"What
is patentable?"
Patents are granted to inventions that are new, useful
and "non-obvious". New means that that the invention was
not "thought of" before. Useful means that it the
invention has a practical application. And non-obvious, the
trickiest of the requirements, means that the invention required a
definite "spark" of creation by the creator. By that, we
mean the invention could not be obviously deduced from the "field of
art". The inventor had to be creative in order to make the
invention. By the way, an patentable invention does not have to be
entirely new! If an inventor improves upon an existing
"device", that improvement is eligible for patenting.
Only the United States Patent Office (USPTO) had the
power to determine what is patentable in the United States of
America.
To do this, the USPTO divided everything patentable into
fields of art and assigned working groups of specialists known as
"patent examiners". It is the patent examiners job to
inspect the invention, or its patent application, research the field of
art that it falls into and make the ultimate decision of whether some or
all of the "elements" of the invention are worthy of receiving a
patent.
1. The first step in
this patent process lies with the creator and is the act of inventing.
2.
The inventor must now perform a "reduction to
practice". This means showing that the invention can work in
the real world. In some cases this may call for actual construction of the invention,
but more likely entails only detailed drawings.
3. The
inventor needs to determine if the invention meets the minimum
statutory requirements for
applying for a patent. Here, a patent attorney often plays an important
and objective role. The inventor can take the invention and its accompanying materials to
the patent attorney for a patentablity review.
4. If the
preliminary review is promising, a patent search may be conducted.
This search researches the relevant field of art for similar inventions
that did receive patents. It is with this information that a patent
attorney can be very valuable in evaluating. This information will
be essential in the later drafting of the patent application.
5. If
the preliminary review and the patent search support the opinion that the
invention may receive patent protection drafting the patent application is
the next step. This is a collaborative effort between the patent
attorney and the inventor. Generally, the application develops
through a series of drafts as the patent attorney perfects the legal
argument in conformance with the inventor's vision.
6. First the USPTO then reviews the application for technical
compliance. After which the application is assigned
to a specific patent examiner. This examiner begins
studying the application and compares it to the prior art in the
field. The objective here is to determine if the invention does
indeed satisfy the minimum requirements for a patent, and if it does, just
what part deserves to be patented. The examiner may grant a patent
for every claimed element, or just some of the elements or none of the
elements depending on the findings.
The actual examination process may entail written
communications, more debate, between the patent attorney and the examiner.
It is hard to predict exactly when a patent will be processed. When it is,
the examiner provides a notice and final findings and, if successful, the
inventor pays an issuance fee to the USPTO and gets a well earned patent to hang
on the wall (and hopefully, make some money with through royalties!)
Monopoly
Patents are a
monopoly over the manufacture or reproduction of an invention. This
exclusive control over the invention lasts last 20 years and is enforced
throughout all 50 states simultaneously by the Federal Court
system.
Granted by the United States Patent and
Trademark Office (USPTO), to be eligible for a patent, a patent applicant
must submit a patent application that properly describes the invention and
pay the processing fees for a patent. If the application meets the
minimum technical standards, the USPTO will assign a specialist, or patent
examiner, for further evaluation of the application. The patent
examiner's studies
the application to make the determination whether or not the invention
meets minimum statutory standards and therefore deserves patent
protection.
Patent Application
The application itself, composed of multiple parts, ideally presents a
unified and strategic view of the invention and the underlying reasons why
it merits patent status. The examiner will either grant patent
status or denied patent status or granted patent status only in select
part concerning the application. The extent to which an invention
receives patent protection is in part dependent upon the subject matter of
the invention, the drafting of the patent and the expertise of the
patent examiner.
Ultimately, the patent application should aim at securing from the patent
examiner the most comprehensive and defensible patent coverage feasible
for the invention. This will make the invention much more secure
against infringement (imitation).
Overall, the entire patent application process may be perceived as a form of written debate wherein the patent
applicant strives for the maximum patent coverage possible. Conversely, the
patent examiner strives to restrict this coverage as much as is feasible.
How long does it take?
The answer to this particular question actually depends on quite a
number of variables. However, overall, the period of patent examination
varies greatly. It may be as little as one year and a half, or much
more depending upon the particular factors of the invention and the
level of sophistication of the underlying subject matter. If finally
granted, the patent will give the inventor exclusive control over the
invention. Through this control, or monopoly, the inventor can
exercise exclusive manufacturing rights, or alternatively, can license the
manufacture of the invention to others for royalties. In either
case, if handled properly, this will result in well earned income for the
creator.
Why
a patent attorney?
Well, as one of our clients once expressed,
"Would you back a semi-rig down a long narrow, twisted alley, or
would you get a professional truck driver?" Of course we would
opt for the truck driver, so our client opted for a patent
professional. It is in the waging the debate with the patent
examiner that the prior experience, writing proficiency and
expertise of the patent attorney practitioner is extraordinarily valuable.
The prime difference between a patent agent and a patent examiner is that
the attorney can represent patent matters within the court system and the
agent can not.
Appeal
In those instances where it is believed that the examiner
mistakenly issued a final ruling as to patent status, there is an appeal
process.
