Dr. Jeremy Stipkala will be a Panelist Judge for the Pitch Competition for Prof. Hansen’s New Venture Modeling, Ecopreneurship and Social Entrepreneurship course. The competition will take place in Charleston, South Carolina on April 30, 2018. This event is hosted by the College of Charleston. For more information please visit http://www.cofc.edu/.
Peter Brewer, Esq. will be speaking at the Spring 2018 Tennessee Intellectual Property Law Association CLE program. The meeting will take place in Nashville, Tennessee on May 4, 2018. May the Fourth be with you. For more information please visit http://tniplaw.org/.
Please join Peter Brewer, Esq. for a talk on USPTO “Ethics and the OED” at the meeting of the Dallas Bar Association Intellectual Property Law Section. The meeting will take place in Dallas, Texas on April 27, 2018. For more information please visit www.dbaip.com.
In this ‘Patent Application Series,’ I’ll be discussing the nonprovisional utility patent application. I’ll explain what it is, what to know before filing, and why it is an important tool for the protection of a utility invention.
What a Nonprovisional Utility Patent Application is:
A nonprovisional utility patent application, as the name implies, is a patent application that is not provisional, i.e. it is not temporary, and it protects an invention with utility, i.e. a useful function. Unlike the provisional patent application, after a nonprovisional patent application is filed, it is examined by an patent examiner at the the United States Patent and Trademark Office (USPTO). A nonprovisional utility patent application must undergo this examination (patent prosecution) and ultimately must be allowed by a USPTO patent examiner before the application can be issued as a utility patent.
There are specific requirements that must be met for a nonprovisional utility patent application filing to be accepted and for the invention itself to qualify for protection. The nonprovisional patent application filing requirements are defined by the USPTO. In addition, for an invention to qualify for utility patent protection, it must be confirmed as being either a machine, a process, an article of manufacturing (manufacture), or composition of matter. Alternatively, improvements on existing inventions also qualify for protection. Abstract ideas, laws of nature, and natural phenomena do not qualify for patent protection.
What to Know Before Filing:
Filing a nonprovisional utility patent application does not guarantee a patent will be issued on the invention as it was filed. In most cases, when the utility patent is finally allowed, the issued utility patent differs greatly from the application as it was initially filed. All of the changes that the application undergoes to become a patent worthy of issuance take place during patent prosecution. The majority of patent applications filed with the USPTO are eventually issued as formal U.S. Patents, but the process is generally a long one and does not always end with an issued patent.
The first step in the process is filing the patent application with the USPTO. Once filed, the application is reviewed for its adherence to the filing-formalities required by the patent office. This review takes place during the pre-examination phase. After an application passes the pre-examination phase, it is placed in a que with other patent applications to await formal examination by a USPTO patent examiner. It can take 18-24 months for an application to be begin the examination phase.
During examination, a patent examiner compares your invention to the available prior art in order to determine if the invention itself is new, novel, and non-obvious. Approximately 18-months after the application is filed, or 18-months from the application’s earliest priority date, the application is published and made available to the public on the USPTO publication database. If the application is approved by the patent examiner, examination with be closed, and the patent will be allowed. With allowance, an issue fee is due before the application can be officially issued as a patent. The issued patent must then be maintained with the payment of a maintenance fee to the USPTO at intervals of 3.5, 7.5, and 11.5 years judged from the date the patent was issued. If the maintenance fees are not paid, the patent will expire and the rights it provided will be lost. If all maintenance fees are paid, patent protection will last for 20-years from the date the patent application was filed.
It is important to understand that an issued patent does not grant the patent owner the right to make, use, or sell the patented invention. A patent attorney must conduct a freedom-to-operate search and analysis in order to determine this ability. Patent protection alone only grants the patent owner the exclusive right to prevent others from using and marketing the claimed invention.
Why a Nonprovisional Utility Patent Application is an Important Tool:
A nonprovisional utility patent application is an important tool, because the resulting certified utility patents are important. All issued patents allow the patent owner exclusive rights to protect their invention. Without the security provided by an issued patent, inventors may not be willing to put forth the effort required to bring their invention to market. In this way, utility patents are not only important to the inventors or companies that own them, but they are also invaluable to society which prospers from them.
Don’t leave a matter as important as your intellectual property to chance. Willing help in the form of an experienced legal team is here and is just a call away. We have patent attorneys located in Charleston, SC; Greenville, SC; and Knoxville, TN. Please contact us if you are interested in a nonprovisional application or other patent applications.
In this ‘Patent Application Series,’ I’ll be discussing patent prosecution. I’ll explain what it is, what to know before filing, and why it is an important process.
What Patent Prosecution is:
Patent prosecution has two definitions in the world of Intellectual Property. In a general sense, patent prosecution refers to the plaintiff’s side of litigation in a suit involving patent infringement. For this discussion, patent prosecution is the process that involves the filing of a patent application and the exchanges between the applicant/attorney and the examiner at the patent office regarding the merit of the patent application. For an attorney to assist an inventor (applicant) with filing and prosecuting a patent application, the attorney must be a patent prosecutor, i.e. they must be licensed in the state in which they practice law, in addition to being licensed to practice law before the United State Patent and Trademark Office (USPTO).
What to Know Before Filing:
Filing a patent application does not guarantee a patent will be issued on the invention as it was filed. In most cases, when the patent is finally allowed, the issued patent differs greatly from the application as it was initially filed. All of the changes the application undergoes to become a patent worthy of issuance, take place during patent prosecution. The majority of patent applications filed with the USPTO are eventually issued as formal U.S. Patents, but the process is generally a long one that can end in a number of ways.
The first step in the process is filing the patent application with the USPTO. Once filed, the application is reviewed for its adherence to the filing-formalities required by the patent office. This review takes place during the pre-examination phase. If the formalities required by the patent office are not met, the patent office will issue a request for the application to be revised, before it can be formally examined. After an application passes the pre-examination phase, it is placed in a que with other patent applications to await formal examination by a USPTO patent examiner.
After the pre-examination phase, the USPTO will issue a “First-Action Prediction.” This informal notice can be viewed, along with the application, online via the Patent-Application-Information-Retrieval (PAIR) system. This notice lets the applicant/attorney know an approximate timeline for when the USPTO expects the first Office Action to be issued. Generally, the timeline for examination is between 12-24 months from the application filing date. That is not a misprint…it should be expected that the patent application will be on hold for possibly two years.
Once the patent application is assigned to an examiner, that examiner takes up the effort of reviewing and scrutinizing the application for its adherence to the legal requirements for patentability. The patent examiner will study the as-filed application and scour the USPTO system for related prior art (previously published U.S. applications, issued U.S. patents, issued foreign patents, and any available non-patent literature). After a thorough review, the examiner writes up their findings in a first “Office Action.” In the Office Action, the examiner explains any objections they have to the application’s adherence to filing formalities and any rejections they have to the claimed invention.
In rare instances, if an examiner finds no conflicts with the application as it was originally filed, they will issue a “First Action Allowance.” If the application meets all requirements for patentability, but the application does not satisfy all formality requirements, the examiner can instead issue an “Ex-Parte Quayle Action.” This action gives the applicant a time-period for amending the application to meet the formality requirements, before the examiner will issue a formal “Notice of Allowance.”
The majority of patent applications receive a First or “Non-Final Office Action” that explains the examiner’s objections/rejections. This notice will generally give the applicant three-months within which they can reply with a revised description of the invention, drawings, or claims. The reply deadline can be extended with a “Request for Extension of Time.” A fee for each additional month will also be required at the time the reply to the “Office Action” is filed. The request with the associated fee can extend the time period for reply for up to three additional months, making the total opportunity for reply six-months from the mailing date of the “Office Action.”
In some cases, the examiner will determine that more than one invention is described in a single patent application and they will issue a “Restriction/Election Requirement.” Only one invention can be described in an application and examined. In this instance, the applicant must restrict/elect which of the inventions they would like the examiner to review for patentability. The applicant also has the opportunity to re-file the additional invention(s) as separate applications. If the separated application(s) are filed while the original application is pending (before it is issued or abandoned), the application(s) can be filed as divisionals of the original application. Filing a Divisional patent application would allow the application(s) to claim the same filing date as the original application.
In reply to the first or “Non-Final Office Action,” the applicant/patent attorney must draft a formal reply to the examiner’s rejections. An applicant/attorney has the option to argue against the examiner’s rejections or make amendments in the attempt to overcome the examiner’s rejections. It is important to note that under the Patent Action, amendments can not be used to add new matter to the application.
If the response to the “Office Action” overcomes the examiner’s rejections and places the patent application in condition for allowance, the examiner will issue a “Notice of Allowance.” Otherwise, the examiner will issue a second “Office Action” that either restates the original objection on the same grounds or cites new reasons that the application does not meet patentability requirements. In most cases, the second “Office Action” is final, which means that patent prosecution closes and the applicant’s options for replying are limited.
After receiving a “Final Office Action,” the applicant/patent attorney have the option to abandon the application, file a “Request for Reconsideration,” file a “Notice of Appeal,” or file a “Request to Continue Examination” (RCE). To abandon the application, the applicant can either file a direct request or simply allow the application to lapse for non-response to the “Office Action.” To file a “Request for Reconsideration,” in order to request the examiner to reconsider the previous rejections, would require filing an argument and/or amendment. The argument/amendment would need to place the application in condition for allowance, otherwise the application could be abandoned should the examiner find the response unsatisfactory. To avoid abandonment in this manner and to maintain the right to appeal, a “Notice of Appeal” should be filed before the six-month “Office Action” response deadline. To appeal the examiner’s rejection, a “Notice of Appeal,” the required fee, and an Appeal Brief must be filed with the Patent Trial and Appeal Board (PTAB) . The time period to expect a decision from the PTAB is usually two or more years. If the PTAB decision is adverse, an appeal to the Court of Appeals for the Federal Circuit can be made, or a civil action against the USPTO Commissioner can be filed in the U.S. District Court.
Before filing an appeal, the suggested course of action is likely to be filing a “Request for Continued Examination” (RCE). With this request, a response to the “Final Office Action” is filed with a fee. The examiner will review the response and will either issue a “Notice of Allowance,” or issue a new “Non-Final Office Action.” If the examiner does not accept the response to the “Non-Final Office Action” and instead issues another “Final Office Action,” additional RCEs can be filed to continue prosecution. It is possible for a single patent application to receive numerous Office Actions and file multiple amendments in response before the application is finally issued as a patent.
Why Patent Prosecution is an Important Process:
The patent prosecution process allows the entire patent system to work. Through patent prosecution, both the examiner and the applicant gain an understanding of the claimed invention and how it compares to other potentially similar inventions. Without a rigorous review of every patent application, the system couldn’t be relied on to issue new, useful and non-obvious U.S. patents. Where would we be without patents…?
Don’t leave a matter as important as your intellectual property to chance. Willing help in the form of an experienced legal team is here and just a call away. We a Charleston patent attorney, a Greenville patent attorney, and a Knoxville patent attorney, each with specialized expertise patent law. Please contact us if you are interested in filing a patent application or in learning more about the patent application process.
In this ‘Patent Application Series,’ I’ll be discussing the provisional patent application. I’ll explain what it is, what to know before filing, and why it is an important tool during the development of an invention.
What a Provisional Patent Application is:
A provisional patent application, as the name implies, is a patent application that is provisional, i.e. it is temporary. It is also not examined by the United States Patent and Trademark Office (USPTO) and never becomes a patent itself. Instead of being examined and granted as a patent, a provisional patent application is essentially a placeholder that can secure a filing date and patent pending status.
The provisional application expires one year from the date it is filed. Before the one-year expiration deadline, a non-provisional application should be filed claiming the benefit of the provisional application filing date. When a non-provisional application claims the benefit of (also known as ‘claims priority to’) the provisional application, this action allows the non-provisional application to claim the earlier filing date as its own. This way, even if a non-provisional application is filed a year after the provisional, its official filing date is the same as the filing date of the provisional application.
What to Know Before Filing:
The USPTO requirements and fees for filing a provisional application are minimal compared to the requirements and fees associated with a formal non-provisional application. This influences some inventors to start the process with a provisional application. The temptation is for an inventor to draft their own application or potentially worse, invest in a low-cost and equally low-quality application. It may seem like there are no consequences to filing a deficient provisional application because the application is not examined, but in reality, all rights to the idea could be compromised.
The requirements for filing a provisional application are less than those of the non-provisional, but they must be adhered to equally. The USPTO requires that a provisional application must meet specific requirements, e.g. best mode and enablement requirements. Otherwise, the provisional application may not be relied on to claim priority. If a provisional application is drafted without a complete claim set, it may not be clear if requirements are met until after the non-provisional application is drafted with a complete claim set. At that point, it would be too late to add any details to the non-provisional application and the time and effort spent on the provisional may be a complete loss.
The provisional application must be sufficiently detailed at the time of filing, with drawings necessary to understand the invention and a complete disclosure. New matter cannot be added to the non-provisional application if it is to claim priority to the provisional application. If a non-provisional claims priority to a deficient provisional application, the validity of the issued patent can be challenged based on the priority of its claims that date back to the provisional application filing.
Provisional applications are frequently filed to satisfy the “Statutory Bar” requirement. This requirement relates to the obligation to file an application within one-year of public disclosure, e.g. publication, public use, and offers for sale. If a provisional application is filed to satisfy this requirement and is later found to be inadequate, then the “Statutory Bar” requirement was not satisfied. Not meeting this requirement, even unintentionally, could result in catastrophic damages with the loss of all patent rights.
Why a Provisional Patent Application is an Important Tool:
Provisional applications are important in their ability to provide an invention a filing date and patent pending status. The filing date is very important now that the U.S. is a first-to-file country, under the America Invents Act. This means that the first inventor to file for an invention with the USPTO is the rightful owner of the invention. Without an official filing date and application number assigned by the USPTO, an inventor could lose their rights to their invention.
Patent pending status should be considered a must for any inventor interested in disclosing their invention to the public. This protected status allows an inventor to confidently market and discuss their invention with potential investors, partners, and purchasers. Marketing of this nature is best done as early as possible and shouldn’t be done without the protection of patent pending status. However, if an invention is disclosed to the public before obtaining patent pending status, a patent application (either provisional or non-provisional) must be filed by the one-year deadline imposed by the ‘Statutory Bar’ requirement. Generally, a provisional application is filed to satisfy this requirement quickly.
Provisional applications are also important in the effect they have on the term of a patent, e.g. how long patent protection lasts. Following the traditional path of filing a provisional application, followed by filing a non-provisional application a year later, is beneficial to the patent term. A patent issued from a non-provisional application has a patent term of 20 years. If a patent also claims priority to a provisional application, to take advantage of the ability to claim the earlier provisional application filing date as its own, the filing date of a provisional application is not counted when calculating the patent term. This effectively extends the patent term by one year. An extra year of patent term is potentially priceless!
Don’t leave a matter as important as your intellectual property to chance. Willing help in the form of an experienced legal team is here and is just a call away. We have patent attorneys located in Charleston, SC; Greenville, SC; and Knoxville, TN. Please contact us if you are interested in a provisional application or other patent applications.
In this ‘Patent Application Series,’ I’ll be discussing the patentability search. I’ll explain what it is, what to know before investing, and why it is an important step in the patent application process.
What a Patentability Search is:
The patentability search, or novelty search, as the names imply, are searches performed with the intent to determine if an idea is able to be patented based on whether it is novel. One of the key factors in determining if an idea is patentable is if it is novel. The patentability search can be attempted by an individual inventor, but a formal search is conducted by a patent attorney, patent agent, or a person who specializes solely in patentability searches.
To conduct a patentability search, an experienced professional uses specialized tools and databases to compare information about an idea to the millions of published and patented applications in the database of the United States Patent and Trademark Office (USPTO). Part of this process is analyzing potentially hundreds of patent documents for similarities that relate to the invention in question. Performing a quality search takes a great amount of experience and a familiarity with the intricacies of the field.
What to Know Before Investing:
An inventor should personally conduct a search of online resources before even engaging a law firm to assist in protecting an idea. It would be risky for an inventor to rely solely on their own search results as confirmation to proceed with investing in a patent. Instead, an inventor is encouraged to use their individual search as a starting point. With an individual search, an inventor not only becomes more familiar with the market, but also begins to build a base of knowledge for explaining the unique and patentable aspects of the invention.
It is not unusual for a search performed by an inventor to turn up empty. This may seem encouraging and some have filed for patents based on a limited search, only to have their patent rejected by the USPTO. It should be noted that even if a product is not for sale, it does not mean it is not already patented. There are many different reasons for why a patent does not make it to market, but it is not uncommon.
Another pitfall faced by inventors is the temptation to invest in a low-quality patentability search. It is important to identify what you will get from the search before investing. Low-quality searches often produce a list of hundreds of patents that may or may not be relevant. They will not include an explanation of the findings either. This makes it difficult for the search to be of any use.
A search conducted by a patent attorney should include a patentability opinion. This is the attorney’s personal opinion reached by analyzing the results of their search. The opinion will also explain the search results. Without the patentability opinion that accompanies a professionally conducted search, the patentability search is difficult to interpret. A low-quality search may be cheaper initially, but could cost more in the long run if it leads you to invest without truly understanding the market.
Why a Patentability Search is Important:
A quality patentability search is an investment. The primary goal of the patentability search is to help determine whether an idea can likely be patented. If the search concludes that the invention is not novel and is not likely to be patented, then years of time and thousands of dollars are saved by not pursuing a doomed patent.
Even if an idea is found to be novel, a patentability search conducted by an experienced professional should always conclude with a list of patents that are relevant in at least some respects. If the search concludes that the invention is not patentable as a whole, it is still possible that a Patent Attorney could be able to help you narrow the scope of an idea in order to pursue an idea that is a patentable improvement over the current technology. By focusing the subject matter of a patent before it is filed, time and money are not lost to the Patent Office during patent prosecution.
Conducting a patentability search and proving a patentability opinion is not a guarantee that the idea will be patented. It is impossible to retrieve every patent application related to your idea, as many patents are not available to the public until they are issued. What the patentability search and opinion does provide is the ability to invest with greater confidence.
Don’t leave a matter as important as your intellectual property to an online search. Willing help in the form of an experienced legal team is here and is just a call away. Please contact us if you are interested in a patentability or other search.
In this ‘IP Tool Box Series,’ I’ll be discussing the most prevalent type of intellectual property protection, the copyright. I’ll explain what it is, why it is an important tool, and why it should be considered more than just a passive right.
What Copyright is:
Copyright is a legal right which protects a creator’s individual rights to their work of authorship for a specific period of time. A creator’s rights are governed, in the U.S., by Federal Statute under the Copyright Act of 1976. The U.S. Constitution includes a Copyright Clause assigning Congress power to govern Copyright Law.
To be eligible for protection under U.S. Copyright Law, a creator’s work of authorship must fulfill only two requirements; it must be original and it must be in a fixed medium. The requirement for originality is minimal, in that Congress does not insist that a work be unique, only that it must not be a copy of a preexisting work. The second requirement of being in a fixed medium is broad enough to include varying mediums, from saving a new computer program on a computer’s memory to saving a new song on a voice recorder.
Under current Copyright Law, if these two requirements are met, any work of authorship is automatically protected under the Copyright Act of 1976. This is to say that actual registration of a copyright with the U.S. Copyright Office is not required to take advantage of copyright protection. However, there are a number of advantages to adhering to the formality of obtaining a Copyright Registration Certificate.
Why Copyright is Important:
First, Copyright Law provides both rights and limitations to copyright protection. The automatic rights granted to an author include the ability to make copies, make adaptations, distribute copies, perform publicly, and publicly display their work. Several limitations are instituted under the Copyright Act for the user of the protected work. The “fair use” limitation allows for copying excerpts of a work for a number of specific purposes. The “First Sale Doctrine” provides that a person can resell a work after it is bought, e.g., that expensive college textbook. The rights and limitations are intended to protect both the author and the user.
Next, Copyright Law provides U.S. citizens protection in each country that is part of the Berne Convention and vice versa. International protection is automatic, just as copyright is automatic the moment an original work is fixed in a medium. Adherence to the mandates of the International Treaty of the Berne Convention resulted in the U.S. eliminating the requirement to place a copyright notice on a work of authorship. If you are interested in international copyright protection, it is important to know if protection is given to foreign works, to understand any protections, and to understand the requirements for attaining those protections in the country you are interested in seeking protection. Every country, especially those that are not a part of the Berne Convention, will have varying copyright rules and regulations. It’s important to have competent counsel to help you understand your rights and obligations before your work is published.
Most notably, the rights automatically granted to an author under the Copyright Act are invaluable to society. By protecting works of authorship, these rights are intended to “promote progress,” as indicated under the Copyright Clause of the U.S. Constitution. Copyright Laws give an author sole rights over their work and options for recourse in the event that someone attempts to capitalize on their work. Without automatic copyright protection and the benefits it provides, authors could simply lose the drive to create and publish new works. If these copyright protections didn’t exist, published works would be relegated to the public domain and intellectual progress could theoretically stagnate.
Why a Copyright Should be Considered More Than Just a Passive Right:
We have discussed that copyrights are automatic, but the broadest protection for an author’s work is gained by filing a formal copyright application with the U.S. Copyright Office. This is usually a simple process, depending on the type of work being protected. The formal requirements include submitting a completed application for registration, a deposit copy and the required fee to the Copyright Office. See www.loc.gov/copyright. A work is protected based on the date it is received by the Copyright Office. Even if the Copyright Registration is issued a year after filing, the date of registration will be the date the application was filed.
The expanded protections attained by registering a copyright with the U.S. Copyright Office allow for the broadest protection. As mentioned previously, registration is not required to take advantage of the basic copyright protections, but there are obvious advantages to registration. These advantages are most useful when infringement is suspected. A copyright must be registered before an infringement suit is filed. Registration is also a requirement for recovering fees associated with a lawsuit and potential damages. In addition, Registration authorizes the Federal District Court to intervene and assist in halting infringement. A valid Copyright Registration and circumstantial evidence is all that is needed to claim infringement.
Many authors choose not to formally register their work to receive a registration. Even if a work is not registered, an author can still include a copyright notice on their work. This is recommended because it informs the public that the work is protected, which could discourage potential infringers. Prominent display of a copyright notice also makes it difficult for an infringer to claim that they did not know the work was protected, i.e., “innocent infringement.” A notice of copyright also provides identification of the copyright owner, in the instance that someone should want to contact the author to to obtain a license.
One can find a lot of information regarding copyright applications online and on the U.S. Copyright Office website, but an experienced attorney could prove invaluable. The value of a Copyright Registration is in how the application is written. A very common copyright filing is for the protection of computer programs. An improperly drafted copyright application may be ineffective or fail to preserve the trade secrets in the program. An attorney can advise an author on ways to preserve trade secrets. If the copyright application is based on a previous registration, certain disclosures must also be made. An attorney ensures the provisions of your copyright application are correct and give you the results you’re expecting.
Don’t leave a matter as important as your intellectual property to personal research. Willing help in the form of an experienced legal team is here and is just a call away. Please contact us if you are interested in filing a copyright, licensing a copyright, or have been presented with a cease and desist letter.