Patent Attorney Network

What is Intellectual Property?
Shoud I Consult a Lawyer for my Intellectual Property Issue?
What is a Patent?
How can I Get a Patent for My Invention?
Should I Consult with a Patent Lawyer for My Patent Issue?
What is a Provisional Patent?
What is Patent Infringement?
What is a Patent Law?
What Can Be Patented?
How can I find out if my invention is already patented?
How long does it take for a patent application to be processed?
Do I need a patent attorney or agent to file my patent application?
Is My Innovation Patentable?
What is Conception of Invention?
How to Patent Computer Software?

What is Intellectual Property? Generally speaking, intellectual property is broadly defined as any new invention, creation, innovation, discovery or improvement. Forms of Intellectual Property includes trademarks , copyrights , trade secrets , and patents . To be granted protection in the form of a Monopoly, you must prove to the United States Patent & Trademark Office that your innovation is unique.

Should I Consult a Lawyer for my Intellectual Property Issue? The deadlines and regulations for intellectual property registration are detailed and strict. An attorney can help you meet all the deadlines and fulfill all the requirements. A lawyer can also participate in on-going research to make certain no one else is using your intellectual property without your permission. Additionally, if you have an issue of intellectual property infringement, an attorney can guide you through the difficult and strict procedural requirements for litigation and bring out the core of your case.

According to the United States Patent & Trademark Office:

"The preparation of an application for patent and the conducting of the proceedings in the United States Patent and Trademark Office (USPTO or Office) to obtain the patent is an undertaking requiring the knowledge of patent law and rules and Office practice and procedures, as well as knowledge of the scientific or technical matters involved in the particular invention.
Inventors may prepare their own applications and file them in the USPTO and conduct the proceedings themselves, but unless they are familiar with these matters or study them in detail, they may get into considerable difficulty. While a patent may be obtained in many cases by persons not skilled in this work, there would be no assurance that the patent obtained would adequately protect the particular invention."

What is a Patent? As an inventor, you want to protect your invention from others "making, using, offering for sale or selling the invention" in the United States. Thus, a patent is given to an inventor to protect their invention. Generally, to receive a patent from the U.S. Patent and Trademark Office (USPTO), the invention must be new, unique, and generally unobvious. There are different patents available depending on the item you wish to patent:

Utility patents may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or compositions of matters, or any new useful improvement thereof.

Design patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture.

Plant patents may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant.

How Can I Get a Patent for My Invention?

The U.S. Patent and Trademark Office receive applications for patents and makes patent determinations. An inventor must submit an application to the Patent and Trademark Office and attach specific drawings and a plan of the proposed invention. The inventor must also include a fee. The plan of the invention must follow a very rigid and specific form. After the application is reviewed, the Patent and Trademark Office will usually question the applicant as to any objections the office may have.

Should I Consult with a Patent Lawyer for My Patent Issue? Most people hire an experienced patent attorney who knows what language to use for the patent application, and how to value the innovative facets of the invention. The deadlines and regulations for patents are also quite detailed and strict, and a patent lawyer will help you meet all the requirements and deadlines for a patent application.

What is a Provisional Patent? Since June 8, 1995, the USPTO has offered inventors the option of filing a provisional application for patent, which was designed to provide a lower cost first patent filing in the United States and to give U.S. applicants parity with foreign applicants. Claims and oath or declaration are NOT required for a provisional application. Provisional application provides the means to establish an early effective filing date in a patent application and permits the term "Patent Pending" to be applied in connection with the invention. Provisional applications may not be filed for design inventions.

The filing date of a provisional application is the date on which a written description of the invention, drawings if necessary, and the name of the inventor(s) are received in the USPTO. To be complete, a provisional application must also include the filing fee, and a cover sheet specifying that the application is a provisional application for patent. The applicant would then have up to 12 months to file a non-provisional application for patent as described above. The claimed subject matter in the later filed non-provisional application is entitled to the benefit of the filing date of the provisional application if it has support in the provisional application. If a provisional application is not filed in English, then any non-provisional application claiming priority to the provisional application must have a translation of the provisional application filed therein. See title 37, Code of Federal Regulations, Section 1.78(a)(5).

Provisional applications are NOT examined on their merits. A provisional application will become abandoned by the operation of law 12 months from its filing date. The 12-month pendency for a provisional application is not counted toward the 20-year term of a patent granted on a subsequently filed non-provisional application which relies on the filing date of the provisional application. A surcharge is required for filing the basic filing fee or the cover sheet on a date later than the filing of the provisional application.

What is Patent Infringement? When another party uses your invention, or an invention with similar elements to your invention, they may be liable for patent infringement. In order to demonstrate patent infringement, one must compare the patent's claims and elements with the elements of the device or invention that is suspect. If they match, there is an infringement. An inventor can enforce the patent in a federal court.

Patent Laws The Constitution of the United States gives Congress the power to enact laws relating to patents, in Article I, section 8, which reads "Congress shall have power . . . to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries." Under this power Congress has from time to time enacted various laws relating to patents. The first patent law was enacted in 1790. The patent laws underwent a general revision which was enacted July 19, 1952, and which came into effect January 1, 1953. It is codified in Title 35, United States Code. Additionally, on November 29, 1999, Congress enacted the American Inventors Protection Act of 1999 (AIPA), which further revised the patent laws. See Public Law 106-113, 113 Stat. 1501 (1999). The patent law specifies the subject matter for which a patent may be obtained and the conditions for patentability. The law establishes the United States Patent and Trademark Office to administer the law relating to the granting of patents and contains various other provisions relating to patents.

What Can Be Patented The patent law specifies the general field of subject matter that can be patented and the conditions under which a patent may be obtained. In the language of the statute, any person who "invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent," subject to the conditions and requirements of the law. The word "process" is defined by law as a process, act or method, and primarily includes industrial or technical processes. The term "machine" used in the statute needs no explanation. The term "manufacture" refers to articles that are made, and includes all manufactured articles. The term "composition of matter" relates to chemical compositions and may include mixtures of ingredients as well as new chemical compounds. These classes of subject matter taken together include practically everything that is made by man and the processes for making the products. The Atomic Energy Act of 1954 excludes the patenting of inventions useful solely in the utilization of special nuclear material or atomic energy for atomic weapons. The patent law specifies that the subject matter must be "useful." The term "useful" in this connection refers to the condition that the subject matter has a useful purpose and also includes operativeness, that is, a machine which will not operate to perform the intended purpose would not be called useful, and therefore would not be granted a patent Interpretations of the statute by the courts have defined the limits of the field of subject matter that can be patented, thus it has been held that the laws of nature, physical phenomena, and abstract ideas are not patentable subject matter. A patent cannot be obtained upon a mere idea or suggestion. The patent is granted upon the new machine, manufacture, etc., as has been said, and not upon the idea or suggestion of the new machine. A complete description of the actual machine or other subject matter for which a patent is sought is required.

How can I find out if my invention is already patented? Public users may perform preliminary searches of patent information in a variety of formats including on-line, microfilm, and print at the United States Patent and Trademark Office (USPTO) Public Search Facility located in Alexandria, VA. Users can access the full-text searchable database containing patent information for all U.S. patents granted since 1976 and all patent application publications (first published in March 2001), on the USPTO web site You may also retain a patent attorney or agent to conduct a complete search

How long does it take for a patent application to be processed? Currently, the average patent application pendency is 24.6 months. Applications received in the U.S. Patent and Trademark Office are numbered in sequential order and the applicant will be informed within eight weeks of the application number and official filing date if filed in paper.

Do I need a patent attorney or agent to file my patent application?

The U.S. Patent and Trademark Office (USPTO) strongly recommend that all prospective applicants retain the services of a registered patent attorney or patent agent to prepare and prosecute their applications.

Is my innovation patentable?
Office for Technology and Trademark Licensing (OTTL), Harvard University.

For an idea to be patentable, it must consist of statutory subject matter. United States patent law permits the granting of a patent on the following statutory subject matter:

A process, such as a method of applying a vapor barrier for silicon materials.
A machine, such as a new instrument to deposit uniform layers of metallic compounds.
An article of manufacture, such as an assay kit for an infectious disease or class of diseases.
A composition of matter, such as a new molecule (characterized by amino acid sequence or base-pairs) or a new chemical compound.
New and useful improvements of the above.
Any distinct and new variety of plant, which is asexually reproduced.
Any new, original, and ornamental design for an article of manufacture.

If an idea fits into one of the previous categories, United States patent law also requires that the invention be:

New or Novel: The invention must be demonstrably different from publicly available ideas, inventions, or products (so-called "prior art"). This does not mean that every aspect of an invention must be novel. For example, new uses of known processes, machines, compositions of matter and materials are patentable. Incremental improvements on known processes may also be patentable
Useful: The invention must have some application or utility or be an improvement over existing products and/or technique
Non-Obvious: The invention cannot be obvious to a person of "ordinary skill" in the field; non-obviousness usually is demonstrated by showing that practicing the invention yields surprising, unexpected results.
Each of these three criteria is open to interpretation. Establishing novelty and/or usefulness often relies on arbitrary value judgments. For example, it may not be clear to the United States Patent and Trademark Office (USPTO) that a new gene-sequencing instrument is "demonstrably different" from other existing models, or that the use of a new hybridoma for narrow research purposes is sufficiently significant to be called a "useful" improvement over existing techniques.

Despite the possible variety of definitions of novelty and usefulness, the concept of "non-obviousness" is the most complex of these three patentability requirements. It is subject to broad and often inexact interpretation. For example, it might be argued that a new method of controlling protein production in bacteria is obvious in the face of prior art because it relies on a collection of well-known, existing and proven concepts. Conversely, one could argue the same method is not obvious because certain specific elements of the method yield surprising, unexpected results. Judging what is obvious to one of "ordinary skill" in an art is rarely straightforward, especially in technologically complex and rapidly changing fields Finally, patent law states that inventions may be patented if they have been reduced to practice, even if a physical embodiment of the invention has not been realized ("constructive" reduction to practice, as described in the preceding section). Therefore, some extrapolation about an inventive concept can be included in a patent application. The extent of permissible extrapolation, however, can be the subject of dispute with the USPTO.For example, an invention, which claims a broad class of chemical compounds, is rarely granted a patent, unless evidence is presented that several different representative members of the class have actually been made. A claim even to a single new compound usually must include a detailed description of its actual synthesis in order to receive patent protection. In the case of machines or mechanical devices, the requirements of the USPTO are much less strict.

Conception of Invention

For patent purposes, inventions are made in two stages

"Conception," which is the intellectual act of creating a complete inventive concept, including ideas for making the invention and methods of using it.

"Reduction to practice" of the inventive concept. This is defined either as "constructive" reduction to practice (patent application), even though physical embodiment of the invention may not have been realized, or "actual" reduction to practice which involves making a physical embodiment of an invention (for example, a prototype), and using it successfully for its intended purpose.

For example, a scientist might claim to have invented a novel surgical instrument or a new environmental monitor and a patent application could be filed on the invention even though the device had never actually been built. In this example, the conception would be the intellectual concept of the instrument and its use for medical or environmental applications. The reduction to practice would be a constructive reduction to practice achieved by the filing of a patent application describing the instrument and its intended use. (If the invention had been built and used, actual reduction to practice would have been achieved.)

In order to obtain a patent, all inventors, through their patent attorneys, ultimately have to convince the U.S. Patent and Trademark Office (USPTO), and its foreign counterparts, that their invention meets the requirements of patent law summarized in the next section.

Patenting of Computer Software

For software-related invention(s), if the invention is integral to a particular task or process, it may be considered as patentable by the USPTO. The USPTO, however, will not grant a patent on a pure scientific discovery, or a method of doing business, or a process, which does not require hardware, or one that simply duplicates the "mental steps" of a human being (such as a purely mathematical algorithm). The distinction between "statutory" (patentable) and "non-statutory" (unpatentable) subject matter continues to be a topic of debate among software developers, academics, lawyers, and USPTO examiners and is currently determined by case law rather than by hard and fastrules.The courts, however, have been ambiguous in defining what exactly constitutes "patentable subject matter," the first hurdle to be cleared in obtaining a patent. In response to this confusion, the USPTO recently (in March 1996) issued new Examination Guidelines for Computer Related Inventions. The new guidelines had two general objectives: to assist USPTO examiners in determining which categories of software are patentable, and to help inventors submit more successfully crafted patent applications.The guidelines set up three permissible categories for patentable subject matter involving software inventions. First, a computer or other programmable apparatus whose actions are directed by a computer program or other form of software may be considered a "machine." Second, a computer-readable memory that can be used to direct a computer to function in a particular manner when used by the computer is presumed to be an "article of manufacture." Third, a series of specific operational steps to be performed on, or with the aid, of a computer is deemed a "process."

In addition to satisfying the criterion for statutory subject matter, a software-implemented invention must also meet the patentability criteria of novelty, utility and non-obviousness. One advantage of computer software inventions is that they may be protected in a number of ways which are not necessarily mutually exclusive. For example, when an aspect of a software-related invention which is protectable by patenting, is reduced to code, the code itself may be further protected by copyright.