By Kristin M. Crall
Even sophisticated companies and inventors have questions about patent issues. This Q&A series addresses some of the more advanced questions about patent law.
Q: I periodically search my competitors’ published applications and found one that should not be granted as a patent. How can I can communicate that to the patent office?
One way is to submit art that is relevant to the patentability of the pending claims to the patent office yourself. The general rule is that a third party may submit prior art in another party’s application, although only within certain time limits. The art can be submitted anonymously and must include a concise description of the asserted relevance of the documents.
Q: How does an international “place-holder” patent application work?
The value of a patent portfolio may partially depend upon the geographical scope of protection. One way to begin obtaining protection in a number of countries, while delaying (although not avoiding altogether) expensive filing fees and translation costs, is to file an application under the Patent Cooperation Treaty (PCT). A PCT application can designate more than a hundred countries for a single fee. The application can keep the options of pursuing international protection alive for up to 30 months after the date of filing, providing time to determine the importance of the invention, secure financing, determine whether the invention is commercially viable, and determine whether international protection is warranted ― and in what countries. At the end of the 30-month period, the applicant must select the countries in which to pursue patent protection and file an application directly in those countries.
Q: Are there other place-holder options?
A U.S. provisional patent application acts as another “place-holder.” Because provisional applications do not require claims and there is not a required format to be used (it is possible to file a presentation or a sketch with notes), a provisional application can be prepared and filed relatively quickly. The filing fee for a provisional application is $260 or less (depending upon the size of the company). Provisional applications must still disclose the invention and enable one to make and use it, just as a “regular” (non-provisional) application, but they are not examined. To benefit from the “priority” date of the provisional application, the applicant must file a formal application that claims priority to the provisional application within one year.
Q: How can I ensure that I am not infringing someone else’s patent?
If you are about to launch a new product, consider a clearance study. This may be particularly important if the new product is outside the company’s traditional area of technology. A clearance study will attempt to identify patents that might pose an infringement issue with respect to the new product. Patents located during the patent search can be reviewed to determine whether the proposed new product might infringe any of those patents. If there are challenges in clearing the proposed product over one or more of the patents identified during the search, it is possible to try to “design around” the problematic patents or to conduct a validity study.
