Patents in the United States are governed by the Patent Act (Title 35 of the United States Code) as amended by the Leahy–Smith America Invents Act. There are three types of patents: utility patents, design patents, and plant patents. The most common type of patent is a utility patent.
To obtain patent protection in the United States, patent applicants must submit a patent application to the United States Patent and Trademark Office (USPTO). At Hoofe IP Law, we can guide you through the patent application process from start to finish.
Hoofe IP Law provides quality legal advice and guidance in all areas of patent law, including:
Patent search
Patentability opinions
Freedom to operate analyses and opinions
Patent application preparation
Prosecution of patent applications
An invention disclosure is a confidential document written to describe an invention. Ideally, it describes the previously unknown key features of the invention and explains why those features are not obvious in view of the existing technology or solutions and why those features are advantageous or valuable.
In the United States, a patent may be applied for only in the name(s) of the actual inventor(s). It is a basic patent law tenet in the United States that an inventor is the person(s) who contribute to the conception of the invention as claimed. If two or more persons make an invention jointly, they apply for a patent as joint inventors. It is enough for a person to contribute conception to a single claim in order to be considered a joint inventor.
Conception has been defined by the courts as “the complete performance of the mental part of the inventive act” and it is the “formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention,” as it will be used in practice.
The examination of the patent application by a patent examiner consists of a study of the application for compliance with the legal requirements and a search through U.S. patents, publications of patent applications, foreign patent documents, and available literature, to see if the claimed invention is new, useful and non-obvious and if the application meets the requirements of the patent statute and rules of practice.
To obtain a patent, the “specification” section of a patent application must contain an adequate disclosure of the invention for which patent rights are sought. This patent law requirement is known as the written description requirement.
In the United States, a patent application must include a complete disclosure of the invention such that a person of ordinary skill in the area of technology related to the invention can make and use the claimed invention without undue experimentation. This patent law requirement is referred to as the enablement requirement. The courts have stated that written description and enablement are separate, albeit intertwined, requirements.
Recognize that the level of detail needed in a patent application may vary depending on the simplicity or complexity of the invention and the level of ordinary skill of persons familiar with the area of technology related to the invention.
In order for an invention to be patentable it must be new as defined in the patent law, which provides that an invention cannot be patented if:
(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention or
(2) the claimed invention was described in a patent issued [by the U.S.] or in an application for patent published or deemed published [by the U.S.], in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
There are certain limited patent law exceptions to patent prohibitions (1) and (2) above. Notably, an exception may apply to a “disclosure made 1 year or less before the effective filing date of the claimed invention,” but only if “the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed . . . from the inventor or a joint inventor.”
Even if the subject matter sought to be patented is not exactly shown by the prior art, and involves one or more differences, a patent may still be refused if a person having ordinary skill in the area of technology related to the invention would find it obvious to make the change. The subject matter sought to be patented must be sufficiently different from what has been used or described before that it may be said to be non-obvious to a person having ordinary skill in the area of technology related to the invention.
A patent application is subject to fees. To avoid a surcharge, the USPTO requires that an applicant submit the filing, search, and examination fees upon filing a patent application. An issue fee is required after an application is allowed and before granting of a patent.
Except in specific situations such as when an applicant has requested non-publication, utility and plant patent applications are published before a patent is granted.
The United States Patent and Trademark Office (USPTO) is required to publish pending utility and plant applications, other than reissue applications, under the eighteen-month publication provisions of the American Inventors Protection Act of 1999 (AIPA). Publication occurs after the expiration of an 18-month period following the earliest effective filing date or priority date claimed by an application.
On filing of a plant or utility application, an applicant may request that the application not be published, but only if the invention has not been and will not be the subject of an application filed in a foreign country that requires publication 18 months after filing (or earlier claimed priority date) or under the Patent Cooperation Treaty.
Following publication, the application for patent is no longer held in confidence by the USPTO and any member of the public may request access to the entire file history of the application.
A patent has the attributes of personal property and may be sold to others or mortgaged; it may be bequeathed by a will; and it may pass to the heirs of a deceased patentee.
The patent law provides for the transfer or sale of a patent, or of an application for patent, by an instrument in writing. Such an instrument is referred to as an assignment and may transfer the entire interest in the patent. An assignment may also provide for a part interest, that is, a half interest, a fourth interest, etc., in a patent. There may also be a grant that conveys the same character of interest as an assignment but only for a particularly specified part of the United States.
The owner of a patent may grant licenses to others. No particular form of license is required; a license is a contract and may include whatever provisions the parties agree upon, including the payment of royalties, etc.
Infringement of a patent consists of the unauthorized making, using, offering for sale, or selling any patented invention within the United States or U.S. Territories, or importing into the United States of any patented invention during the term of the patent. So long as the patent has not expired, a patent owner may initiate a lawsuit for patent infringement if the patent owner believes that an alleged infringer's product or process practices the patent owner's patented invention without authorization.
The USPTO has no jurisdiction over questions relating to infringement of patents. In examining applications for patent, no determination is made as to whether the invention sought to be patented infringes any prior patent. An improvement invention may be patentable, but it might infringe a prior unexpired patent for the invention improved upon, if there is one.
