Thursday, October 15, 2015

Intellectual Property: Patent Law Basics Series - Top Questions Answered, Part 1

By Kristin M. Crall

Even sophisticated companies and inventors have questions about basic patent issues, such as what rights a patent confers and how the patent system works. This Q&A series addresses some of the more frequently asked questions.

Q: What rights does a patent provide?

A: A patent concludes with a series of numbered paragraphs, called “claims.”  The claims define the scope of protection the patent owner is entitled to, defining the boundaries of the invention. Patents confer exclusionary rights — a patent gives its owner the right to exclude others from making, using, selling, offering for sale, or importing the claimed invention anywhere in the United States for the life of the patent. To establish infringement of a patent, every element of a claim must be found in the accused device, product, or process, either literally or by a substantial equivalent.

Instead of preventing others from practicing the patented invention in the United States, a patent owner may wish to license the patent to others by charging a royalty or licensing fee for allowing others to practice the invention. Patents may also be used as a bargaining tool, either when faced with a patent suit by a competitor or when entering negotiations.

Q: Is a prior art search required?

A: Although searching is recommended before preparing a patent application, it is not required. A prior art search can be useful to determine whether it is worth the time and expense of moving forward. If a patent application is prepared, review of the search results can help with crafting claims that are as broad as possible, while distinguishing over the art. There are professional searchers available, but it is also possible to search on your own, using basic Internet word searches and searching the patent office website

Q: How does the patent examination process work?

A: Once a patent application is filed, it is assigned to a patent examiner responsible for patents in a particular technology area. It is common for a patent application to remain pending for a year or more, awaiting its turn to be examined. The examiner conducts a search of the patent office’s databases, attempting to identify whether the same or a similar invention already exists.  Communications between the patent examiner and applicant about what the examiner has found (called “prosecution”) ensue, with the applicant having the option to present arguments about why the examiner’s interpretation is incorrect and/or amending the claims to distinguish over the art. Once (and if) agreement is reached, the applicant pays the issue fee, and the patent office will issue a United States patent. 

Q: Is there anything I can do to speed this up?

A: One option is to file a Track One request upon filing of the application. There are fees involved (which are currently about $4,000 in addition to the regular filing fees), and there are certain requirements and limitations to be met, but if granted, the Track One request can drastically expedite the examination process.  The current patent office goal is to issue a final disposition within 12 months of prioritized examination being granted.