The Patent Process
The patent process, though worthwhile, can prove long, arduous and convoluted. The Rocky Mountain Patent team can help you navigate the complicated process of obtaining patent protections. This page will outline what you can expect while pursuing a patent.
Confidential Invention Disclosure to the Patent Attorney
Your first step in the process of securing a patent is to disclose confidentially to your patent attorney the background details of the invention. Rocky Mountain Patent’s counsel will work with you to understand and explain:
(a) exactly how the invention works,
(b) what useful function or task the invention performs,
(c) what problems are solved by the invention,
(d) any advantages that the invention has over currently known technology, and
(e) the circumstances associated with the conception of the invention;
along with other relevant details.
Rocky Mountain Patent also draws on its unique research and development expertise to help understand and better articulate our clients’ inventions.
Utility patent protection is only available for new, useful and non-obvious inventions. Before investing the significant sums necessary to secure a patent, we typically advise our clients to work with us to carry out a patentability search. However, where budget precludes performing both a search and moving forward with a provisional patent application, getting the application on file is the safer option.
A relatively low-cost patentability search will help our team draft the so-called “inventive departures” from the known prior art and may help determine the likelihood that a patent will issue on the proposed invention.
Preparation and Filing of the Patent Application
The patent application has two primary sections: the specification and the claims.
The specification is essentially a detailed description of the invention, including drawings if necessary, showing what the invention does, how it works, and disclosing its advantages over prior art. The description of the invention must meet certain legal requirements, which Rocky Mountain Patent skillfully helps our clients meet.
The claims of the patent application are carefully worded, legally structured sentences that vary in definitiveness. Each of these sentences attempt to distinctly define more closely than the others the patentable novelty of the invention. Thus, while one ideal claim might suffice, the patent application almost always contains claims that range from broad ones (which define the invention with the fewest details possible) to narrow ones (which set forth in more detail the specific elements of the invention). Rocky Mountain Patent employs strategies to draft strong claims appropriate for your invention.
The Examination Process
After the patent application has been filed with the USPTO, a patent examiner carefully reviews the application in order to determine the invention’s patentability. The examination workload and staffing of the USPTO are such that this examination process usually extends over a period of 12 to 18 months. The patent examiner assigned to a given application will judge the application against several requirements for patentability.
When the examiner has made his/her initial patentability determination, the USPTO responds by sending the applicant what is known as an “Office Action.” This communication contains the patent examiner’s determination and the reasons for it. If the Office Action contains a rejection of the claims (which occurs on the first Office Action about 80% of the time) and there exist arguable grounds for contesting the examiner’s determination, an inventor typically files a “Response” via his or her patent attorney. This response usually in the form of an Amendment, to overcome the rejection.
There are usually only two Office Actions and Responses before a final determination is made by the examiner as to the invention’s patentability. If this determination is detrimental to the applicant’s interests, it can be appealed — a time consuming and expensive process.
Rocky Mountain Patent strives to balance the need to preserve breadth of the matter claimed in the patent application, while avoiding the need to engage in excessive prosecution or lengthy appeals.
Issuance and Maintenance of the Patent
After the examiner has agreed to allow the application to issue as a patent, the inventor must pay the USPTO a patent issuance fee to pay for the expenses associated with preparing the application’s contents for publication.
Periodically during the life of the patent (up to 20 years from the date of filing for those applications filed on or after 6/8/95), the inventor must pay USPTO maintenance fees in order to allow his/her patent rights to continue to be in effect. These become due at times that are measured from the patent’s date of issuance. Their amounts increase with time under the assumption that the inventor will realize greater profits on the invention the longer that it has been in existence.
Constructive Notice to Potential Infringers
Once a patent is granted, its number should be placed on the invention (i.e., Pat. 6,000,000) in order to give a potential infringer constructive notice of one’s patent rights. Otherwise, the patentee will only be able to recover damages from an infringer from the day the infringer had actual notice of his/her infringement, rather than from the day the patentee began marking the invention.
Patent EnforcementWhile an inventor may hold a patent, he or she has no guarantee that the patent is not infringed upon. To effectively enforce his or her patent rights, the inventor requires a strong partner to ensure that all avenues remain available to monetize the patent or exclude others from copying the subject matter that the patent covers.Rocky Mountain Patent provides litigation services on patent and other intellectual property matters. We recognize that all cases are different, and require different tools or strategies specific to the enforcement scenario.We believe that any “one size fits all” technique is too rigid of an approach for patent litigation. Our team can handle a variety of types of matters, tailored to your patent litigation needs.
Foreign Patent Coverage
To obtain foreign patent coverage, within twelve months of filing a U.S. patent application (i.e., one’s priority date), one needs to start applying for his/her foreign patent rights, this typically includes:
i) Preparation and Filing of a PCT International Patent Application that is based on the U.S. application;
ii) Assuming that the results of the international search report are favorable and that one would like to postpone, from the 20th to the 30th month, from one’s priority date, the expensive step of entering the “national stage” of this process and the filing of the required applications in the specific foreign countries where one is seeking foreign patent rights, before the end of the 19th month from one’s priority date, one will want to exercise his/her option to have the PCT authorities perform a preliminary patentability examination; this requires the filing of the necessary papers to “Demand” the preliminary patentability examination;
iii) Before the end of the 30th month from one’s priority date and assuming that the PCT preliminary examination report is favorable, one has to decide in which foreign jurisdictions he/she will actually file for national patent rights. The costs involved at this step include individual, national filing fees, possible translation costs, foreign patent agent filing fees, continuing legal fees for a U.S. patent attorney to supervise this work, and possible later fees involved with making any necessary amendments to the various foreign patent applications. These “national stage” fees are by far the most expensive step in this process, and it usually is suggested to postpone them until the 30th month in order to give the inventor the maximum possible period of time to assess the marketability of the invention so that he/she can better determine as to whether these final expenses can be cost-justified.