Obtaining and Managing Patent Assets
Effective Patent Issue Solutions | Patent Application Assistance
WHAT IS A PATENT?
A patent is a limited right to exclude others for doing, making, or using something. This right is given by the government to an inventor in exchange for disclosing their inventions to the public.
In effect, a patent is like the deed to a house. It sets forth the meets and bounds of what is owned, and allows the owner to show that they are entitled to keep others from infringing upon their property.
- An Exclusive Right to Keep Others Out
- Building Strong Technology
- While trade secrets receive protection without registration, generally, for information to be considered a trade secret, certain conditions must be met
HOW DO I GET A PATENT?
One obtains a patent by filing an application with the US Patent and Trademark Office (USPTO) and successfully demonstrating to the USTPO Examiner that the material claimed in your application is:
- Patentable subject matter
- Paying all associated fees
HOW DO PATENTS HELP A BUSINESS?
Patents can be used defensively to prevent others from entering into your company’s market space. They can be used offensively to generate an additional avenue by which to derive income.
By risk mitigation and as an indication of business acumen. Potential investors, strategies partners, or acquirers will conduct due diligence prior to entering into agreements with your business, and protecting your IP with intelligent patenting will reduce the potential risk to their interests, while signaling that you are a savvy business person who is proactively protecting your own interests.
PATENT APPLICATIONS AND PROCUREMENT – WHAT TO CONSIDER WHEN SELECTING YOUR PATENT ATTORNEYS
Presumably, you are seeking to protect and leverage the value of your innovations or perhaps your company needs protection from aggressive competitors. The power to prevent competitors from copying an important technology can be valuable. Patents have both defensive and offensive value against competitors. Portfolios of relevant, timely U.S. patent rights can be valuable assets to businesses in many industries, from building materials and industrial processes to consumer products, healthcare, research universities, integrated circuits, software, electronics, robotics, vehicles, clean energy, aeronautics, and even space.
Patent law encompasses two general areas:
- The filing and prosecution of patent applications to procure issuance of U.S. Patents from the United States Patent and Trademark Office
- Assertion of issued U.S. patents to gain revenues from licensing the patents to competitors, which may require patent infringement litigation in some circumstances.
This section discusses only the filing and prosecution of patent applications for procurement of U.S. patents. Litigation and licensing are discussed in a different section.
For those new to the subject, U.S. patents to protect novel technologies and innovations are procured by filing and prosecuting patent applications in the United States Patent and Trademark Office (USPTO). The USPTO is an agency in the U.S. Department of Commerce. Each application is an extensive legal document. It is carefully written by a registered U.S. Patent Attorney and undergoes rigorous examination in the U.S. Patent Office. The Patent Office either finds the innovations patentable because all statutory requirements are met or rejects it for lack of novelty or obviousness. Patent attorneys, for client applicants, usually find it necessary to make written amendments and responses to official communications rejecting their applications before the applications are either allowed to issue as a U.S. patent or are abandoned.
Procedures are similar in the patent offices of foreign countries. Most U.S. applicants, however, do not incur the expense of patenting in foreign countries, although exceptions exist in different industries. For example, energy companies often seek patents in countries where energy production is high, and businesses that contract for manufacturing by Chinese suppliers may seek patents in China. We use the services of foreign country law firms to communicate with their respective national patent offices.
WHAT TO CONSIDER WHEN SELECTING YOUR PATENT ATTORNEYS
- The attorney should have extensive experience, judgment, and great communication skills to provide you a bigger picture perspective based on his / her client outcomes in many previous patent applications.
- Listening skills and attention to important details are highly important. The attorney must translate your technical disclosure into a formal, complete application. Omitted details typically cannot simply be added after filing.
- A proven track record of successful patent applications. Think about this! Until many years have passed, it is difficult for a client to separate high-quality from low-quality patent applications. Ask whether any of his / her patents have been enforced in litigation and, if so, whether they were found valid and infringed.
- Ask who is going to draft the application and closely supervise the work.
- You should be comfortable with the communication style and personality of the attorney. Let’s face it – many attorneys can be difficult to really understand. They may talk over your head, either because they are busy and won’t take time for you, or they may talk over your head to avoid critical questions from clients. Great patent attorneys are listeners and communicators.
1) Are there different types of patents?
Ans. Yes, there are multiple types of patent application, each having unique uses.
Provisional patent applications – These applications are informal placeholder filings, which never get examined or mature into issued patents, but are used to establish an early date of conception or invention.
Utility patent applications – Utility applications are directed to a new and useful process, machine, manufacture, or composition of matter, or a new and useful improvement thereof. They are highly formal technical documents which teach a person of skill in the relevant art how to make and use an invention. These applications go through the examination process and can eventually issue into right granting patents.
Design patent applications – Design patent applications are directed to the ornamental design of a functional object. When issued as a patent their protection is limited to the aesthetic features of the claimed subject matter and not to its functionality.
Plant patent applications – A plant patent covers a distinct and new variety of plant, other than a tuber propagated plant or a plant found in an uncultivated state.
2) How long does it take to get a patent?
Ans. While times vary from one technology center to another, the approximate times to a final disposition range from between 23-30 months from the date of filing.
This may seem like a long time, but the average time has decreased significantly in the last few years. Additionally, there are mechanisms for prioritized or expedited examination that may be available to you. Talk with Hunt Pennington Kumar & Dula PLLC today to see if you qualify for such a program.
3) How long does patent protection last?
Ans. Patents filed on or after June 8, 1995, can remain in force for 20 years from the filing date of the earliest application on which the patent claims priority.
For patents filed prior to June 8, 1995, the term of a patent is either 20 years from the earliest filing date as above, or 17 years from the issue date, whichever is longer.
Patent Term Adjustment (PTA) is to accommodate for delays caused by the US Patent Office during the prosecution of a US patent application. The total PTA is added to the 20-year lifespan of the patent.
4) Have there been recent changes in patent law?
Ans. Yes, in the last five years the United States has gone through some of the largest changes in patent law since its implementation under Article 8 of the Constitution.
On September 16, 2013, the US federal government put into effect the America Invents Act which changed the US from a “first to invent” structure to a “first to file” system that is more commonplace throughout the rest of the world.
On June 19, 2014, the Supreme Court rendered a decision in Alice Corp. v. CLS Bank International that drastically changed the US’ interpretation of what constitutes “patentable subject matter”. This case has caused a massive shift in the manner in which software-related US patent applications are interpreted.
These changes and their aftershocks are still actively changing the landscape of patent law in the US. Now, more than ever, it is key to have the understanding of the law and its effects on the patent system necessary to best pursue and protect your interests.
5) Why hire a Hunt Pennington Kumar & Dula PLLC lawyer?
Ans. We help provide to key to solving your patent issues!
In patent law time is of the essence. Under the new system the first inventor to file gets priority, so filing first is key.
Innovation is valuable. Protect your investment into research and development of your technology. Don’t let others steal your valuable business assets. Take proactive action and protect yourself!
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