IMPORTANT IMPROVEMENTS IN U.S. PATENT SYSTEM
Prior to 1982, many U.S. patents were held invalid in litigation. Attorneys shopped for “friendly” circuits, avoiding the 8th Circuit in Minneapolis because it was considered the “patent graveyard of the United States”. Then the system has changed, with a new appellate court having exclusive jurisdiction over all patent infringement cases from all appealed cases of the U.S. District Courts. The new court of appeals for the federal circuit in Washington, which opened in October of 1982, has provided a more uniform adjudication of patent cases in the various U.S. District Courts in all Federal Districts Today, our clients are more patent conscious: and the stakes are much greater in patent litigation because the court has accepted new and creative ways of extracting damages from an infringer; and, thus , the chances of recovering are much better; and the chances of recovering substantial damages are greatly enhanced, including increased damages up to three times the actual damages. Pre-judgment interest also adds to the award. If the infringer has been infringing for more than 5 years, the actual damages can be almost doubled due to the pre-judgment interest. During some of those years, interest rates hit 14 percent to 16 percent. When these factors are combined, clients have been more interested in patents, and patent litigation has bigger stakes, and so everybody fights more and harder.
Biotechnology advances also have spurred the patent practice. That is the cutting edge of scientific development in terms of both private and university research. New inventions are appearing constantly. There are areas which were not patentable or not even considered patentable a few years ago, the Harvard mouse and computer programs as examples.
UTILITY PATENTS AND DESIGN PATENTS
You may be able to a obtain utility patent on your idea if it (A) is original with you, (B) is for a new and useful process, machine, manufacture, composition of matter or any new and useful improvements thereof, (C) has utility, (D) is novel, i.e., has not been publicly used, offered for sale and/or sold, or described in a printed publication more that one year before you apply for a patent, (E) was not invented, known or used by others before you invented it, and (F) was not obvious to one who (1) has ordinary skill in the art to which the subject matter of the invention pertains, and (2) is presumed to have knowledge of all that has been done before in that art prior to the time of your invention.
A patent is a grant by the U.S. Government of a limited monopoly to an inventor in return for which the inventor provides, in his patent application, a clear and concise description of his/her invention and the best mode known to the inventor for carrying out the invention at the time it was made. The limited monopoly or patent grant is “the right to exclude others from making, using or selling the invention” as defined in the claims of the patent and extend for a period of 17 years from the date of grant of the patent if the patent issues before June 8, 1995. However, the life of a Utility Patent is currently in a state of transition after the passage of the GATT Treaty and the signing into law of related U.S. Legislation on December 8, 1994. Under the new GATT related Patent Laws the life of a patent expires 20 years from the date of filing the U.S. patent application if the application is filed after June 8, 1995. In the transition period, there is a provision in the law that effects patent applications filed before June 8, 1995 and not issued into U.S. Letters Patent until after June 8, 1995. In such a case, the inventor has the option of electing which patent term will govern the life of his/her issued patent…. Also, a design patent is available for “a new original ornamental design for an article of manufacture” for a period of 14 years and a plant patent is available for “an asexually reproduced distinct and new variety of plant” for a period of 17 years. A utility patent application for Letters Patent is a rather lengthy technical-legal document containing a specification starting with the “Background of the Invention” setting forth the field of the invention and a description of the “prior art” (which is usually the prior printed publications and patents describing what has been done or proposed before). The application should contain a “Summary of the Invention” setting forth what you believe is your contribution to the “art” and a “Brief Description of the Drawing” (if the invention is capable of being drawn), followed by a detailed “Description of the Preferred Embodiment(s)” of the invention. A set of patent “claims” defining what you believe to be the essential and distinguishing elements or features of your invention which patently distinguish your invention over the “prior art” follow the specification.When you have a new idea you think may be patentable, contact us to review your idea and to arrange for a patent search if that appears appropriate. At that time, or after the search, we can attend to the preparation of a patent application for you if it appears that meaningful and worthwhile patent protection may be obtainable on your idea/invention.
The present Government Fee(exclusive of our service fee) for filing a small entity utility patent application is $375.00 plus $39.00 for each independent claim over 3 and $11.00 per claim for each claim over 20(independent or dependent). For an entity that employs 500 or more people, the government fees are double those set forth above.
PROTECTING YOUR INVENTION BEFORE FILING YOUR PATENT APPLICATION
If you have a concrete new idea which might be a patentable invention, you should prepare an invention disclosure comprising a drawing (or drawing) of the invention (if the invention is capable of being drawn) and a description of the invention, i.e., as shown in the drawing(s). Also obtain photographs of a prototype of the invention if such has been made to include with your invention disclosure. The description should set forth what the invention is, how it works, and what was done before. for further information you should consult your patent attorney.> N.B. If at all possible, do not disclose or offer to sell your invention before a patent application is filed. although you have one year to file in the U.S. after a disclosure of the invention has been made, most foreign countries require that you file before there is a disclosure of the invention, orally or in writing, sufficient to enable one skilled in the art to which the invention pertains to put the invention into practice. Therefore, to preserve foreign patent rights, file first in the U.S. before any disclosure of the invention takes place. Afterwards, under an International Convention, you have one year from filing date of the U.S. application to file foreign patent applications. Also, after the invention disclosure is prepared, take steps to “reduce it to practice” and proceed to do so with diligence. This is important if your field is highly competitive, since other may be working on a similar invention and a patent is awarded to the first inventor to file a U.S. Patent application or a provisional patent application followed by a united states non-provisional patent application (aslo called a U.S Utility Patent Application).
In this respect, it is advisable to keep a log book or diary containing the “invention disclosure” and the steps ( and delays incurred, waiting for parts, etc.) which you took in reducing the invention to practice.
FILING YOUR PATENT APPLICATION
The filing of a patent application is a “constructive reduction to practice”. In view of this fact, you should consult us immediately after you have conceived your idea. Many of our clients, who are very busy developing, making prototypes, debugging and then “getting the product to the marketplace first” often find it easier to call us as soon as they have a feasible conception or workable prototype to arrange for us to come to their facility and work up our own “invention disclosure” so we can prepare and file apparent application as soon as possible. Once the application is filed, you can proceed to disclose and sell your invention without “losing any rights”. However, once openly disclosed, anyone is free to use the invention only until a patent issues thereon. After a U.S. patent issues your exclusive monopoly commences.As for foreign rights, you have one year from the filing of the U.S. application to file in foreign countries under the Stockholm text of the Paris Convention. We will remind you of this approximately seven months after filing of your U.S. application. Also, if we file under the Patent Cooperation Treaty (a PCT application) we have twenty (20) months after filing the U.S. application before the major portion of the fees (for translation) become due for perfecting applications in the countries we designate on the filing of the PCT application. Please let us know if you wish to obtain foreign protection remembering you should not sell your device before you file your U.S. application to avoid loss of foreign patent rights.After the application is filed, we will receive, in time, an Examiner’s Action which almost always contains a rejection of the claims for being obvious for the teachings of one cited patent taken with the teachings of one or more other cited patents. We study the cited patents and submit, in a response, arguments or amendments to the claims and arguments as to why the claim or claims as amended patentably distinguish the claimed invention over the prior art patents cited. Once the claims are approved, the fees for issuing a U.S. patent must be paid. For more information please see the Fee Schedule that follows and please review the matter with us for further information.The prosecution of a patent application for a Utility Patent, from filing to issuance of Letters Patent, presently takes from 6 to 30 months, but can be accelerated under certain conditions by filing a “Petition to Make Special”.
Most patent claims are initially rejected by the U.S. Patent Office on prior art under 35 U.S.C. 102, 103 which is quoted here after. You must then file a paper prepared by your attorney entitled “Amendment A” since the burden is on the inventor to establish patentability over the art or patents uncovered by the Examiner in his patentability search.
New Change in Law to the America Invents Act (AIA)
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