Patents and Patent Applications

The objective of our patent practice is to provide our clients with a competitive position for the future, and ultimately, provide value to the company. This is accomplished by identifying different patentable components of an invention, then determing the areas in which patent protection is most critical to achieving the company's business objectives. Together with the client, we evaluate the most effective global patent strategy focusing on value. We also understand that global patent portfolios can be overwhelming at times. To assist with budgeting and keeping up with a growing patent portfolio, we offer regular intellectual property reports including at a glance action items and summaries.

Below we provide an introduction to the process of patenting an invention in the US and steps to extend your US patent globally.

US Patent Process

  • 1) Patent Search
  • 2) US Patent Application
  • 3) IDS
  • 4) Publication
  • 5) Office Action
  • 6) Grant

A patent search can be conducted to evaluate the state of the art to help determine whether or not the invention has already been patented or invented by another. Advances in the sciences typically outpace the US Patent Office. Therefore a comprehensive patentability search may also include a search of patents and published patent applications; published literature; and nucleic acid or nucleotide sequences.

Often, inventors in fields such as the biosciences are aware of the work of others. Therefore we often suggest the scientists themselves begin a search of the published literature.

The property right in a patent is defined by its claims. Therefore, a thoughtfully prepared claim set is central to a strong patent. In biotechnology, bioscience and computer related inventions the importance of following recent case law and legal trends comes into play when devising a claim set.

In addition, the specification must support the claims by disclosing the invention to one of ordinary skill in the art to which the invention belongs. That is, the specification must teach one skilled in the art to make and use the invention. The specification must also set forth the best mode in practicing the invention and describe the invention sufficiently to demonstrate possession of the invention. Specifications for biotechnology and the biosciences present challenges in that the art is itself less predictable than many others. Therefore, we often recommend the scientists test a variety of embodiments set forth in the patent application.

Sometimes, the invention has been reduced to practice but the inventor would like additional time to add additional data to the patent application. In this instance, a provisional patent application can secure an initial priority date from which a regular nonprovisional patent application can claim priority within one year. Provisional patent applications are becoming increasingly popular now that the US is a first to file country.

Once a patent application is filed with the United States Patent and Trademark Office (USPTO), the Inventor can mark the invention “patent pending." The term "patent pending" notifies the public that the Inventor is seeking patent protection on the invention and that a patent may soon issue

While the patent application is pending, the Inventor has a duty to provide all references that the Inventor is aware of that may affect patentability of the invention to the patent examiner. References are submitted in the form of an Information Disclosure Statement (IDS). Frequently, the results of a patent search are provided as the IDS. The patent examiner will evaluate the IDS, and conduct a search of the prior art to determine whether the invention is useful, new and nonobvious.

Patent applications publish 18 months after the earliest priority date. Once the patent application publishes it becomes visible to the public.

Although some inventions are allowed after initial examination, often patent appplications are rejected under one or more statutory requirements (as intepretted by the patent examiner) in what is called an Office Action. The Office Action provides the reasons why the patent application does not meet the requirements for patentability. The Applicant is permitted to respond to the Office Action.

Once the response is filed, it is considered by the patent examiner. The patent examiner may issue another Office Action rejecting all or part of the invention or may provide a notice of allowance.

A patent will issue once all pending claims have been deemed allowable and the issue fee is paid. An issued patent grants the owner the right to exclude others from making, using, selling, offering for sale and importing the claimed invention for approximately 20 years from the filing date (although patent term may be extended or shortened).

International PCT Applications

  • 1) Priority Doc
  • 2) PCT Application
  • 3) Publication
  • 4) Preliminary Search & Examination

Any utility patent application filed in a PCT member state that is filed within on year of the international filing date can be relied upon as a priority document for an international PCT patent application. In the US, a provisional patent application can also be relied upon for priority. PCT patent applications can claim priority to multiple patent applications.

International PCT patent applications do not issue as a patents themselves but instead provide a central application that can then enter any member state or region within a defined time period. This time period varies between different countries and regional offices but the majority of countries apply a 30 month time limit, such that the PCT patent application must enter the country or region within 30 months from its earliest priority date.

The cost of filing a PCT patent application is based on the number of pages and is much more than a US application (but typically less than a European Patent Application). Benefits of filing a PCT patent application include the ability to push back foreign filings (and filing fees); delaying payment of annual annuities associated with many foreign filings; and receiving a preliminary examination of the invention for guidance as to whether a later entered patent application will likely issue.

PCT patent applications publish 18 months after the earliest priority date. A published PCT patent application is publicly available.

As part of the PCT process, an international search report (ISR) is conducted to determine whether the invention meets the novelty, inventive step, and industrial applicability requirements for patentability. The international search authority will also provide a written opinion as to the patentability of the invention and provide an international preliminary report, which will be transferred to the patent offices upon enty. Each of these documents are considered but not binding.

Foreign Applications

  • 1) Foreign Entry
  • 2) Annuities
  • 3) Validation

To have an internation PCT patent application issue as a patent it must nationalized into each desired country. This involves filing the international PCT patent application in each corresponding patent office. In some instances, such as Europe, there is a regional patent office (EPO) that conducts examination of its member states.

Once the PCT enters the foreign country it then undergoes examination according to the local laws.

Many coutnries require payment of a government fee each year that the patent application remains pending. These are generally referred to as annuities. The cost of annuities vary and can be from a couple hundred to over one thousand dollars each year.

As part of our management service, we monitor and schedule payment of maintenance fees.

In some countries, such as those in Europe, a patent must be validated in the member states. Validation is usually a fee and may require translation in the local language.