FAQ

You have a great idea for a product or service, and you believe this idea to be new and useful. What is the first step?

Every idea should begin with a search. Many will choose to perform an internet search, for example, using Google.com or other internet search engine. In fact, this is where you should begin. When performing an internet search, enter the keywords that you think identify features that define the product, and search ‘images’ to quickly identify anything related. If nothing immediately materializes, then you are ready for a patent search.

You may conduct a patent search using Google Patents.

Alternatively, you may use another free patent searching tool like Free Patents Online.

Take notes and/or download copies of any documents that you find that may be related to your invention.

Next, contact CPLG to discuss the next steps. It may be that no further search is necessary, or perhaps a professional patent search and patentability opinion may be advisable.

At this point you should have performed at least an internet search, and are looking for the next step toward obtaining a patent.

A provisional patent application (PPA) can be described as an informal patent application that discloses the invention, all of its differentiating features and how they interrelate to acheive a desired function or utility. The PPA, if prepared properly, will protect the disclosed invention for a period of one-year, during which time the inventor may use “patent pending” in connection with the product or marketing materials.

Many patent applicants elect to file a provisional patent application immediately, in order to obtain patent protection, and to enable the patent applicant to entertain confidential disclosures with potential manufacturers, partners, investors, and others. As you might imagine, disclosing an invention to others without protection can create legal issues, such as misappropriation of invention or the unintended creation of prior art.

There are many strategies related to filing a PPA, and we encourage you to contact CPLG for more information.

A non-provisional utility patent application is what most people are thinking of when discussing a “patent”. The non-provisional application may be filed initially, or subsequent to a prior-filed provisional patent application.

To obtain a patent, the invention being claimed must be useful, novel and non-obvious.  A patent provides its holder the right to exclude others from making, using, offering for sale, selling or importing the patented invention. The patent is generally in force for twenty-years after the non-provisional application filing date.

For answers to general questions or to receive more information about the patent process, please call or schedule a free initial consultation.

In the U.S., a design patent protects the ornamental characteristics of a product as shown and described in the design patent, and may protect variations that are deemed by a court as being “substantially similar”. To circumvent a design patent, one must only change the shape or design of the product. However, when investing in tooling for manufacturing and in other situations it is beneficial to obtain design patent protection.

One advantage of holding a design patent is the additional legal remedy of profit disgorgement under 35 U.S.C. § 289, which in some situations allows the design patent holder to obtain the profits of the infringer.

Answer the question here. Make sure you answer all frequently asked questions to clear some common doubts. People love when they find a solution without having to wait for your reply. This also shows that you have enough knowledge that you can share and help them out.

Congratulations! Once your patent is issued, the only remaining requirement is to maintain the patent by paying maintenance fees every four years from the issue date.

Maintenance fees can be paid beginning with the 3.5, 7.5, and 11.5 year anniversaries of the patent issue date, and must be paid by the 4, 8, and 12 year anniversaries, respectively. However, there is a six-month grace period for each maintenance fee deadline, provided the patent holder submits a surcharge payment in addition to the regular maintenance fee.

Some patent applicants may wish to pursue patent rights outside the United States of America (OUS). In this situation, we often advise the procedure provided under the Patent Cooperation Treaty (PCT), that is, to file a PCT application before the World Intellectual Property Organization (WIPO).

A PCT patent application can be filed in the U.S. receiving office (RO) at the USPTO.

Once filed, the PCT application undergoes a patentability search, and receives a written opinion from the international preliminary examination authority (IEPA). In this regard, the applicant may receive an opinion from the WIPO examiner prior to filing in multiple countries, which opinion may inform further procedure and investment.

Foreign patents, or those outside the United States (OUS), are sometimes desired.

OUS patents can be relatively expensive to procure and maintain. For example, many countries require annual maintenance payments (annuities) to maintain pendency of a patent application. In addition, local (foreign) counsel will be required, and translations are sometimes necessitated, each resulting in a corresponding cost. For these reasons, we generally advise OUS patents only in territories where the applicant has or is expected to have substantial business interests.

CPLG has a network of foreign attorneys and agents should you or your company desire OUS patent protection.

In the course of business any of a number of intellectual property related opinions may be desired. For example, after obtaining patent search results a prospective patent applicant may desire a patentability opinion from an experienced patent attorney. Other opinions, such as freedom to operate or infringement/non-infringement opinions may be desired.

Generally, a freedom to operate opinion is a comprehensive analysis and opinion concerning whether a business has the unrestricted freedom to sell a particular product or service in view of the patent, trademark, and copyright landscapes.

A more narrowly tailored opinion might be an infringement/non-infringement opinion which compares a product/service to a specific patent or family of patents.

CPLG is ready to discuss your company’s needs relating to infringement and freedom to operate analysis.

35 U.S.C. 122(e) provides a mechanism for third parties to submit patents, published patent applications, or other printed publications of potential relevance to the examination of a patent application with a concise description of the asserted relevance of each document submitted.

Under 35 U.S.C. 122(e), such submissions may be made before (1) the later of (i) 6 months after the date of publication or (ii) the date of a first Office action on the merits rejecting any claims, or (2) before the date of a notice of allowance, if earlier. Section 122(e) also provides for such fees as the Director may prescribe.

This new provision was effective on September 16, 2012, and applies to any patent application.

A derivation proceeding is a trial proceeding conducted at the Board to determine whether (i) an inventor named in an earlier application derived the claimed invention from an inventor named in the petitioner’s application, and (ii) the earlier application claiming such invention was filed without authorization. An applicant subject to the first-inventor-to-file provisions may file a petition to institute a derivation proceeding only within 1 year of the first publication of a claim to an invention that is the same or substantially the same as the earlier application’s claim to the invention. The petition must be supported by substantial evidence that the claimed invention was derived from an inventor named in the petitioner’s application.

The reexamination statute, 35 U.S.C. 302, and rules permit any person to file a request for an ex parte reexamination containing certain elements and the appropriate fee. The USPTO initially determines if “a substantial new question of patentability” is presented. If such a new question has been presented, reexamination will be ordered. The reexamination proceedings which follow the order for reexamination are very similar to regular examination procedures in patent applications; however, there are notable differences. For example, there are certain limitations as to the kind of rejections which may be made in an ex parte reexamination, special reexamination forms to be used, and time periods set to provide “special dispatch.” When the prosecution of a reexamination proceeding is terminated, a reexamination certificate is issued which indicates the status of all claims following the reexamination.

Inter partes review is a trial proceeding conducted at the Patent Trial & Appeal Board (PTAB) to review the patentability of one or more claims in a patent only on a ground that could be raised under §§ 102 (Novelty) or 103 (Obviousness), and only on the basis of prior art consisting of patents or printed publications. For first-inventor-to-file patents, inter partes review process begins with a third party (a person who is not the owner of the patent) filing a petition after the later of either: (1) 9 months after the grant of the patent or issuance of a reissue patent; or (2) if a post grant review is instituted, the termination of the post grant review. These deadlines do not apply to first-to-invent patents. The patent owner may file a preliminary response to the petition. An inter partes review may be instituted upon a showing that there is a reasonable likelihood that the petitioner would prevail with respect to at least one claim challenged. If the proceeding is instituted and not dismissed, a final determination by the Board will be issued within 1 year (extendable for good cause by 6 months).

Post grant review is a trial proceeding conducted at the Board to review the patentability of one or more claims in a patent on any ground that could be raised under § 282(b)(2) or (3). Post grant review process begins with a third party filing a petition on or prior to the date that is 9 months after the grant of the patent or issuance of a reissue patent. The patent owner may file a preliminary response to the petition. A post grant review may be instituted upon a showing that, it is more likely than not that at least one claim challenged is unpatentable. If the proceeding is instituted and not dismissed, a final determination by the Board will be issued within 1 year (extendable for good cause by 6 months).