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Patent Invention

A U.S. Patent may be granted for any useful, new and nonobvious product or process. Although this appears to be a pretty big hurdle, even improvements to current inventions or technologies may be patentable. In fact, a complex device or method may result in multiple U.S. Patents. A Registered Patent Attorney can help you identify the patentable components of your idea or invention.

Types of Patent Applications

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

The following are the different types of patent applications:

• A Utility Patent is what most think of when they imagine a patent. Utility Patents protect new and nonobvious products and processes. A Utility Patent can be very broad and is usually preferred if the invention performs a useful function or a useful process. A Utility Patent typically has a term of about 20 years from filing and has a number of formal requirements.
• A Design Patent protects the ornamental features of a device. In other words, a Design Patent protects the look of the invention. Design Patents are typically much narrower in scope than Utility Patents. Design Patents have a term of 14 years.
• A Plant Patent protects new varieties of asexually reproducible plants, other than a tuber propagated plant or a plant found in an uncultivated state. Plant patents prevent others from asexually reproducing, selling, offering for sale or importing an infringing plant.
• A Provisional Patent Application does not issue as a U.S. Patent itself. However a Provisional Patent Application provides the Inventor a priority date and a 1 year grace period to file a Utility Patent Application and/or a PCT International Patent Application. Although Provisional Patent Applications do not require many of the formalities as a Utility Patent Application (and can therefore be less expensive) a Provisional Patent Application should comply with the written description requirement including best mode. A Provisional Patent Application does not effect the term of a resulting issued U.S. Patent.
• A PCT Patent Application is also commonly referred to as an International Patent Application. A PCT Patent Application never issues as a Patent itself. The PCT (Patent Cooperation Treaty) provides a centralized method for filing a patent application throughout most of the industrialized world (excluding Taiwan). Importantly, the patent application eventually must enter the national stage of each desired country. Currently there are about 181 Member States (countries) that belong to the PCT.
• A U.S. National Stage Patent Application is a U.S. national patent application that originates from a PCT Application designating the U.S. in the Request. A National Stage application issues as a U.S. Patent.

Information Disclosure Statements

While the patent application is pending, the Inventor has the duty to provide all known references that may affect patentability of the invention to the patent examiner. References are submitted in the form of an Information Disclosure Statement (IDS). Frequently, the results of a patent search are provided as the IDS. The patent examiner considers the IDS during examination. There seems to be a trend when litigating patents to evaluate whether an Inventor fulfilled the duty to disclose appropriate references. Litigators have recently been arguing Inventors conducted fraud to obtain the issued patent.

Patent Examination

Patent examiners will review the patent application to ensure the statutory requirements are met. Typically 35 USC 101, 102, 103 and 112. Frequently, inventions are initially rejected over one or more of the statutory requirements (as intepretted by the patent examiner) in what is referred to as an Office Action. A response to the office action can be filed. The following are typical responses:

• Providing Arguments that distinguish the invention from the arguments and documents cited in the Office Action;
• Amending the patent application to distinguish the invention from the arguments and documents cited in the Office Action;
• A combination of Amendments and Arguments;
• Abandoning the application

The patent examiner evaluates the Amendments and Arguments and may issue another Office Action rejecting all or part of the invention or may provide a notice of allowance.

Issued Patent

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

Patent Maintenance Fees

Contact our Patent Attorney

Contact our patent attorney for more information about the patent process.

Register Trademark

A Trademark is a distinctive word, name, symbol or device that indicates the source of goods. In other words, trademarks allow businesses to identify its goods and servces from others. Trademark protection may be available for a brand name, catch phrase, logo, symbol, design, image or website domain name.

Common law trademarks are alleged by merely adding a "TM" or a "SM" during continual use. Common law rights are typically limited to geographical use.

A Federally Registered Trademark is signified by a "®" and provides rights throughout the United States. To qualify for a registered trademark the mark has to be used in interstate commerce. A Federally Registered Trademark results in a greater variety of remedies for enforcement than a common law trademark. Some advantages to a Federally Registered Trademark are that a Registered Trademark:

• Provides access to federal courts;
• Allows for the collection of money damages;and
• Provides constructive prior use;

Trademark Search

While considering one or more potential trademarks, it is often a good idea to have a trademark search conducted. Although the Applicant is not required to search prior trademarks before applying for a federal trademark, it can be cost effective in the long run. For instance, a trademark search may:

• Determine whether the desired trademark is already federally registered;
• Determine whether the there is a pending trademark application for the same mark;
• Identify the current classes of goods or services with federally registered or pending trademarks; and
• Identify whether there is a mark that is confusingly similar to the desired mark (to avoid trademark infringement)

Trademark Application

The proper type of trademark application typically depends on whether the Trademark is currently being used in interstate commerce and the distinguishing features of the Trademark. The following are different types of Trademark Applications:

• A Use based trademark application is typically preferred if the trademark is being used in interstate commerce. The dates of first use anywhere and first dates in interstate commerce are provided.
• An Intent to use trademark application is typically preferred when a Trademark is identified but use has not yet begun. An intent to use Trademark application can be a good idea when exploring potential tradmarks. That way the applicant can find out whether the Trademark will register before associating the Trademark with the desired goods and services.
• A Madrid Protocol (international) trademark application claims priority to an earlier filed Trademark Application in another country.

Trademark Examination

Trademark Applications are reviewed according to statutory requirements by a Trademark Examining Attorney. The Trademark Examiner will also review the specimen to make sure the Trademark is used in connection with the provided goods and services. Frequently, the Trademark Examining Attorney will initially reject a Trademark Application over one or more of the statutory requirements. Trademark Rejections are provided in Office Actions. The rejections may include:

• The trademark is merely descriptive;
• The trademark is generic;
• The trademark is geographically descriptive;
• The trademark is confusingly similar to a registered trademark or pending trademark application; and
• Others. . .

Responses can be provided to the Trademark Examiner's intial position in the Trademark Office Action. Responses may include:

• Providing Arguments against the Trademark Examiner's evaluation;
• Amending the Trademark Application;
• Amending the Trademark Application and providing Arguments; and
• Abandoning the Trademark Application.

Trademark Opposition

Trademarks that have been allowed by the Trademark Examining Attorney are published for Opposition. During the Opposition period, the registration of the Trademark can be challenged.

Trademark Statements of Use

Trademarks must be used continuously. A statement of use must be filed for continued trademark registration.

Contact our Trademark Attorney

Raymond Wagenknecht, Patent Attorney and Trademark Attorney

Raymond Wagenknecht is a patent attorney practicing with Biotech Beach Law Group. Raymond provides personalized and affordable patent and trademark representation. He can help patent an invention or trademark a brand, logo, website domain and more.

Practice Areas

Patent

Trademark