ISA) will perform a patentability search and issue an international search report. The ISA will also issue a written opinion on patentability. The applicant has the option to withdraw the application in light of the search report or written opinion, if this is not done the application and the international search report will be published. The PCT application will generally be published 18 months after the earliest priority filing date (such as the first national application filing date).

The PCT applicant can request a second or supplementary international search which may be carried out by one or more of the ISAs (other than the one that carried out the main international search) resulting in a supplementary international search report. The PCT applicant has the opportunity to amend the claims in the patent application in response to the search report.

Optionally, the PCT applicant can request a Chapter II Examination international preliminary examination resulting in an international preliminary report on patentability.

National Stage
The PCT application must be nationalized (entered into the national phase) into the particular foreign countries or jurisdictions that you would like to have patent protection in. Once the application is nationalized in a particular country, the application will be examined under the local laws of that country to determine whether a patent should be granted.

Therefore if you wanted to have foreign patent protection in China, Australia, and in Europe, you would need to nationalize the PCT application in each of those jurisdictions by the nationalization deadline (see below) in order to seek patent protection there.

The deadline for nationalizing the PCT application depends on the country. Most countries or jurisdictions require the application to be nationalized within 30 months of the earliest filing date (the earliest claimed priority application filing date) other countries or jurisdictions require nationalization within 31 months. However, as explained above, some PCT member countries do not provide the full 18 months for nationalization, but instead require nationalization at a much sooner time. It is important to consult early in the process with an attorney regarding the deadlines that would be applicable to your case.

The earliest claimed priority date in the example of Figure 1 is the date that the US application was filed, not the date that the PCT application was filed.

At point C in figure 1, nationalization occurs regarding Countries 1 and 2 at the 30 month deadline. At point D in figure 1, nationalization occurs regarding Countries 3 and 4 at the 31 month deadline. Nationalization might occur into a regional patent organization, such as the European Patent Office, rather than a country.

Individual countries or regional patent organizations many provide a grace period or revival period allowing the nationalization even after the deadline. Therefore if you have missed the nationalization deadline, you should inquire with an attorney whether there are still options for nationalizing your application in the countries you choose.

Nationalization usually involves the payment of nationalization fee, filing of certain documents, and in some cases, filing of a translation of the application. Then the nationalized application will be considered under the local laws of the jurisdiction to determine whether a patent should be granted. Local attorney representation will likely be needed in the nationalized jurisdictions to prosecute the application under their local laws. Generally your U.S. lawyer can work with foreign attorneys during the local prosecution of the application in the national stage.

Cost
Pursuing patent protection by nationalizing a PCT application in every PCT country is generally not economically feasible. The need to hire local attorneys and prosecute the applications in each of 140 countries would be an very expensive endeavor.

Instead, clients often, at or before the nationalization deadline, choose to nationalize the PCT application in countries where they have (1) actual or anticipate sales or (2) actual or anticipated licensing or business opportunities sufficient to justify the foreign patenting expense.

The PCT international patent application filing fee is around $3000-$6000. The nationalization fees can range from $2000-$7000 per country to file. After that there are prosecution costs in each country until the application hopefully issues within a few years as a patent. There are also often yearly patent application fees and patent annuity fees to be paid in each country.

Conclusion
Seeking foreign patent protection involves considerable costs. However, foreign patenting can be valuable when undertaken with a targeted approach that is aligned with the appropriate business case.

Many inventors are shocked to find out that once their patent application is filed, it may take one or two years before the US Patent Office acts on the application, and perhaps another one or two years after that for a patent to be granted (unless an accelerated request is made). This is due to the backlog of work at the US Patent Office.

Does a long delay between the filing date of the application and the patent issue date hurt the inventor’s plans to exploit his invention? What if someone sees his product, copies it and sells it before the inventor has his patent?

Short Commercial Life
For inventions that have a short commercial duration, a long period of time between patent application filing date and patent issue date can be harmful. For example, if an invention was only useful for a particular model cell phone and not useful after the cell phone is replaced by a new model, the long delay could be detrimental to commercial exploitation of the invention, in that a copier of the invention could not be stopped before the commercial life of the product has already dried up.

Longer Commercial Life
However, for most inventions, the commercial viability of the invention lasts well beyond 3 or 4 years. In this case, the delay at the Patent Office to issue a patent is not necessarily detrimental and can work in the inventor’s favor. For example, once an application is on file, the inventor can exploit his invention by advertising, offering the invention for sale over the Internet and undertaking other commercial activities to create a market for the product. This is expensive. On the other hand, the costs of obtaining the patent are spread out and delayed.

Copier Makes a Market
During this “patent pending” period a copier is free to copy the invention since the inventor does not have an issued patent (except in certain usual circumstances). However, the copier will also spend money on creating a market for the product. The copier may be a company that is in a better position to advertise and create consumer demand for the product than the inventor. The copier could market the product for a few years before the inventor’s patent issues.

Patent Owner Takes Over Market
However, if and when a patent issues a few years later, the inventor will be in a favorable negotiating position with respect to the copier. The inventor can sue to stop further sales by the copier and take over the market share for the product that the copier created. Alternatively, the inventor can offer the copier a patent license at a higher rate since the copier has already invested money in developing and marketing the product and is more likely to accept such a license. Still further, particularly in the case where the inventor is not selling a product but wishes to sell the patent, the inventor can offer to sell the patent to the copier at a higher price since the inventor can otherwise sue the copier to stop further sales. The copier would also have an incentive to purchase the patent since the copier can now enforce the patent against other copiers.

Additional Time Added on End of Term
It should also be noted that the term of a US Patent is 20 years from the application filing date. If the duration to obtain the patent was delayed by the Patent Office more than three years from the filing date, the Patent Office grants additional time onto the term of the patent to make up for the delay. In effect, time is added onto the back end of the patent term which is typically more valuable than time at the front end of the patent term.

Beneficial Delay
For some inventors and companies, a delay in obtaining a patent due to the backlog at the Patent Office may actually be beneficial.

There are a number of factors that effect the time until you receiving a patent as explained below.

Patentability Searching:
First, if you choose to have a patentability search performed by our office, that generally takes 1 to 3 weeks to complete, depending on the volume of search results and the workload at the time.

Patent Application Drafting:
If we receive all the information about your invention before we start drafting your invention, on average it will take between two to four weeks to draft the application for your review. If shorter time frames are needed, we will strive to achieve a timeline that works with your schedule. In a past expedited circumstance, we were able to file an application within 2-4 days after receiving all the required information about the invention. The time frame within which we could draft a patent application depends on our present workload, the complexity of the invention, and the amount and type of information provided by the client before drafting begins, as well as the number of changes provided by the client after drafting begins. After the patent application is filed you will have “patent pending” status in the United States.

After Patent Application Filing
After filing, the length of time to patent grant depends on whether you begin with a provisional or a non-provisional patent application in the United States. If you begin with a non-provisional patent application, the U.S. Patent and Trademark Office (USPTO) will place your application in a queue to be examined by a Patent Examiner when the USPTO receives your complete non-provisional patent application.

The present (2019) average wait time until the USPTO provides us with the results of the Patent Examiner’s first substantive review and examination (average pendency to first office action) of the patent application is about 16 months. The average time it takes to obtain a patent from the patent office at this time is about 24.1 months or about 2 years. [See the current wait time statistics at the USPTO website [here] (best viewed with Internet Explorer or Chome)].

The actual amount of time it will take for your patent application to be examined, and if found allowable, to issue into a patent will vary. Some technical areas have a longer or shorter wait time because the USPTO groups patent applications based on the invention’s technology and assign patents to technology groups (known as art units) of examiners at the USPTO for examination. If one art unit has more patent applications in the queue than another art unit, then patent applications assigned to the art unit with relatively more patent application will wait longer for examination and ultimate issuance.

If you decide to file a provisional patent application, the patent office will not put your provisional patent application in a queue to be examined. Instead, a non-provisional patent application must be filed within one year of the filing date of the provisional application, in order to claim the benefit of the provisional application filing date. In the case that you file a provisional and then file a provisional on the one year anniversary date of the filing of the provisional, one additional year will be added to the times listed above. This is true because you have waited that 1 year to have the non-provisional application placed in a queue to be examined.

Prioritized Examination
The USPTO offers a prioritized examination (also known as Track One) for utility and plant patent applications for a limited number of patent application per year. To be considered for the prioritized examination, the applicant must pay additional fee to USPTO. Under the prioritized examination procedure the USPTO assigns a priority status to your application. The USPTO aims to get to a final disposition (allowance or final rejection) of your patent application within 12 months of the prioritized status being granted.

Patent Pending
While your patent application is pending (after the patent application is filed but before the patent is granted) you will have patent pending status. You are not required to wait until you obtain a patent to start exploiting (making, marking, selling, licensing, etc.) your invention. You can begin doing so after the patent application is filed, as long as the patent application fully describes and covers all the elements of your invention that you intend to disclose and use publicly.

Below are some steps that you can take to help reduce the cost for us to prepare a patent application on your behalf. These steps are not required as we can draft an application based on your requirements and information. However, by following the guidelines below you can assist in reducing patent preparation costs. See our separate article for general information about how much a patent costs.

Provide a Detailed Description of the Idea at the Start
It is important that you provide the most detailed written description of your idea. The written description should include drawings. The drawings can be hand-sketched. The written description should make reference to individual parts of the invention shown in the drawings. The drawings should have parts labeled by number. The written description should make reference to the parts by name and number.

Generally, short summaries or brochures do not provide sufficient details about the invention and how it works. If we have to request many details about the invention from the inventor, this adds time to the process and drives up the cost of preparing an application. Another scenario where we generally need to put forth a lot of effort to obtain details about the invention is when the inventor only orally describes the invention and we need to draft the application from the oral description.  When the inventors presents a clear and detailed description of the details of invention, its various functions, and the benefits of the invention as compared other inventions in the field, we are able to most efficiently prepare an patent application on the invention.

Start with a Complete Invention
When an inventor keeps inventing during the time when we are drafting the application, the cost of preparing the application can rise substantially. Description of the new features must be added. Sometimes various parts of the patent application need to be rearranged to account for the new developments. Often times drawings will have to be changed or new drawings created to include the new details not provided in the beginning. Adding details after the application drafting is underway generally takes more time, and generates more costs, than if the details had been provided at the beginning.

Provide a First Draft
We can often provide an example patent application that is in the field of the inventor’s invention. A template can also be provided for the inventor to start from to assist in developing a detailed description of the invention. If the inventor drafts a first draft based on a template provided, cost can be reduced. We can then take this first draft as a base and draft a patent application that meets our standards having all the appropriate language and detail.

The cost to prepare a patent application depends on many factors, however the above guidelines can help reduce the cost for us to prepare a patent application for you.

A United States patent is a property right granted from the United States government giving the inventor the right to exclude(stop) others from making, using, offering for sale or selling the patented invention in the United States for a limited period of time (usually 20 years from the filing date).

A patent is a type of intellectual property. Other types of intellectual property include: copyrights that protect the expression of an idea, trademarks that protect product and service source identifiers (brands), trade secrets that protect information and other items that have business value and are not generally known.

A patent provides a time limited monopoly over the invention in exchange for disclosing to the public the details and manner of composition of the invention. The monopoly allows you to prevent others from benefiting from your inventive work without your permission. Therefore you may be able to charge more for your product or service that is protected by a patent, than would be possible if your product was not protected and competitors copied your product and competed with you.

This exchange of a monopoly for public disclosure, allows the science area of your invention to be advanced. During and after the time when your patent is in-force others can read about the details of your invention as described in your patent, which might spark other non-infringing ideas which will advance the art/science related to your invention. Therefore you benefit from the monopoly provided by the patent and the public benefits by understanding your invention which can advance related engineering and sciences.

Maintenance fees must be paid by the patent owner at certain intervals in order to keep the patent from expiring before the patent term ends.

A U.S. patent does not provide protection outside of the country. However a U.S. patent can be used to prevent the importation of infringing products in to the United States from abroad. Foreign patents are needed to receive protection in chosen foreign countries.