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Definition of A Patent
A patent is a legal document issued by the United States government to someone
who has made a patentable invention. A valid and enforceable United States patent gives its owner the right to exclude others
from making, using, offering to sell, selling or importing the patented invention within the United States, usually for 20
years from the date that the patent was filed (previously 17 years form the date of issuance).
The invention described
in a patent is defined -- that is, limited -- by what patent law refers to as the “claims.” These claims usually
consist of multiple parts, which are called “elements” or “limitations.” The function of a patent
claim is not merely to outline or summarize what is shown and described in the patent, but, rather, to define the exact boundaries
of the alleged invention. Claims appear as separate, numbered paragraphs at the end of the patent specification. It is the
claims alone that determine whether a patent is or is not infringed. Claims have been compared to the description in a deed
to land, which points out what the property boundaries are. Within those boundaries, one who enters without permission of
the owner is a trespasser. Similarly, one who does not enter the claims, or boundaries, of a patent is not an infringer.
There are two types of claims: (1) independent claims, which refer to no other claim; and (2) dependent claims, which
refer to a prior claim. A dependent claim consists of its limitations plus all of the limitations of the claim to which it
refers. A dependent claim cannot be infringed unless the claim to which it refers is infringed.
Utility Patent
versus Design Patent
In general terms, a “utility patent” protects the way an article is used and works,
while a “design patent” protects the way an article looks. Both design and utility patents may be obtained on
an article if invention resides both in its utility and ornamental appearance. While utility and design patents afford legally
separate protection, the utility and ornamentality of an article are not easily separable. Articles of manufacture may possess
both functional and ornamental characteristics. Because design patents protect only the appearance of an article of manufacture,
it is possible that minimal differences between similar designs can render each patentable. Therefore, even though you may
ultimately receive a design patent for your product, the protection afforded by such a patent may be somewhat limited. Finally,
you should also be aware of the broad distinction between utility and design patents, and realize that a design patent may
not give you the protection desired.
How A Patent is Obtained
Subject matter that may be patentable
can be a process, machine, manufacture or composition of matter (i.e., a product) -- or an improvement or feature of a process,
machine, or product. However, not every invention can be patented. Before an invention can be patented certain conditions
must be met. The invention must be new and useful. Even though new, it also must be something that would not have been obvious
to other workers in the field at the time it was invented. The patentability of an invention is judged against everything
publicly known before the invention was created. Such public knowledge is found in earlier patents, devices of others and
other published materials. This body of public knowledge is called “prior art.”
The law makes a patent
a bargain between the inventor and the public. The rights provided by a patent are granted in exchange for a full disclosure
of the invention to the public, who will be able to freely use it after the patent expires. Thus, a full and fair disclosure
is a further condition to the granting of a patent. The disclosure is made in an application for a patent filed in the United
States Patent and Trademark Office.
The application is the initial set of papers that a patent applicant files
with the PTO. The application, which may be kept secret until the patent issues, must include a written description of the
invention -- also called the “specification” -- which, through words and drawings, explains what the invention
is, how it works, and how to make and use it. In other words, the written specification must describe the invention and enable
others reasonably skilled in the relevant field to practice the invention without undue experimentation. There is an important
difference between the specification and patent drawings, on the one hand, and the claims, on the other. In particular, neither
the specification nor the drawings of a patent can be infringed -- only the patent claims can be infringed.
The
specification also must disclose the best way known at the time to the inventor for carrying out his or her invention. This
best way is sometimes referred to as the “best mode.”
After the applicant files the application, a
PTO patent examiner reviews (or examines) the patent application to determine whether the claims are patentable and whether
the specification adequately describes the invention claimed.
Prosecution History
The process
of applying for a patent is usually called “patent prosecution.” Patent prosecution involves preparing and filing
a patent application, and then having this application examined by a Patent Office Examiner (or Patent Examiner).
In examining a patent application, the patent examiner makes a search of the prior art information to determine whether
or not the invention as claimed is new and not obvious.
Following the prior art search and examination of the application,
the patent examiner then advises the applicant in writing what the examiner has found and whether he has allowed or rejected
any claim. This writing from the PTO examiner is called an office action. More often than not, the initial office action by
the patent examiner rejects the claims. The applicant then responds to this office action, and sometimes changes the claims
or submits new claims. This process may go back and forth between the patent examiner and the applicant, even for several
years, until the examiner is satisfied or the applicant gives up. Because patent applications are secret unless and until
published, only the applicant and the Patent Office Examiner are involved in this process. The papers exchanged between the
Examiner and applicant as part of this give and take process are collected in a file called the prosecution history or the
file wrapper.
The prosecution history may be very important in determining just what the claims mean and what
they cover -- that is to say, what features have been patented. The patent owner cannot, during a trial, recapture or reclaim
subject matter that was given up during the patent application process. For example, if a patent applicant tells the Patent
Office that certain subject matter is not part of the invention, and a patent is then granted, members of the public, including
the patent owner’s competitors, can use the subject matter that the applicant gave up, just as though this subject matter
were public land. The entire prosecution history file becomes publicly available only if and when the patent issues.
Duty of Candor to Patent Office
In deciding whether to grant a patent, the Patent Examiner has only limited
information available to determine the content of the prior art. The time available to the Examiner for considering a given
application is also limited. Therefore, to help make sure that an applicant is not granted a patent that is not deserved,
the PTO requires every applicant to disclose fully and truthfully to the Examiner all information of which the applicant is
aware that would be important -- that is, material -- to the examination of the application. Individuals participating in
the application process are required not to make any intentionally false or misleading statements or omissions. This obligation
to deal honestly and fairly with the Patent Office is called the “duty of candor.”
The application
process does not involve arm’s length negotiations. (“Arm’s length negotiations” are negotiations
between persons or parties with equal information and equal bargaining positions.) Persons and companies involved in the application
process must abide by this duty of candor. The duty falls on the inventors named on the application, the company or person
that is the owner of the application and any resulting patent, the patent attorneys who are handling the patent application
and communicating with the Patent Examiner, and any other people who have more than a casual involvement with the application.
Information is considered material and needs to be disclosed to the Patent Office where there is a substantial likelihood
that a reasonable Patent Examiner would have considered such information important in deciding whether or not to allow the
application to issue as a patent.
Claim Construction and Infringement -- Generally
The patent
claims are numbered paragraphs at the end of the patent.
The claims are “word pictures” intended to
define, in words, the boundaries of the invention described and illustrated in the patent. Only the claims of the patent can
be infringed. Each of the claims must be considered individually, and not all claims of a patent have to be infringed for
the patent to be infringed. To prove patent infringement with regard to each patent, a patentee must establish by a preponderance
of the evidence that at least one claim from each patent is infringed.
Determining Infringement
The patent law gives the owner of a valid patent the right to exclude others from making, using, importing, offering to
sell, or selling the patented invention from the time the patent issues until the time it expires. The patent law provides
that any person or business entity which, without the patent owner’s permission, makes, uses or sells within the United
States any product or method that is covered by at least one valid claim of a patent before the patent expires, infringes
the patent.
Literal Infringement
A patent claim is literally infringed only if another’s
products or methods include each and every element in the asserted patent claim. If the accused products or methods do not
contain one or more elements recited in the claim, an accused does not literally infringe that claim.
To determine
literal infringement, one must compare the accused products and methods with each claim of the patent.
Infringement
Under the Doctrine of Equivalents
If an accused product or method does not literally infringe any claim of a patent,
one must then determine whether the accused product or method infringes the claim under what is referred to as the doctrine
of equivalents. To find that an accused product or method infringes under the doctrine of equivalents, one must find for each
element of the claim that is not found exactly in the accused product or method that there is an equivalent element in the
accused product or method.
To prove that the accused product or method includes an equivalent of the element that
is not literally present, one must show that the accused product includes a component, or the accused method includes a step,
that is an insubstantial change from the claim element that is not literally present. In making this determination, one should
consider whether the component or step in the accused product or method performs (1) substantially the same function, (2)
in substantially the same way (3) to achieve substantially the same result as the claim element that is not literally present.
If each of these three items is not present, the accused product or method does not infringe that claim under the doctrine
of equivalents.
In addition, if an element of the claim of the patent is completely missing from the accused product
or method, that claim is not infringed under the doctrine of equivalents.
Infringement of Dependent Claims
There are typically two different types of claims in patents. One type of claim is called an independent claim. The
other type of claim is called a dependent claim.
An independent claim is a claim that does not refer to any other
claim of the patent. An independent claim must be read separately from the other claims to determine the scope of the claim.
A dependent claim is a claim that refers to at least one other claim in the patent. A dependent claim incorporates
all of the elements of the claim to which the dependent claim refers, as well as the elements recited in the dependent claim
itself.
To establish literal infringement of a dependent claim, the patent owner must show by a preponderance of
the evidence that the accused product or method includes each and every element of the dependent claim and any claims from
which it depends.
If an independent claim, to which a dependent claim refers, is not literally infringed, then
the dependent claim is not literally infringed.
Anticipation
One of the requirements for a valid
patent is that the invention defined in the claims must be new. This is known as the requirement of novelty. Something that
shows that claimed subject matter is not new or novel is called anticipation. There are several categories of events, all
defined by the patent laws, that can anticipate and invalidate a patent.
Prior art in the form of a patent, a printed
publication, or a device anticipates a claim if it discloses the claimed subject matter sufficiently that a person of ordinary
skill in the art could take its teachings together with his own knowledge of the art and be in possession of the claimed invention.
To establish that anticipation exists, an accused infringer must show that each of the elements recited in the claim was disclosed
or embodied in the particular item claimed to be anticipation. If every element of the claimed invention is shown to be present
in the prior patent, printed publication or device, the patent claim is anticipated.
There is no anticipation unless
every one of the elements of the claimed invention is found in a single prior patent, prior printed publication, or prior
device publicly known or used. One may not combine two or more items of prior art to make out an anticipation. One should,
however, take into consideration not only what is expressly disclosed or embodied in the particular prior patent, printed
publication or device, but also what inherently occurred as a natural result of its practice. A party claiming inherency must
prove it by clear and convincing evidence. It must show that what is said to anticipate inherently produces a product or process
meeting all of the claim limitations. In determining whether or not every one of the elements of the claimed invention is
found in the prior patent, printed publication or device, one should take into account what a person of ordinary skill in
the art would have understood from his or her examination of the particular item that is said to be anticipation.
Prior Public Use and Sale
A patent claim is invalid if the invention defined by that claim was publicly
used or on sale in the United States more than one year before the application was filed for the patent at issue. An accused
infringer has the burden of proving by clear and convincing evidence that the invention defined by the claims of the patents
were in public use or on sale more than one year before the filing date of the application resulting in those patents. An
invention was “on sale,” if the claimed invention was embodied in the thing offered for sale. It is not required
that a sale was actually made. An offer of sale, solicitation of orders, promotional activities or advertisements can constitute
being “on sale,” even though no actual sale takes place. The essential question is whether or not there was an
attempt to obtain a commercial benefit.
In order to be on sale, at the time of the offer for sale the invention
must have been developed to the point of demonstrating that it would work for its intended purpose. It need not, however,
be fully perfected or in commercial production. It is not necessary that there be a stock or inventory available for sale.
An invention was in "public use" if there was any non-secret use of the invention in its natural and intended
way. A patent claim is invalid if the invention defined in that claim was in "public use" in the United States more
than one year before the application was filed for the patent at issue. A "public use" may exist where the invention
is used or exposed to anyone other than the inventor or a person under an obligation of secrecy to the inventor. "Public
use" is the free and unrestricted giving over of an invention to a member of the public or the public in general. A public
use which will invalidate a patent need not be an open, widespread use; it may be a single use by one user; it may be a use
without profit; and it may be hidden from the public eye. The question is whether, in totality of the circumstances, the inventor
had a reasonable expectation that his use of the invention was private.
An exception to the public use provision
is made where the use is one which is substantially for purposes of experimentation. However, an experimental use must be
conducted by the inventor or one under his supervision or control. A use by a third party without the supervision or control
of the inventor is a public use even if it is experimental. One may also find that a use by patentee was a public use if it
was not substantially for purposes of experimentation. In making that determination, one should consider all of the circumstances
regarding the patentee’s use including whether it informed its clients that the material was experimental, whether it
obtained secrecy agreements from its clients, whether it charged its clients when the patentee used the material, whether
the patentee maintained any records, and whether the material was used for its intended purpose and worked for that purpose.
If the accused has met its burden of proving "public use" with respect to a claim of a patent, or that the
invention defined by that claim was on sale, that claim is invalid.
Obviousness -- Generally
To
be patentable an invention must not have been obvious to a person of ordinary skill in the pertinent art at the time the invention
was made. The issue is not whether the claimed invention would have been obvious to a layman, to a judge, or to a genius in
the art, but whether it would have been obvious to one of ordinary skill in the relevant field at the time it was made.
An asserted claim from a patent is invalid, even though not identically disclosed in a single prior art device or
reference, if the subject matter of that claim would have been obvious to a person of ordinary skill in the relevant field
at the time the invention was made.
Before determining obviousness of the claimed invention, one must determine
the following factual matters:
1. The scope and content of the prior art;
2. The difference or differences, if any,
between each claim of the patents in issue and the prior art;
3. The level of ordinary skill in the art at the time
the inventions of the patents were made.
Against this background of facts one will then make a conclusion regarding whether
or not the claimed subject matter would have been obvious to a person of ordinary skill in the art of the relevant field at
the time the alleged invention was made.
Scope and Content of Prior Art
Prior art is that which
was described in the literature, including patents, textbooks, technical articles and printed advertisements, or that which
was publicly known, or in public use or on sale in the United States before the invention was made or more than one year prior
to the effective filing dates of the patent. Thus, prior art can come in many different forms. Prior art must be considered
for everything it teaches, including what would have been obvious from those teachings to a person of ordinary skill in the
relevant field.
Level of Ordinary Skill
In reaching a determination as to whether or not the claimed
subject matter was obvious, one should consider the level of ordinary skill in the art of the relevant field. When determining
the level of ordinary skill in that field, one should consider all the evidence to show:
1. the levels of education and
experience of persons working in the field;
2. the types of problems encountered in the field;
3. the prior art
patents, publications and devices;
4. the activities of others;
5. prior art solutions to the problems addressed
by the patents at issue; and
6. the sophistication of the technology.
When deciding the issue of obviousness,
one must decide whether or not the invention would have been obvious to one having this ordinary level of skill in the relevant
field.
Combining Teachings in Prior Art
In determining whether or not the claimed subject matter
of the patents would have been obvious to a person of ordinary skill in the art, one must presume that person would have known
about all of the relevant prior art. A combination of prior art cannot render an invention obvious unless every one of the
elements of the claimed invention is disclosed in the prior art. In examining the prior art patents, publications and devices,
one should take into account not only what they expressly disclose or do, but anything that inherently occurred as a result
of practicing what was expressly disclosed in that prior art.
If one finds that a combination of items of the prior
art showed each of the elements of the claims, one must determine whether or not it would have been obvious to a person of
ordinary skill in the relevant field to combine or coordinate these elements in the same manner as the claims of the patents.
If one concludes that the prior art discloses all the elements of the claimed invention, but those elements are in separate
items of prior art, one must then consider whether or not it would have been obvious to combine the elements. To answer this
question “yes,” one must determine that there was some suggestion or motivation in the prior art to combine the
elements. The suggestion or motivation can be expressly stated in a particular prior art patent or publication, or it can
be with the knowledge that was generally available to one of ordinary skill in the relevant field. So long as there is some
motivation or suggestion to combine the references provided by the prior art taken as a whole they need not be combined for
the reasons contemplated by the inventor. One must also consider that mankind, and in particular inventors, strive to improve
what already exists. Thus, the motivation to combine the prior art may come from the nature of the problem to be solved, leading
inventors to look to references relating to possible solutions to that problem. Prior art can be combined for purposes of
establishing obviousness even if the features of one piece of prior art cannot be substituted physically into the structure
of the other prior art item.
Commercial Success
One may also consider whether the inventions
of patents have been commercially successful. However, there must be a connection between the evidence showing commercial
success and the claims of the patent if one is to conclude that the claimed invention has been commercial success, and evidence
of sale alone is not sufficient to find that the claimed invention has been a commercial success.
Enablement
Under the United States Patent Laws, a patent must disclose sufficient information to enable those skilled in the
art to make and use the claimed invention. This requirement is known as the enablement requirement.
To determine
whether or not a patent is enabling, one must look to the time the application for that patent was filed. A patent is enabling
if its disclosure is sufficient to enable a person of ordinary skill in the art to make and use the claimed invention. A patent
need not disclose what is well known in the art to be enabling. In order to satisfy the enablement requirement, the specification
must enable one of ordinary skill in the art to practice the claimed invention without undue experimentation. If by following
the steps set forth in the patents, a person of ordinary skill in the art is not able to replicate the claimed invention without
undue experimentation, the claim has not been enabled as required and it is invalid.
Willful Infringement
Where a potential infringer has actual notice of another’s patent rights, he has an affirmative duty of due
care not to infringe. To prove willfulness, a patentee must show that:
1. an infringer had actual knowledge of patents
at issue; and
2. the infringer had no reasonable basis for believing (a) that its products and methods did not infringe
the patents or (b) that the patents were invalid or not enforceable.
In making the determination as to willfulness,
one must consider the totality of the circumstances. The totality of the circumstances comprises a number of factors, which
include, but are not limited to whether the infringer intentionally copied the subject matter covered by the patents or developed
the infringing products independently, whether the infringer exercised due care to avoid infringement, whether the infringer
relied on competent legal advice, and whether at trial the infringer presents good faith defenses.
Inequitable
Conduct
Every applicant for a patent has a duty of candor and good faith in dealing with the Patent Office and
the Examiner handling his or her application. This duty of candor is important because the Examiner has only limited information
available to determine the state of the art. The time available to the Examiner is also limited. Therefore, to prevent an
applicant from obtaining a patent he does not deserve, the Patent Office requires full disclosure to the Patent Office of
all information that is material -- in other words, important -- to an examination of the patent application.
This
means that during the patent application process, the applicant and the lawyers involved with the application must not intentionally
withhold or misrepresent material information concerning the alleged invention, as defined by the asserted claims. A breach
of this duty is called inequitable conduct and renders the patent unenforceable.
To prove inequitable conduct,
an accused must show, by clear and convincing evidence, that the patentee or the lawyers responsible for the applications
that resulted in the patent withheld or misrepresented information that was material to the Examiner’s evaluation of
the patent application and did it with an intent to mislead or deceive the Patent Office Examiner.
Materiality
In evaluating an allegation that a patent applicant was guilty of inequitable conduct before the Patent and Trademark
Office, one must first determine whether there was any withholding or misrepresentation of information and, if so, whether
the information withheld or misrepresented was material. Information is not material if it is cumulative or adds little information
to what the Examiner already knew. Information is material if there is a substantial likelihood that a reasonable Examiner
would have considered it important in deciding whether to issue the patent-in-suit. Simply because the patent may have issued
had the Examiner had the information before him does not mean the information is not material.
If the applicant
or the attorneys responsible for the patent application did not withhold or misrepresent any material information, then there
was no inequitable conduct. If, on the other hand, there was a withholding or misrepresentation of information and that the
information was material, then one must consider the element of intent.
Intent
The accused must
prove, by clear and convincing evidence, that the patentee or the lawyers responsible for the patent application withheld
or misrepresented material information with the intent to mislead or deceive the Patent Office. Intent need not be proved
directly because there is no way of scrutinizing the operations of the human mind. Therefore, one may infer intent from conduct
or from acts substantially certain to accomplish a result, but one is not required to infer it. Any such inference depends
upon the totality of the circumstances, including the nature and level of culpability of the conduct and the absence or presence
of affirmative evidence of good faith. In considering evidence of good faith in failing to cite material information to the
Examiner, the patentee must offer more than conclusory statements that the reference was cumulative of prior art already before
the Examiner.
Balancing Materiality and Intent
As previously stated, one must determine whether
the withheld information or misrepresentation satisfies a threshold level of materiality. One must also determine whether
the conduct of the patentee or its lawyers satisfies a threshold showing of intent to mislead. If so, materiality and intent
must be balanced.
The more material the withheld or misrepresented information is, the less stringent is the requirement
to prove intent. In other words, withholding or misrepresenting a highly material piece of information requires a lower level
of proven intent, thereby allowing you to find intent more easily. The converse is also true. In any event, one must balance
these two factors to determine whether or not there is clear and convincing evidence both of the materiality and intent factors.
If so, one should find that there was inequitable conduct.
Damages -- Generally
If accused products
or methods infringe at least one of the asserted claims of the patents, and if such infringed claim are not invalid or unenforceable,
the damages to be awarded for the infringement must be adequate to compensate the patentee for the infringement. The damage
award should put the patentee in approximately the financial position they would have been in had the infringement not occurred;
but in no event may the damage award be less than a reasonable royalty.
Reasonable Royalty -- Definition
A royalty is a payment made to the owner of a patent by a non-owner in exchange for rights to make, use or sell the
claimed invention. A reasonable royalty is the sum of money which the owner of a patent would accept, who is desirous of licensing
another to use his patent in return for a royalty, but who is not forced by financial need or other compulsion to do so; and
the amount which a person would be willing to pay as royalty who is desirous to obtain a license to use the invention, but
who is not compelled to do so. In other words, a reasonable royalty is the amount which the jury finds the two free and uncompelled
and uncoerced bargainers would agree upon.
Reasonable Royalty -- Timing
Although the relevant
date for the hypothetical reasonable royalty negotiation is the date just before the infringement began, one may consider
in a determination of reasonable royalty events and facts that occurred after that time and that could not have been known
or predicted by the hypothetical negotiations as of that date.
Reasonable Royalty -- Relevant Factors
In determining the value of a reasonable royalty, one may consider evidence on any of the following factors:
1.
Any royalties received by the patentee for the licensing of the patents in suit, proving or tending to prove an established
royalty.
2. The rates paid by the infringer to license other patents comparable to the patent in suit, if any.
3.
The nature and scope of the license, as exclusive or non-exclusive; or as restricted in terms of territory or with respect
to whom the manufactured product may be sold.
4. Any established policy and marketing program of the patentee to either
maintain its right to exclude others from using the patented invention by not licensing others to use the invention, or by
granting licenses under special conditions designed to preserve that exclusivity.
5. The commercial relationship between
the licensor and the licensee, such as whether or not they are competitors in the same territory in the same line of business.
6. The effect of selling the patented product in promoting sales of other products of the licensee, the existing value of
the invention to the licensor as a generator of sales of its non-patented items; and the extent of such collateral sales.
7. The duration of the patent.
8. The established profitability of the product made under the patent; its commercial
success; and its current popularity.
9. The utility and advantages of the patented invention over the old modes or devices,
if any, that had been used for achieving similar results.
10. The nature of the patented invention; the character of
the commercial embodiment of it as owned and produced by the licensor; and the benefits to those who have used the invention.
11. The extent to which the accused party has made use of the invention; and any evidence that shows the value of that use.
12. The portion of the profit or of the selling price that may be customary in the particular business or in comparable
businesses to allow for the use of the invention or analogous inventions.
13. The portion of the profit that arises from
the patented invention itself as opposed to profit arising from features unrelated to the patented invention, such as the
manufacturing process, business risks, or significant features or improvements added by the accused infringer.
14. The
opinion testimony of qualified experts.
15. The amount that the patentee and the infringer would have agreed upon if
both had been reasonably and voluntarily trying to reach an agreement, starting at the time the infringement began. In other
words, the amount which a prudent licensee -- who desired, as a business proposition, to obtain a license to manufacture and
sell a particular article embodying the patented invention -- would have been willing to pay as a royalty and yet be able
to make a reasonable profit and which amount would have been acceptable by a prudent patentee who was willing to grant a license.
16. The relative bargaining positions of the patentee and the infringer.
17. Any other economic factors that normally
prudent business persons would take into consideration under similar circumstances.
Exceptional Case
Treble damages and attorneys’ fees may be awarded by the court in exceptional cases.
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PROVISIONAL PATENT APPLICATIONS
Since June 8, 1995, the United States Patent and Trademark Office
(USPTO) has offered inventors the option of filing a provisional application for patent which was designed to provide a lower-cost
first patent filing in the United States. Applicants are entitled to claim the benefit of a provisional application in a corresponding
non-provisional application filed not later than 12 months after the provisional application filing date. Under the provisions
of 35 U.S.C. § 119(e), the corresponding non-provisional application would benefit in three ways: (1) patentability would
be evaluated as though filed on the earlier provisional application filing date, (2) the resulting publication or patent would
be treated as a reference under 35 U.S.C. § 102(e) as of the earlier provisional application filing date, and (3) the
twenty-year patent term would be measured from the later non-provisional application filing date. Thus, domestic applicants
are placed on equal footing with foreign applicants with respect to the patent term. Inventors may file U.S. provisional applications
regardless of citizenship. Note that provisional applications cannot claim the benefit of a previously filed application,
either foreign or domestic. Note also that 35 U.S.C. § 112 must be complied with as discussed in the paragraph below
in order to receive the benefit under 35 U.S.C. § 119(e).
The later-filed non-provisional application claiming
the benefit of the provisional application must include at least one claim particularly pointing out and distinctly claiming
the subject matter, which the applicant regards as the invention. See 35 U.S.C. § 112, 2nd paragraph. Although a claim
is not required in a provisional application, the written description and any drawing(s) of the provisional application must
adequately support the subject matter claimed in the later-filed non-provisional application in order for the later-filed
non-provisional application to benefit from the provisional application filing date. Therefore, care should be taken to ensure
that the disclosure filed as the provisional application adequately provides a written description of the full scope of the
subject matter regarded as the invention and desired to be claimed in the later filed non-provisional application. There is
no requirement that the written description and any drawings filed in a provisional application and a later-filed non-provisional
application be identical, however, the later-filed non-provisional application is only entitled to the benefit of the common
subject matter disclosed in the corresponding non-provisional application filed not later than 12 months after the provisional
application filing date. Additionally the specification shall disclose the manner and process of making and using the invention,
in such full, clear, concise and exact terms as to enable any person skilled in the art to which the invention pertains to
make and use the invention and set forth the best mode contemplated for carrying out the invention. See 35 U.S.C. § 112,
1st paragraph.
A provisional application for patent is a U. S. national application for patent filed in the USPTO
under 35 U.S.C. § 111(b). It allows filing without a formal patent claim, oath or declaration, or any information disclosure
(prior art) statement. It provides the means to establish an early effective filing date in a non-provisional patent application
filed under 35 U.S.C. § 111(a). It also allows the term "Patent Pending" to be applied.
A provisional
application for patent (provisional application) has a pendency lasting 12 months from the date the provisional application
is filed. The 12-month pendency period cannot be extended. Therefore, an applicant who files a provisional application must
file a corresponding non-provisional application for patent (non-provisional application) during the 12-month pendency period
of the provisional application in order to benefit from the earlier filing of the provisional application. In accordance with
35 U.S.C. § 119(e), the corresponding non-provisional application must contain or be amended to contain a specific reference
to the provisional application.
Once a provisional application is filed, an alternative to filing a corresponding
non-provisional application is to convert the provisional application to a non-provisional application by filing a grantable
petition under 37 CFR § 1.53(c)(3) requesting such a conversion within 12 months of the provisional application filing
date.
However, converting a provisional application to a non-provisional application (versus filing a non-provisional
application claiming the benefit of the provisional application) will have a negative impact on patent term. The term of a
patent issuing from a non-provisional application resulting from the conversion of a provisional application will be measured
from the original filing date of the provisional application.
By filing a provisional application first, and then
filing a corresponding non-provisional application that references the provisional application within the 12-month provisional
application pendency period, a patent term endpoint may be extended by as much as 12 months.
PROVISIONAL APPLCIATION
FOR PATENT FILING DATE REQUIREMENTS
The provisional application must be made in the name(s) of all of the inventor(s).
It can be filed up to one year following the date of first sale, offer for sale, public use, or publication of the invention.
(These pre-filing disclosures, although protected in the United States, may preclude patenting in foreign countries.)
A filing date will be accorded to a provisional application only when it contains:
· a written description of
the invention, complying with all requirements of 35 U.S.C. §112 1; and
· any drawings necessary to understand
the invention, complying with 35 U.S.C. §113.
If either of these items are missing or incomplete, no filing date
will be accorded to the provisional application.
To be complete, a provisional application must also include the
filing fee and a cover sheet identifying:
· the application as a provisional application for patent;
·
the name(s) of all inventors;
· inventor residence(s);
· title of the invention;
·
name and registration number of attorney or agent and docket number (if applicable);
· correspondence address;
and
· any US Government agency that has a property interest in the application.
This information
is general in nature and is not meant to substitute for advice provided by a patent practitioner. Applicants unfamiliar with
the requirements of US patent law and procedures should consult an attorney or agent registered to practice before the USPTO.
CAUTIONS
· Provisional applications are not examined on their merits.
· The benefits
of the provisional application cannot be claimed if the one-year deadline for filing a non-provisional application has expired.
· Provisional applications cannot claim the benefit of a previously-filed application, either foreign or domestic.
· It is recommended that the disclosure of the invention in the provisional application be as complete as possible.
In order to obtain the benefit of the filing date of a provisional application the claimed subject matter in the later filed
non-provisional application must have support in the provisional application.
· If there are multiple inventors,
each inventor must be named in the application.
· The inventor(s) named in the provisional application must have
made a contribution to the invention as described. If multiple inventors are named, each inventor named must have made a contribution
individually or jointly to the subject matter disclosed in the application.
· The non-provisional application
must have one inventor in common with the inventor(s) named in the provisional application to claim benefit of the provisional
application filing date.
· A provisional application must be entitled to a filing date and include the basic
filing fee in order for a non-provisional application to claim benefit of that provisional application.
· There
is a surcharge for filing the basic filing fee or the cover sheet on a date later than filing the provisional application.
· Provisional applications for patent may not be filed for design inventions.
· Amendments are not
permitted in provisional applications after filing, other than those to make the provisional application comply with applicable
regulations.
· No information disclosure statement may be filed in a provisional application.
·
A provisional application cannot result in a U. S. patent unless one of the following two events occur within 12 months of
the provisional application filing date:
1. a corresponding non-provisional application for patent entitled to a filing
date is filed that claims the benefit of the earlier filed provisional application; or
2. a grantable petition under
37 CFR 1.53(c)(3) to convert the provisional application into a non-provisional application is filed.
FEATURES
· provides simplified filing with a lower initial investment with one full year to assess the invention’s
commercial potential before committing to the higher cost of filing and prosecuting a non-provisional application for patent;
· establishes an official United States patent application filing date for the invention;
· permits
one year’s authorization to use "Patent Pending" notice in connection with the invention;
· begins
the Paris Convention priority year;
· enables immediate commercial promotion of the invention with greater security
against having the invention stolen;
· preserves application in confidence without publication in accordance
with 35 U.S.C. 122(b), effective November 29, 2000;
· permits applicant to obtain USPTO certified copies;
· allows for the filing of multiple provisional applications for patent and for consolidating them in a single §111(a)
non-provisional application for patent;
· provides for submission of additional inventor names by petition if
omission occurred without deceptive intent (deletions are also possible by petition).
WARNINGS
A provisional
application automatically becomes abandoned when its pendency expires 12 months after the provisional application filing date
by operation of law. Applicants must file a non-provisional application claiming benefit of the earlier provisional application
filing date in the USPTO before the provisional application pendency period expires in order to preserve any benefit from
the provisional-application filing.
Beware that an applicant whose invention is "in use" or "on
sale" (see 35 U.S.C. §102(b)) in the United States during the one-year provisional-application pendency period may
lose more than the benefit of the provisional application filing date if the one-year provisional-application pendency period
expires before a corresponding non-provisional application is filed. Such an applicant may also lose the right to ever patent
the invention (see 35 U.S.C. §102(b)).
Effective November 29, 2000, a claim under 35 U.S.C. 119(e) for the
benefit of a prior provisional application must be filed during the pendency of the non-provisional application, and within
four months of the non-provisional application filing date or within sixteen months of the provisional application filing
date (whichever is later). See 37 CFR 1.78 as amended effective November 29, 2000.
Independent inventors should
fully understand that a provisional application will not mature into a granted patent without further submissions by the inventor.
Some invention promotion firms misuse the provisional application process leaving the inventor with no patent.
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