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Tag: patent application

Nuts and Bolts of International Preliminary Examination and the Demand Thereof

International preliminary examination of an international application may be requested by filing a demand under Chapter II of the PCT to obtain a preliminary and non-binding opinion on the questions whether the claimed invention appears to be novel, to involve an inventive step (to be non-obvious), and to be industrially applicable.  Examination is chiefly a process through which an applicant gains insight into the patentability of the invention and its likely reception in foreign patent offices.

The international preliminary examination is carried out by An International Preliminary Examining Authority (“IPEA”) carries out the examination and issues an International Preliminary Report on patentability (“IPRP”) which may provide you with some ability to evaluate the chances of obtaining patents in foreign countries before deciding whether to enter the patent offices of those countries.  Because a binding and final decision regarding patentability can only be made by the patent office in the country to which the international application is later sent, the IPRP is preliminary and non-binding, but it can be persuasive.

A demand can only be made if two conditions are met.  They generally are, especially when the international application was filed with a major nation.  First, the applicant must be a resident or national of a contracting state bound by Chapter II of the PCT.  Second, the international application must have been filed with the receiving office of a contracting state bound by Chapter II.  As of September 7, 2012, all contracting states were also bound by Chapter II.

The demand is made separately from the international application and is submitted directly to a competent IPEA.  Where the US was the receiving office, the US and Korean patent offices are  competent IPEAs.  In addition, if the US was the receiving office and the European or Australian patent offices were the search authorities, those patent offices are also competent IPEAs.  The demand automatically elects all contracting states which have been designated (frequently all member states of the PCT).

The demand must be made within the later of two time limits: 1) 3 months from the transmittal date of the International Search Report (“ISR”), or 2) 22 months from the priority date.  Generally, it is advisable to wait until the ISR and Written Opinion are issued before demand is made, so that the applicant can review the ISR and Written Opinion and determine whether it is prudent to file a demand.  The IPRP is then due within 28 months from the priority, or 6 months from the start of the examination (generally when the IPEA has received the demand, payment, and the ISR and Written Opinion), or 6 months from the date on which a translation of the application is submitted to the IPEA, whichever is later.

The applicant can amend the claims, description, and drawings of the international application before the start of the international preliminary examination.  Amendment can also be made during examination, if time permits, before the IPRP is prepared.  Amendments made in this way are identified in the demand as Article 34 amendments, which differ from Article 19 amendments.  Article 19 amendments may have been made previously.

There are two administrative fees associated with the demand.  A preliminary examination fee of 1850 Euros must be paid for the work involved in performing the international preliminary examination and preparation of the IPRP.  A handling fee of 165 Euros must also be paid to cover administrative and internal costs.  As of this writing, that is a total fee of about $2,686.00.  Attorney service fees are also generally required as well.

A Realistic Timeline of the Patent Process

As he often does, Dennis Crouch has created a chart to help better understand the patent process.  This one shows the average time between filing a patent application and receiving a first action on the merits (“FAOM”).  Generally, this FAOM comes in the form of a non-final rejection.  Very rarely is it an immediate notice of allowance; most of these occurrences are limited to design and plant patents.  Professor Crouch notes that the average pendency from filing to issuance as a patent is about 3.5 years.  That number represents a slight drop over the past few years since Director Kappos has taken the helm at the Patent Office, but the Office still has a backlog of 600,000 patent applications to work through.  Most of the 3.5 years is consumed simply in waiting for the newly-filed patent application to rise from the bottom of the stack to receive examination.

What does “Patent Pending” mean?

Jordon Trapnell is a guest author on this post.  He writes:

The words “patent pending” can be seen on products just about anywhere you look.  However, many people are confused by what it really means and what protection it offers.  The purpose of the patent pending label is to allow the inventor of a product to notify the public that they have applied for a patent on that product.  The requirement in order to use the label is simply that a patent application is on file with the U.S. Patent and Trademark Office; a provisional application also fulfills this requirement.  Keep in mind that a provisional application expires after 12 months, at which point “patent pending” could not be used unless a subsequent non-provisional application was filed during that period.

Patent pending offers no legal protection.  If Company “A” starts selling a product that is patent pending, Company “B” could legally make and sell that same product as long as the actual patent has not been issued.  However, this does not mean that there is no reason to use a patent pending mark.  A “patent pending” indication can often deter Company “B” above.  They must consider the possibility that the patent will issue, in which case they would have to stop selling the product they copied immediately or pay “A” in order to continue, both of which have tremendous costs.  No company wants to go through the process of manufacturing a new product, only to be able to sell it for a few months.  Aside from being a deterrent to competitors who might copy a product, “patent pending” can also look attractive to investors or consumers, making it an effective marketing tool.

An inventor can sue only after the patent is granted, not during the patent pending period.  Damages are not simply calculated from the date the patent issues though.  Damages are calculated from the time two prerequisites are met.  The first is that the application is published, which typically happens 18 months after it is first filed or when the patent is granted.  The second is that the infringer has received either “constructive” or “actual” notice.  Constructive notice is marking the article with the patent number.  Actual notice consists of sending a letter to the infringer.  Filing a lawsuit is also considered actual notice, but relying solely on that would result in a shorter damage period.  So one way to maximize the period from which damages can be collected is to send notification letters as soon as the application is published.  However, it is important to know that doing so may expose the sender to other very serious consequences.

Since the “patent pending” label carries no legal weight, it may be tempting to mark a product as such even though no application has been filed in order to incur its other possible benefits.  However, falsely marking something as patent pending is illegal and carries a fine of up to $500 for every offense.  Each mismarked article is a separate offense under current interpretation, meaning the fine could add up very quickly.  The law also states that any person may sue for the penalty, which means it’s not just the government that may come after you, but any competitor diligent enough to check your claim of patent pending.

No other information needs to be included with the patent pending label on the product.  In fact, it is often important that the application serial number not be included.  This serial number could potentially allow others to delay or compromise the consideration of the patent application.

Patent Titles

Titles of patent applications can be puzzling. Some titles are simple, some complicated, some precise, others vague. The most important consideration is that a title be descriptive of the invention. There once was a segment of practitioners that would purposefully title applications with vague or misleading titles, hoping that those patents wouldn’t be found by copycats. Of course, that hampers – somewhat – the ability of the application to be available as valuable prior art. It cuts both ways.

A title cannot be more than 500 characters. Please don’t pick a title that approaches anywhere near that length (the paragraph above is 504 characters). Keep it simple and descriptive of the invention to which claims are directed. If the Patent Office doesn’t like it, the Examiner will require a new title. Not a big deal, but it takes time and slows down the overall prosecution of your application.

Sampled “Success” Rates of Patent Applications, Courtesy Patently-O

Patently-O did a brief post yesterday on a selected group of patent applications to see how the applications have proceeded through the PTO.  Of the applications filed in February 2006, 57% have matured into a patent, 28% are abandoned, and 15% remain pending.  Five and a half years is a long time to work through the Patent Office, but it may be that a large majority of that 15% are in a cramped technology field, one in which the Patent Office has a disproportionately large backlog.

Patent Dashboard Displays a Clear, but Sad, View of Patent Pendency

The Patent Office has taken a number of steps in the last year or so toward transparency, approachability, and clarity.  It recently released the Patent Dashboard, or “Data Visualization Center.”  The Dashboard is a simple display of the average time it takes to get to various milestones in the patenting process.  The data is clear to read, but gruesome to contemplate.  As I previously noted, the typical amount of time between filing and receiving a first response from the Patent Office runs between 2 and 4 years; the Dashboard shows that it averages 35.4 months, or just under 3 years.

Some have criticized the Patent Office for admitting the horrible state the patent system is in.  I think, however, that this Dashboard represents another progressive step.  The PTO recently created the Inventor’s Eye, a newsletter for the inventor community.  A number of months ago, it developed and then expanded the Green Tech Accelerated Pilot Program.  Under the significant budgetary burdens that the PTO faces, these are real gains.

What is an effective filing date?

What is an effective filing date?

If you”ve done some reading about patents, you may have seen references to an “effective filing date.” For instance, while patent attorneys will often shorthand an explanation of patents by saying they offer protection for twenty years from filing date, they really mean that patents last twenty years from their effective filing date.

Typically, for most patent applications, the effective filing date is the day the application was filed. However, not all patent applications are typical; they can be continuations, continuations-in-part, or divisionals. While these can all issue as patents, they have special significance (a divisional, for instance, is an application that splits off from an original patent application, because the original claimed two or more inventions when it can only legally claim one) and they don’t always use their own filing date as the effective filing dates.

Instead, effective filing dates adopt the filing date of the application from which they sprung. So if the original – or parent – application was filed on January 1, 2009, and a divisional was filed on May 1, 2010, that was originated from the parent application, the divisional’s effective filing date will be January 1, 2009.

If you first file a provisional application and then later file a non-provisional, that non-provisional application can claim the provisional’s filing date as its own. The provisional’s filing date becomes the effective filing date for the non-provisional application and the patent that eventually issues.

These domestic examples are not the only situations in which a filing date is significant.  If your US application claims the benefit of an earlier foreign filing, the foreign filing date is not applied to your US application, but it can be relied upon for some prior art rejections.

What are the ramifications of effective filing dates? There are many. First, most patent applications are published 18 months after their effective filing date. Thus, in the example above, the parent and its divisional child will both be published on June 1, 2010. That means the divisional will be published just one month after it was actually filed. Publication day can be a starting point for obtaining damages in the event of infringement. Also, an earlier filing date can be an obstacle for other patents. Because the filing date is the presumptive invention date, an earlier effective filing date can mean that patent applications filed later by others can be refused because they were presumably invented later than yours.  And lastly, the filing date is the date on which an invention is deemed to have been invented for prior art purposes.  Thus, references that post-date the effective filing date cannot be used against the application.

Filing a Non-Publication Request

Not very long ago, patent applications were maintained in secrecy until they issued as patents.  Today, however, an application is published 18 months after its effective filing date, meaning that anyone can see your invention after you file it.  By filing a non-publication request, though, you can keep your application secret during prosecution.  The major trade-off, though, is that you won’t be allowed to then file for foreign patents.  Let’s go over some reasons you may or may not want to file a non-publication request.

I want to keep it secret!

  • I want to make sure that no one knows about my invention until the last minute – the moment the patent issues.
  • My patent application description discloses a trade secret that I want to preserve as long as possible.
  • I want to prevent big companies from learning about my invention and doing some serious R&D to discover a workaround.  They might file patents that surround my invention and thus keep me from practicing and profiting from my invention.
  • I don’t care about ever obtaining patent protection internationally.

I think publishing the application is a good idea!

  • If someone copies my invention while it is in prosecution, I can try to get damages for the infringement that occurs between publication and issuance.
  • I can use the publication as prior art and prevent others who file after my publication date from getting a patent.
  • I want to file internationally.
  • Everyone else is doing it.

Procedural Pointers:

  • The request must be filed with the application.  Federal statute requires that the non-publication request be made contemporaneously with the filing of the application.
  • You can file a non-publication request and then rescind it later if you change your mind.
  • If you made a non-publication request and then filed a patent application for the same invention in another country, you only have 45 days to notify the Patent Office.  If you inform the PTO more than 45 days later the foreign filing, your US application will be abandoned.

Patents Explained: Claims

At last, the claims!  The heart of the patent!

Appropriately bringing this series of explanatory posts to an end, the claims conclude a patent.  A patent can have one claim or many; generally, though, they’ve got 20 or less because the Patent Office will let you write up to 20 claims without paying extra fees for additional ones.  If the invention necessitates a more complete claiming profile, going beyond the 20 may be a good idea.

Patent claims are written in independent and dependent form.  Independent claims stand on their own.  Dependent claims – get this – depend from independent claims.  They include all the subject matter of the independent claims from which they depend and then add additional subject matter, making the dependent claim more specific (narrower) than the independent claim.  Again, the Patent Office will let you have 3 independent claims “for free.”

The claims are what count when it gets down to litigation.  They define the scope of the invention or how far the protection of the patent extends.  Therefore, whether the defendant’s product infringes the patent depends on the breadth of the claims.  However, the claims aren’t considered in isolation.  Their relationship to the drawings, the detailed description, and the patent’s disclosure as a whole is important, because those parts affect how the claims are construed in court.  So while the claims are a crucial component of the patent’s protection, they aren’t the whole story.

Patents Explained: Description of the Drawings

Continuing the post series explaining patents, we now address the drawing descriptions.

The description of the drawings is just that.  It refers to each drawing by number and explains what the drawing is.  The description is brief – it isn’t intended to go into great detail, but it does provide a general explanation of what the drawing is, the direction or orientation of the drawing, perhaps what the drawing features.  The description helps create some continuity between the drawings and the more detailed description of the invention.  The description is also useful for connecting one or more drawings – perhaps where it isn’t clear that two drawings represent opposed front and back views of the invention, or that one drawing is a sectional view of the invention taken from a sectional line of another drawing.