International Patent Group at a glance
Patent Law You Can Understand
International Patent Group (IPG) assists clients worldwide in establishing and obtaining intellectual property (patent) rights for their invention or assisting in entering the International Patent Application (PCT) stage. IPG specializes in offering patent and engineering services geared towards corporations, intellectual property firms, and private inventors.
Whether you need patent or invention searches ranging from patentability to infringement, or preparing and prosecuting a patent application on your invention, IPG can render the quality of service you need, affordably. With over twenty (20) years of experience in the patent industry, you will be completely satisfied with the results.
Patent protection is an important step in the development of any new invention, idea, or concept. Either you are a large research and development group or an independent inventor, all will enjoy the limited monopoly a patent provides to them. The patent process has become complicated and tricky to navigate even for the most experienced inventor. Therefore, it is highly encouraged that you utilize the services of a registered patent professional.
International Patent Group is a highly specialized firm that provides complete patent services from the initial review of an idea or invention, through the preparation and prosecution of your patent application, to the final outcome of the examination process which hopefully results in an issued patent. Assistance can also be provided in the filing of patent applications in many foreign countries or through the international application stage (PCT). IPG has experience in provided services for inventions in a wide variety of industries and with corporations located all over the world, but no matter how large or small our clients get the same level of attention and detail.
Patents are highly regarded as one of the most import assets an inventor or company can have. The owning of a monopoly on an invention gives you the opportunity to control the outcome of your idea.
Patent Searches
Patentability Search
A standard patentability search is intended to locate patents which help you in determining the patentability, novelty, and non-obviousness of your invention. If feasible, a search will include both the utility and design features of your invention. This provides you with the option of pursuing both design and utility patent protection. This common search finds the most related prior-art patents pertinent to the patentability of your invention. Typically, 5-15 prior-art patents are found and may serve as a basis for a patentability opinion, and are submitted in an invention disclosure statement with your patent applications filing.
Validity Search
A validity search is designed to locate prior art patents which predates the effective filing date of the patent being investigated and which may be used to challenge the validity of the claims in that patent. A validity search can serves as a basis for a legal opinion against infringement or as due diligence prior to selling or license a patent. File wrappers can be obtained and reviewed when authorized.
Infringement Search
An infringement search normally involves the careful review of unexpired U.S. patents to locate claims which read on the invention at issue. Additionally, analogous art areas are also investigated and supplied to assist you to address the issue of contributory infringement.
Right to Use/Clearance Search
A right to use or clearance search normally includes a complete infringement search through unexpired U.S. patents which could present a possible infringement problem with respect to the invention at issue, and a very limited validity search through both expired and unexpired patents and publications which might be used to invalidate any patents that might cause an infringement situation. Another reason in locating expired patents is to provide proof that an invention is already in the public domain.
Collection Search
A collection search will normally involve the collecting of ALL U.S. patents relating to a particular invention or subject matter. Any patent that is relevant to the invention will be included. This type of search can produce from 20 to 300 patents, depending on the scope of the invention. This search can be limited by specifying certain years, limiting the number of located patents, specifying assignee or inventor, or providing more specific information on the invention.
State of the Art Search
A state of the art search is directed to finding patents that represents the general state of art (technology) to a particular type of invention or subject matter. A state of the art search is similar to a collection search but the searcher is allowed judgment in selecting patents. This type of search normally locates patents from the last 15 to 20 years, including published patent applications.
Technical Literature Search
A technical literature search involves the review non-patent documents from online computer databases. The non-patent documents may include magazines, newspapers, journals, and other documents.
Assignment/Patentee Search
An assignment search discovers patents that were assigned at issue or after issue to a particular company or entity. An abstract of title can be obtained for a patent, at an additional charge. A patentee search discovers patents that were invented by a particular person.
Trademark Search
A trademark search involves the review of trademarks having a similar mark, and in similar goods and services, as your product name. Federal and state trademarks can be reviewed
A patentability search is probably the most valuable tool you can have during the initial stages of invention development. A registered U.S. patent agent will conduct your search and are never sub-contracted out. Standard patentability searches include a thorough search of U.S. patents and published applications, and selected foreign patent documents. The results of a patentability search will assist you in the decision of which type of patent application should be filed or if more work is needed on your invention.
If required, a formal legal opinion on patentability can be prepared.
Patent Application Services
U.S. Provisional Patent Application
A Provisional Patent Application (PPA) allows you to get in the patent system more quickly and at less cost than a non-provisional patent application. It provides the means to establish an early effective filing date for any future U.S. or foreign patent application filed within 12 months from the provisional filing date. It also allows the term "Patent Pending" to be applied to your invention. This can be very useful for clients who would like to test the market place for one year before making the commitment and expense to move forward with a non-provisional patent application.
U.S. Non-Provisional Patent Application
A Non-Provisional Patent Application is offered for three types of patents:
- Utility patent by far, the most common type of patent. Utility patents may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof. Utility patents are best suited for functional inventions, such as devices, tools, or inventions with electrical or mechanical components. A utility patent has a term up to twenty (20) years from the earliest filing date of the patent application. This patent term can be extended under certain circumstances.
- Design Patent may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture. In general, a Design patent protects only the appearance of an invention (how it looks).
- Plant Patent may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant. This type of patent protection is rare.
International Patent Application
An International (PCT) patent application is an international treaty, administered by the World Intellectual Property Organization (WIPO), between more than 125 Paris Convention countries. The PCT makes it possible to seek patent protection for an invention simultaneously in each of a large number of countries by filing a single “international” patent application instead of filing several separate national or regional patent applications. The granting of patents remains under the control of the national or regional patent Offices in what is called the “national phase”.
Continuation Application/Request for Continued Examination (RCE)
To implement RCE practice, the Office has added 37 CFR 1.114 to provide a procedure under which an applicant may obtain continued examination of an application by filing a submission and paying a specified fee, even if the application is under a final rejection, appeal, or a notice of allowance. Under United States patent practice, an RCE or continuation patent application is an application which claims priority from a previously filed application. Usually a continuation application is filed when the Patent Office has responded to the parent application with a final office action, but the applicant wishes to revise the claims again. A continuation application receives the priority date of its parent application. A continuation application is often filed using the file wrapper continuation (FWC) administrative procedure.
Continuation-In-Part (CIP) Application
The United States patent practice allows the owner of a pending patent application to file a what is called a “continuation-in-part"; patent application. A CIP patent application is an application which contains new matter in conjunction with a previous patent application (parent application), and which was filed at a time when the parent application was pending. If such an application issues as a patent, then the patent has multiple priority dates. Some claims of the patent enjoy the priority date of the parent application, while other claims might enjoy only the filing date of the CIP application as their priority date.
Divisional Application
A divisional patent application is an application claiming priority from a previously filed patent application (parent application) in which more than one invention was disclosed. The divisional application has claims directed to a different invention than that claimed in the parent application. The most common way that this happens is that the Patent Office rules that your application contains more than one invention, communicating this in what is called a "restriction requirement". The applicant then elects to pursue one of the inventions in the parent application, and optionally submits a "divisional application" containing the claims regarding another of the inventions. The divisional application is entitled to the filing date of the parent application as its priority date.
U.S. Provisional Patent Application Information
Please be aware that a Provisional Patent Application (PPA) is NOT a patent, it is only a temporary application that provides you with a filing date that can be relied upon later for a possible claim of priority.
A PPA allows filing without a formal patent claim, oath or declaration, or any information disclosure (prior art) statement. It provides the means to establish an early effective filing date in a non-provisional patent application filed under 35 U.S.C. § 111(a). It also allows the term "Patent Pending" to be applied to your invention. This can be very useful to private inventors who would like to test the market place for one year before making the commitment and expense to move forward with a non-provisional patent application. Within one year of filing a PPA, an applicant must file a Non-Provisional application in order to take advantage of the priority afforded to the Provisional application filing. A Provisional application is never examined by a Patent Office examiner and is not available to the public until later on in the patent process.
A PPA has a pendency lasting 12 months from the date the PPA is filed. It is important to understand that the 12-month pendency period cannot be extended. This means that an applicant who files a PPA must file a corresponding non-provisional application for patent during the 12-month pendency period of the PPA in order to benefit from the earlier filing of the provisional application. If you miss this 12-month deadline for claiming priority, then you may still be able to petition to accept an unintentionally delayed claim under for the benefit of a prior-filed provisional application.
Cautions
- Provisional applications are not examined on their merits.
- The benefits of the provisional application cannot be claimed if the one-year deadline for filing a non-provisional application has expired.
- Provisional applications cannot claim the benefit of a previously-filed application, either foreign or domestic.
- It is recommended that the disclosure of the invention in the provisional application be as complete as possible. In order to obtain the benefit of the filing date of a provisional application the claimed subject matter in the later filed non-provisional application must have support in the provisional application.
- If there are multiple inventors, each inventor must be named in the application.
- The inventor(s) named in the provisional application must have made a contribution to the invention as described. If multiple inventors are named, each inventor named must have made a contribution individually or jointly to the subject matter disclosed in the application.
- The non-provisional application must have one inventor in common with the inventor(s) named in the provisional application to claim benefit of the provisional application filing date.
- A provisional application must be entitled to a filing date and include the basic filing fee in order for a non-provisional application to claim benefit of that provisional application.
- There is a surcharge for filing the basic filing fee or the cover sheet on a date later than filing the provisional application.
- Provisional applications for patent may not be filed for design inventions.
- Amendments are not permitted in provisional applications after filing, other than those to make the provisional application comply with applicable regulations.
- No information disclosure statement may be filed in a provisional application.
- A provisional application cannot result in a U.S. patent unless one of the following two events occur within 12 months of the provisional application filing date:
- a corresponding non-provisional application for patent entitled to a filing date is filed that claims the benefit of the earlier filed provisional application; or
- a grantable petition under 37 CFR 1.53(c)(3) to convert the provisional application into a non-provisional application is filed.
Features
- provides simplified filing with a lower initial investment with one full year to assess the invention’s commercial potential before committing to the higher cost of filing and prosecuting a non-provisional application for patent;
- establishes an official United States patent application filing date for the invention;
- permits one year’s authorization to use "Patent Pending" notice in connection with the invention;
- begins the Paris Convention priority year;
- enables immediate commercial promotion of the invention with greater security against having the invention stolen;
- permits applicant to obtain USPTO certified copies;
- allows for the filing of multiple provisional applications for patent and for consolidating them in a single §111(a) non-provisional application for patent; and
- provides for submission of additional inventor names by petition if omission occurred without deceptive intent (deletions are also possible by petition).
WARNINGS
A provisional application automatically becomes abandoned when its pendency expires 12 months after the provisional application filing date by operation of law. Applicants must file a non-provisional application claiming benefit of the earlier provisional application filing date in the USPTO before the provisional application pendency period expires in order to preserve any benefit from the provisional-application filing.
Beware that an applicant who publicly discloses his or her invention (e.g., publishes, uses, sells, or otherwise makes available to the public) during the 12 month provisional application pendency period may lose more than the benefit of the provisional application filing date if the 12 month provisional application pendency period expires before a corresponding non-provisional application is filed. Such an applicant may also lose the right to ever patent the invention. See 35 U.S.C. 102.
Effective November 29, 2000, a claim under 35 U.S.C. 119(e) for the benefit of a prior provisional application must be filed during the pendency of the non-provisional application, and within four months of the non-provisional application filing date or within sixteen months of the provisional application filing date (whichever is later). See 37 CFR 1.78 as amended effective November 29, 2000.
Independent inventors should fully understand that a provisional application will not mature into a granted patent without further submissions by the inventor. Some invention promotion firms misuse the provisional application process leaving the inventor with no patent.
U.S. Non-Provisional Application Information
The United States Patent and Trademark Office (USPTO) offer three types of patents:
- Utility Patent: By far, the most common type of patent. Utility patents may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof.
- Design Patent: Design patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture. In general, a Design patent protects only the appearance of an invention (how it looks).
- Plant Patent: Plant patents may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant. This type of patent protection is rare.
In brief, the main components of a Non-Provisional patent application comprises of an abstract, a specification, at least one drawing illustrating the claimed invention, and at least one claim. A declaration or oath must also be submitted with the application, along with a filing fee.
Utility Patents
A utility patent is granted by the Government to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof. The term of a utility patent lasts for 20 years from the earliest effective filing date.
The purpose of the abstract is to enable the USPTO and the public to determine quickly the nature of the technical disclosures of your invention. The abstract points out what is new in the art to which your invention pertains. It should be in narrative form and generally limited to a single paragraph, and it must begin on a separate page. An abstract should not be longer than 150 words.
The specification is a written description of the invention and of the manner and process of making and using the same. The specification must be in such full, clear, concise, and exact terms as to enable any person skilled in the art or science to which the invention pertains to make and use the same.
The claims must particularly point out and distinctly claim the subject matter which you regard as the invention. The claims define the scope of the protection of the patent. Whether a patent will be granted is determined, in large measure, by the choice of wording of the claims.
Design Patents
A design consists of the visual ornamental characteristics embodied in, or applied to, an article of manufacture. Since a design is manifested in appearance, the subject matter of a design patent application may relate to the configuration or shape of an article, to the surface ornamentation applied to an article, or to the combination of configuration and surface ornamentation. A design for surface ornamentation is inseparable from the article to which it is applied and cannot exist alone. It must be a definite pattern of surface ornamentation, applied to an article of manufacture.
Plant Patents
A plant patent is granted by the Government to an inventor (or the inventor's heirs or assigns) who has invented or discovered and asexually reproduced a distinct and new variety of plant, other than a tuber propagated plant or a plant found in an uncultivated state. The grant, which lasts for 20 years from the date of filing the application, protects the inventor's right to exclude others from asexually reproducing, selling, or using the plant so reproduced. This protection is limited to a plant in its ordinary meaning:
- A living plant organism which expresses a set of characteristics determined by its single, genetic makeup or genotype, which can be duplicated through asexual reproduction, but which can not otherwise be "made" or "manufactured".
- Sports, mutants, hybrids, and transformed plants are comprehended; sports or mutants may be spontaneous or induced. Hybrids may be natural, from a planned breeding program, or somatic in source. While natural plant mutants might have naturally occurred, they must have been discovered in a cultivated area.
- Algae and macro fungi are regarded as plants, but bacteria are not.
The information presented in this publication is tailored to apply to and is limited to patents on asexually reproduced plants. While the USPTO does accept utility applications having claims to plants, seed, genes, etc., such practice is beyond the scope of this publication. Intellectual property protection for true breeding seed reproduced plant varieties is offered through the Plant Variety Protection Office, Beltsville, Md., which should be contacted for information regarding intellectual property protection for such crops.
U.S. Continuation Application Information
Continuation Application/Request Continued Examination (RCE)
To implement RCE practice, the Office has added 37 CFR 1.114 to provide a procedure under which an applicant may obtain continued examination of an application by filing a submission and paying a specified fee, even if the application is under a final rejection, appeal, or a notice of allowance. Under United States patent practice, an RCE or continuation patent application is an application which claims priority from a previously filed application. Usually a continuation application is filed when the Patent Office has responded to the parent application with a final office action, but the applicant wishes to revise the claims again. A continuation application receives the priority date of its parent application. A continuation application is often filed using the file wrapper continuation (FWC) administrative procedure.
Continuation-In-Part (CIP) Application
The United States patent practice allows the owner of a pending patent application to file a what is called a “continuation-in-part"; patent application. A CIP patent application is an application which contains new matter in conjunction with a previous patent application (parent application), and which was filed at a time when the parent application was pending. If such an application issues as a patent, then the patent has multiple priority dates. Some claims of the patent enjoy the priority date of the parent application, while other claims might enjoy only the filing date of the CIP application as their priority date.
Divisional Application
A divisional patent application is an application claiming priority from a previously filed patent application (parent application) in which more than one invention was disclosed. The divisional application has claims directed to a different invention than that claimed in the parent application. The most common way that this happens is that the Patent Office rules that your application contains more than one invention, communicating this in what is called a "restriction requirement". The applicant then elects to pursue one of the inventions in the parent application, and optionally submits a "divisional application" containing the claims regarding another of the inventions. The divisional application is entitled to the filing date of the parent application as its priority date.
International/Patent Co-Operation Treaty (PCT) Application
The PCT is an international treaty, administered by the World Intellectual Property Organization (WIPO), between more than 125 Paris Convention countries. The PCT makes it possible to seek patent protection for an invention simultaneously in each of a large number of countries by filing a single “international” patent application instead of filing several separate national or regional patent applications. The granting of patents remains under the control of the national or regional patent Offices in what is called the “national phase”.
Briefly, an outline of the PCT procedure includes the following steps:
Filing: you file an international application, complying with the PCT formality requirements, in one language, and you pay one set of fees.
International Search: an “International Searching Authority (ISA)” (one of the world’s major patent Offices) identifies the published documents which may have an influence on whether your invention is patentable and establishes an opinion on your invention’s potential patentability.
International Publication: as soon as possible after the expiration of 18 months from the earliest filing date, the content of your international application is disclosed to the world.
International Preliminary Examination: an “International Preliminary Examining Authority (IPEA)” (one of the world’s major patent Offices), at your request, carries out an additional patentability analysis, usually on an amended version of your application.
National Phase: after the end of the PCT procedure, you start to pursue the grant of your patents directly before the national (or regional) patent Offices of the countries in which you want to obtain them.
Although the PCT system does not provide for the grant of “an international patent”, the system simplifies the process of filing patent applications, delays the expenses associated with applying for patent protection in foreign countries, and allows the inventor more time to assess the commercial viability of his/her invention. For more information see PCT Legal Administration Home Page or WIPO PCT Systems Home Page.
International Publication
WIPO publishes the international application shortly after the expiration of 18 months from the priority date (if it has not been withdrawn earlier), together with the international search report. You receive a copy of the published international application, and each PCT Contracting State receives a copy of all published international applications. In addition, WIPO publishes the weekly PCT Gazette which contains basic data about the international applications published that week in a uniform and abbreviated format. The Gazette can be found at WIPO Gazette – it is searchable (by bibliographic data, text of the title and abstract, and by full text soon after publication), and the interface is multilingual (English, French, Spanish).
International Preliminary Examination
International preliminary examination is a second evaluation of the potential patentability of the invention, using the same standards on which the written opinion of the ISA was based. If you wish to make amendments to your international application in order to overcome documents identified in the search report and conclusions made in the written opinion of the ISA, international preliminary examination provides the only possibility to actively participate in the examination process and potentially influence the findings of the examiner before entering the national phase – you can submit amendments and arguments, and are entitled to an interview with the examiner. At the end of the procedure, an international preliminary report on patentability (IPRP Chapter II) will be issued. For a given international patent application, there may be one or more competent IPEAs; your PCT receiving Office can supply details or you may consult the PCT Applicant’s Guide and the PCT Newsletter.
National Phase Entry
It is only after you have decided whether, and in respect of which States, you wish to proceed further with your international application that you must fulfill the requirements for entry into the national phase. These requirements include paying national fees and, in some cases, filing translations of the application. These steps must be taken, in relation to the majority of PCT Contracting States’ patent Offices, before the end of the 30th month from the priority date. There may also be other requirements in connection with the entry into the national phase – for example, the appointment of local agents. More information on national phase entry in general can be found in Volume II of the PCT Applicant’s Guide, and specific information concerning fees and national requirements can be found in the national chapters for each PCT Contracting State in the same Guide.
Once you have entered the national phase, the national or regional patent Offices concerned begin the process of determining whether they will grant you a patent. Any examination these Offices may undertake should be made easier by the PCT international search report and the written opinion, which enable you to make necessary amendments to the claims in the application even before the national procedure starts. It is facilitated even more by the international preliminary examination procedure during which further amendments (and their patentability evaluation) are possible. You also achieve other savings in communications, postage and translations because the work done during the international processing is generally not repeated before each Office (for example, you submit only one copy of the priority document instead of having to submit several copies).
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