Patents Enforceable in the U.S. and Abroad
Patent Protection
In the United States, a patent is a legal right granted by the federal government that gives an inventor the authority to exclude others from selling, using, making, or importing their invention for a limited period of time. Typically, patents are valid for 20 years from the application filing date. The right to exclude others does not require the inventor to manufacture or practice their own invention.
A patent – the document itself – consists of a detailed description of the invention, exemplary embodiments of the invention, figures, charts and tables as needed to convey the invention, and – most importantly – the patent claims. The claims define the invention in its simplest terms and determine what exactly is protected. At Booth Albanesi Schroeder, PLLC, we will work with you to define your invention, boiling it down to its essential elements, and then identifying patentable additional features.
Patents in the U.S. and Abroad
In the U.S.: We are members of the U.S. Patent Bar and certified to appear before the U.S. Patent and Trademark Office (USPTO). Filing for patent protection in the U.S. is critical for most of our clients, so we routinely file applications at the USPTO.
Foreign patents: If you anticipate needing protection for your invention in foreign countries, it is crucial to plan for this up front. U.S. and foreign patent law differ, even where other countries are also signatories of the Patent Cooperation Treaty. For example, you can forfeit your right to file a foreign patent based on your commercial activities or publication of your invention. Consequently, it is critical to take steps early to protect your ability to file for patents abroad.
We work with a network of highly respected foreign associate firms to ensure your intellectual property is appropriately protected overseas.
Patent Eligibility
To be eligible for a patent, an invention must comprise a new and useful process, manufacture, machine, or composition of matter. Often, inventions are improvements to existing products. Abstract ideas, laws of nature, natural phenomena, and artistic works are strictly not patentable. To obtain a patent, an inventor must file a detailed technical application with the U.S. Patent & Trademark Office. A patent examiner reviews the specification, and most importantly, its claims, to ensure it is new and non-obvious to a person of ordinary skill in the field.
The law changes with regard to patentability when Congress enacts new patent law and as the courts interpret those laws. For example, Congress passed the Leahy-Smith America Invents Act (AIA) in 2011. The U.S. Supreme Court made major changes to the patentability of business methods, financial technology, and software in 2014 (Alice Corp. v. CLS Bank International, 573 U.S. 208). The patent office releases updated guidelines for examination and patentability based on the case law, newly enacted legislation, and its interpretation of those cases.
It is essential to understand these changes prior to filing a patent application.
We will work with you to determine if your concept is patentable subject matter under the most recent case law and patent office practices.
Statutory Bars to Patentability
One year grace period in the U.S.: You have one year from the first publication of your invention to the public to get a patent application on file. It is critical to discuss with us any prior publication of your invention.
No or limited grace periods in foreign countries: The U.S. is one of the few countries having a grace period after publication of an invention in which to file a patent application. Most overseas jurisdictions require absolute novelty and so have no grace period. While this is generally true, some non-U.S. jurisdictions have grace periods of various lengths.
Publication as a bar to patentability: The one-year grace period triggered in any of these situations: describe your invention in a printed publication; use the invention openly in public; sell or offer for sale the invention; or otherwise make the invention available to the public (e.g., trade show, posted videos, etc.).
Patent Prosecution
We will walk you through all phases of preparing and filing a patent application after assessing your invention, your goals, and the multiple paths to achieve those goals.
Considerations include:
- Whether and when you have published, sold, or offered for sale your invention
- Whether protection is needed in the U.S. and/or abroad
- Budget: expectations of third-party funding; time needed to secure funding
- Complexity of the invention
- Field of the invention (software, business method, mechanical, chemical, etc.)
- Timing of the application filing
- Need to expedite patent examination and issuance
- Where to file first – the U.S. PTO, an International Application under the PCT, etc.
Drafting the Patent Application
We will work with you closely to define your invention, focusing on the commercial advantages offered by your invention and how to best describe and support claims to the invention. We routinely involve the client in reviewing a draft application and seek client input to improve and perfect the draft before filing.
Examination of the Application
Once filed, the application goes through an initial process to determine if the filing meets formal requirements. An examiner is assigned to the application and reviews the claimed invention to determine whether, as of the time of filing, the claimed invention is drawn to patentable subject matter, novel, and non-obvious to a person of skill in the art in light of prior art teachings.
Prior art: The examiner will perform a prior art search, comparing the claimed invention to published disclosures and teachings in the art. Prior art generally consists of any publication or patent application filing made prior to your filing date. Cited prior art is typically prior-filed patents and published patent applications, both in the U.S. and elsewhere; published articles, scientific papers, and the like; and, more recently, posted internet videos and advertising.
An office action from the examiner will state whether the patent office considers your claimed invention worthy of a patent in view of the state of the technology prior to your filing. It is typical that the office rejects the claims based on its view of the teachings of the prior art. We will work with you in responding to any office action to amend the claims, distinguish your invention over the prior art, or provide additional information or affidavits to the patent office.
Inquire About U.S. and Foreign Patents
To discuss a U.S. or foreign patent matter, contact us. We can help you review the invention, compare filing options and choose a protection plan that fits your goals.