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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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