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Tag: patent FAQ

What is a Continuation Patent Application?

A continuation patent applicationpatent and trademark office is a type of continuing application. Yes, “continuation” does have a separate meaning from “continuing,” and each are proper terms in patent-ese. A few weeks ago I wrote about divisional applications, which are another type of continuing application.

A continuation application is an application that continues prosecution of the original subject matter of a previous patent application in a different way. Continuation applications are based on the same disclosure of the previous application, and do not add any new subject matter. Because they rely only on subject matter that was disclosed in the earlier application, continuation applications are entitled to the same priority date – often times – the filing date – of the earlier application. This means that even though a continuation application is filed after an earlier application, it adopts the priority date of the earlier application. Because the Patent Office limits the prior art that can be used against a patent application to art which preceded the priority date of an application, a continuation application which claims benefit to an earlier filing date can be helpful in jumping over, or antedating, prior art.

Continuation applications are often used in a few situations. An examiner will sometimes reject some claims of an application but allow others. If the inventor wants to have a patent issue immediately, the rejected claims can be canceled from the application and then re-filed in a continuation application. A continuation may also be appropriate if the inventor feels that there was subject matter disclosed in the earlier application but not claimed, and that protection for that subject matter should now be sought. Lastly, and similarly to the above point, a continuation is often filed if an earlier application claimed a product or device, but there was a method of using the device that remained unclaimed. Or vice versa. The continuation can claim the method if only the product was claimed earlier, or it can claim the product if only the method was claimed earlier.

Best Practices on Patent Filing

It is a rule we all learned in school: don’t procrastinate, don’t wait until the last minute.  It is one I adhere to in my practice.  There are enough complexities in the practice of patent law – adding poor timing and stress to the mix is unnecessary.  A few weeks ago, I was filing a client’s document, I believe it was an Office Action.  We had several weeks still to respond, but adhering to my rule, I filed it early.  Or attempted to file it early.  I attempted to log onto my Patent Office web portal from home that night, just before 9:00, and received this message:

I was upset that I wouldn’t be able to file that night, but that was fine – I had weeks before the response was due.  But if the response had been due that night and those ten minutes had gone by, I would have been scrambling to revisit the fax or certificate of mailing rules and make sure the response was timely filed.  Planning ahead, working ahead, and purposefully not trusting technology to always be there are fairly easy, simple rules to employ.

Public Disclosure and Filing a Patent Application

Your ability to file and obtain a patent depends on many things.  The novelty and non-obviousness of the invention may be foremost in your mind.  However, other things are influential as well, such as the skill of the patent attorney drafting the application, the quantity and quality of your disclosure to your patent attorney, the depth of your understanding of the invention, etc.  And, very technically, timing also matters.  There is a one-year clock that begins ticking when you publicly disclose your invention; if you haven’t filed a patent application by the time that clock runs out, you never can.

This is a painful deadline to miss.  If you’ve stalled on filing a patent application beyond the one-year deadline, you can’t file for the original invention.  But if you’ve come up with some improvements to the original invention, those have their own one-year clock ticking, so you may be able file applications on those.

Policy mainly drives the one-year deadline.  An inventor shouldn’t be able to disclose or sell an item a long period of time, build up commercial interest in the product, and then remove the product by patenting it and demanding a high premium to purchase it.  Likewise, the deadline is meant to encourage the prompt disclosure of inventions through patent publications.  There are considerations for the inventor as well: the law provides the inventor with a year grace period in which to test the marketability of a product and decide if pursuing a patent is worthwhile.

Patent law places a fairly low bar on what constitutes public disclosure, unfortunately.  Public disclosure can be thought of not as disclosing the invention in public, but rather, disclosing it without limitation or obligation of secrecy.  To keep an invention secret, all uses of it must be private, under the inventor’s control, and not for commercial purposes.

A disclosure is considered public even if the public cannot see the invention.  In one case, an inventor came up with a set of springs to hold a corset together.  He gave them to his girlfriend, who used them for ten years.  The springs were hidden within the garment itself and so weren’t visible to the outsider.  Nevertheless, this use by one single person was enough to constitute a public disclosure and prevent the inventor from obtaining a patent.  Likewise, the use of a product containing the invention without any restrictions is a public disclosure.

Restrictions alone are not enough, however.  The use must not be for commercial purposes.  In another case, the inventor had come up with a process to repair and recondition worn-out metal parts.  He used the process privately to recondition old machine parts brought in by customers.  The patent on the invention, which was filed more than a year after he first used the process in private on customer’s parts, was invalidated.  Although he was using the invention secretly, he was doing so for commercial gain, and that contradicted the policy considerations behind the one-year deadline.  The court noted that the inventor had to choose between keeping the invention secret forever or patenting and thus describing it to the public.

There is an experimental use “exception,” but it essentially follows the contours of the law.  Activity which would otherwise trigger the one-year clock is disregarded if it is experimental.  In a very old case, an inventor had developed a method of making a pavement.  He wanted to investigate whether the constructed pavement was any good, so he set up a test section and allowed the public to use.  However, he examined the pavement each day and asked users what they thought of it.  Further, it had to be tested for a substantial period of time in order to determine whether it worked appropriately.  This use was experimental and thus did not trigger the one-year clock.  Several factors now weigh into the analysis as to whether an otherwise public use is experimental, such as the extent of use, the duration of use, the presence of secrecy agreements with testers, and others.  The experimental use exception is a fairly narrow one and basically follows the logic in deciding whether a use is public or not.

In summary, public disclosure can be avoided.  By keeping the invention to yourself, or by spreading it non-commercially only with non-disclosure agreements and requiring secrecy, you can protect your patent rights.  However, you should really consult a patent attorney if you are approaching a potential one-year deadline, because failure to protect your invention can be fatal to a patent.

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.

How to Patent an Idea

Sorry, you can’t.

You can’t patent just “an idea.” It isn’t allowed by the law.   Patents are granted only for things, processes, machines, manufactured articles, inventions.  Abstract ideas and theories, alone, cannot be patented.  Recent Supreme Court law just reaffirmed this.   Generally, you have to work up with something a bit more developed than just an idea to get a patent.

Let’s say you’ve taken your idea and made a prototype – now you’ve got something which you might be able to patent.  Attorneys would probably disagree on the first step to take.  Some might say to document it in an inventor’s notebook.   Some might say to work on it and develop it.  Hopefully none tell you to write about in a letter in and mail it to yourself.  I advise that you speak with an attorney once you are reasonably close to a “finished” product.   That may only take three prototypes, or it might take three hundred.  Once you’ve got something you think is truly different, truly new, and nearly complete, talk to a patent attorney (unless you need help developing the invention).

Critical in you ability to get a patent is when you first disclosed it.  Above all, respect the one-year deadline: once you’ve disclosed your invention to a person or people who have no obligation to keep it secret, you’ve only got one year to patent it in this country.   After that, you lose the right forever.   In other countries around the world, you can lose the ability to patent it if you tell or show the invention to someone before you file a patent application.

A patent attorney may suggest a few things when you first talk to him or her.  They should listen to what you’ve come up with, take a look at it, hear what your ultimate plans and goals are, and discuss your options.   Some may recommend a provisional application – a sort of place-holder that can have advantageous early-filing benefits.   Some may recommend you go ahead with a full utility patent application.   Others may suggest you perform a patent search first to determine whether your invention has been invented or described before, in which case it might not be eligible for a patent.

If you proceed with a patent application, please find an attorney to draft the application.   Just as you would want a plumber to move your toilet lines from one side of the bathroom to the other, or a cardiologist to perform your bypass (unfortunate pairing of examples), you want a patent attorney to write the patent application.   Doing it yourself can render your invention worthless.   There are many rules that have to be followed, many court cases that inform how a patent application is read and construed, and a patent attorney will be aware of these and use them when drafting the application.

The patent attorney will work closely with you before filing the application.   You’ll talk with him or her often, describing the invention and its possible variations.   Once the application is ready, you’ll have to sign some papers verifying the contents and veracity of the application and acknowledging the duties you have to the Patent Office once the application is filed.  The application is then filed along with a set of fees paid to the Patent Office.   Then begins the waiting game.

The Patent Office is extremely backlogged – it takes, on average, two to four years before the Patent Office sends a first response to you.   When it does respond, it will either allow your application or it will make rejections and objections that point out problems.  You can then abandon the application or make changes and send them back in response.  If you continue with the application, the Patent Office will send a second response.   Sometimes, at this point, you may continue arguing against the Patent Office’s rejections.   Sometimes though, it is more worthwhile to just let the application die.   Hopefully, your application will be approved and then issue as a patent.   You’ll have to pay another fee – an issue fee – to have your application become an official patent.

Once the patent issues, you will have to pay maintenance fees every few years to keep it alive.   During this time, you should monitor the patent to see if others are infringing it.  You might also want to market it or try to license it to competitors or companies that could use your product.  Twenty years after the effective filing date of the patent, your patent will expire. At that point, the public can start making your invention without your permission.  The twenty-year monopoly you were granted to exploit and sell your invention is your trade-off for giving the invention to the public at the end of that 20 years.

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: the Detailed Description

Next in my series of posts, a topic probably deceiving the pithy label recently given: the detailed description.

This eponymous section of a patent actually needs more explanation than one might garner from its name alone: the detailed description goes beyond a description of the invention.  The description is the primary means for providing support to the claims, offering explanation, giving body to the patent.  The description lays out how the invention is made and how it is used in sufficient detail to enable someone in the invention’s field of industry to enable them to also make and use it.  It teaches the public how to build and use this thing you’ve invented and is essential in the quid pro quo that the patent system represents.

The description generally is also the part of the patent that describes the best mode – sort of the best form of the invention – although it need not point out the best mode.  There is no requirement that the patent specifically flag the best mode; it just has to be in there.

The description also provides the patent applicant to become “his or her own lexicographer;” to give words special meanings that may be uncommon or different from their general understanding.

Often, the detailed description follows the drawings from figure to figure, explaining what each shows with great specificity.  The description will sometimes set out multiple embodiments of the invention, even if those embodiment aren’t claimed later on.  And most patent practitioners show their apathy protect the breadths of the invention by including phrases like “many variations on the invention will be obvious to one having skill in the art and are within the scope of this disclosure but will not be repeated here.”

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.

How to Protect your Invention with a Patent

I’ve posted a basic description of the patenting process, from inventing to maintaining the patent.  The video is a visual explanation of how an invention forms, how the patent application is prepared, filed, and processed, and what to do when the patent issues.  Please read the legal notice, enter your name and email address, and you’ll be given access to the video.

The request and provision of this video does not create an attorney-client relationship.