Patents

Miami, Florida based patent attorney assisting inventors and/or their assignees throughout the State of Florida in drafting and prosecuting patent applications before the United States Patent & Trademark Office

A patent is essentially a limited monopoly whereby the patent holder is granted the exclusive right to make, use, and sell the patented innovation for a limited period of time. For utility and plant patents, the patent term is generally about 20 years from the filing date. For design patents, the patent term is 14 years from the patent issue date. This discussion will focus on utility patents.

The procurement of IP in the form of patents has in particular been historically associated with economic growth and prosperity. The commercialization of patented products and processes which actually make it to the market place can cost millions of dollars depending upon the complexity of the patented innovation. For a variety of reasons, ranging from regulatory issues to negative market influences, many patented products and processes may never make the money which was anticipated at the time the decision was made to invest in the innovation. That is, a patent does not guarantee a home run in the market place.

So just how do patents play a role in driving economic growth and therefore job growth? Companies, either in and of themselves, and/or through venture capitalists or other sources of  seed money, are much more likely to assume the reasonable risk of investing in a promising new product or process if they know they will enjoy the associated exclusive and beneficial rights associated with any resultant utility patent for approximately twenty years following the patent’s original application date. In other words, the financial investment risk may well be worth the future economic reward.

A patent can therefore be viewed as a means of encouraging investment in new and innovative products and processes based on the anticipated grant of patent protection for about 20 years following the initial filing date. Once a patent expires, anybody is then free to commercially exploit the product/process covered by and described in the patent. The rise of the generic drug market is a good example of the freedom to operate in the market previously owned by the patent owner.

America Invents Act of 2011

Over two hundred years since the signing of the U.S. Constitution, the executive and legislative branches of the U.S. government continue to recognize that rewarding innovators for their hard work and creativity through patent grants is a means for encouraging economic growth. On September 23, 2011, President Obama signed into law the America Invents Act (AIA). The AIA is intended to, among other things, speed-up the lengthy process generally associated with the patent application process. Although there has been considerable commentary upon the merits of the new law, especially regarding its potential negative impact on small businesses, the fact remains that the process of procuring a patent has historically often been a very challenging, time consuming endeavor. Any procedures developed by the United States Patent and Trademark Office (USPTO), the agency responsible for promulgating rules and regulations concerning the new patent laws which will speed up the patent procurement process without comprising the generally recognized quality of USPTO granted patents, should be welcomed by all innovators and their patent attorneys.

The most controversial provision of the AIA is that the United States has now converted from a first-to-invent to a first-to-file system. Until the enactment of the AIA, the United States had been the only country based on first-to-file system. Nevertheless, the AIA’s first-to-file system has certain provisions which distinguish it from traditional first-to-file systems. In addition, in order for a patent to be awarded one must still be an inventor, which means that the applicant must have contributed to the invention’s conception.

The AIA is extremely complex and it remains to be seen how the federal circuit will interpret the various provisions when litigation under the new law is eventually commenced. In the meantime, inventors should note that the first-to-file provisions go into effect on March 16, 2013.

Requirements for Securing Patent Protection in the U.S.

In order to obtain patent protection, the inventor(s) must establish within the patent application that the invention involves (1) patentable subject matter (machine, process, method of use, manufacture, or composition of matter, or improvement thereof); (2) is useful; and (3) is novel and non-obvious. In addition, the patent application’s content must be presented in such full, clear, concise, and exact terms so as to enable any person skilled in the art to which it pertains to make and use the invention by setting forth the best mode contemplated by the inventor(s) of carrying out his invention.

Prior art is the benchmark used by the examining attorney to determine if the invention is novel and non-obvious. The patent applicant should conduct a thorough prior art search prior to filing a patent application. In fact, a well-thought-out prior art search should be conducted before considerable funds are even expended on developing the invention, only to later find out that the invention either: a) infringes a prior granted patent; and/or 2) will have a poor chance of getting patent protection because of the prior art.

Patent attorneys will generally work with a patent search expert to develop a feasible search approach based on the invention. The search should include foreign prior art since certain foreign patent publications can be used as prior art by the USPTO patent examiner. Remember that the USPTO’s patent examiner will himself/herself be conducting a thorough prior art search. The purpose of the applicant’s search is several fold:

• To determine if the proposed invention is novel and non-obvious enough so that it should have reasonable chance of being granted a patent;
• To provide information which can also be used in preparing the patent application to explain how the proposed invention is distinguishable from the closest prior art;
• To provide information which can be used in claims construction to help ensure that the application’s claims will be distinct from the prior art;
• To provide ideas as to how the inventors(s) may be able to modify the invention to get around existing awfully close prior art and thereby increase the chances of being granted a patent with the broadest possible protection as defined by the claims; and/or
• To provide information as to potential infringement problems with existing patented inventions.

The patent’s claims define the invention. The claims must be drawn from the information disclosed in the patent application. The applicant will, of course, wish to obtain the broadest possible claim coverage. The patent examiner may reject each and every claim presented in the application, allow certain claims and reject other claims, and/or accept amended claims. Often times, the patent application examiner will himself/herself suggest amendments.  There will generally be a lot of going back and forth between the patent examiner and the applicant’s attorney (or pro se applicant) concerning claim(s) allowance. The applicant will have the right to appeal any negative decision by the patent examiner.

The foregoing is intended to illustrate that patents are generally very complex documents, and the patent procurement process can be very time consuming. There is no guarantee that a patent will granted, or if granted, that all of the originally hoped for scope will be part of the issued patent. Yet issued patents can be extremely valuable intellectual property if the invention makes it to market. And that is why thousands of patents are filed every year with the USPTO.

Steps can be taken to try and improve the chances that a patent will be issued with most of the original claims in place, or with minor amendments to the original claims.  First, as discussed above, the patent claims should be based on the then state of the prior art. Patent applications should be well written and readily understandable by those skilled in the art for the particular field covered by the invention. Drawings, if required, should be accurately described. Claims should be written and rewritten and reviewed to help ensure that they are adequately supported by the application’s written description. The written description should itself be reviewed for thoroughness and clarity to help ensure that it is covering the intended scope of the invention and is indeed enabling. It is important to note that under patent law, new matter cannot later be added to the application because the patent application preparer accidentally left something out. Furthermore, the addition of later claims to the application undergoing examination will be forbidden if adequate support for the new claims cannot be found in the application’s original specification.

If you are: a) contemplating filing a patent application in the areas of biotechnology, chemistry (including polymer/materials chemistry), medical devices, cosmetics, food science, pharmaceuticals, and/or packaging; b) have already prepared a draft patent application in one of these specified areas on your own which you would like to have reviewed by a patent attorney; or c) have a provisional patent application which is fast approaching the one year anniversary date for filing a utility patent application, we encourage you to call us at (305) 279-4740 or contact us online for a FREE consultation. If we should end up representing you as your patent attorney, we will use a teamwork approach between our office and you to prepare a solid patent application based on the various factors/issues associated with your particular invention.