Patent Eligibility, Application, Prosecution, Review and Invalidity

To promote the progress of science and useful arts exclusive rights are granted to inventors for limited times. This exclusive right to exclude others from using invention is patent.

Patent right does not necessarily grant the inventor a right to use the invention. For example, if an inventor has a patent that covers elements A, B, and C, it gives right to exclude others from using any process, machine, manufacture or composition of matter that has elements A, B, and C. However, if another inventor has a patent that covers elements A and B, that patent can excludes others from using anything comprising A and B, irrespective of whether it also comprises element C.

Protect Your Ideas and Inventions

Ideas are important. Ideas can be a new and useful process, machine, composition of matter, or manufactured article. Ideas could also be a simple but not-obvious improvement of a process, machine, composition, or manufacture. All these ideas are patentable. As long as the idea is not an abstract idea, a formula, an algorithm, or a natural process, it is patentable, unless somebody has already publicly disclosed it or it is an obvious idea.
Patented ideas are more valuable than ideas that are not patented. Ideas can be kept secret as a trade secret hoping that nobody finds out or comes up the same idea. Ideas can be built into a successful business or product hoping that nobody can catch up. Trying to protect ideas with trade secrets or business advantages cannot stop competitors. Only patented ideas can exclude competitors, as the patent grants a right to exclude others for about 20 years. Utility patents give a legal right for 20 years. Design patents grant a legal right for 15 years.

If somebody has an idea and wants to build a business based on that idea, patenting that idea is one of the most important things to do. Protecting an idea with a patent is more important than Trademark or Business Organization in many cases. Proper business organization can save tax and protect from creditors and liabilities. Trademarks are important to protect the brand. However, these don’t stop competitors from building the same business and product under a different brand. Patent protection, on the other hand, can safeguard the business from competitors by legally excluding them from using the patented idea.

Patent Application

Filing a non-provisional patent application is more important than filing a provisional patent application. Provisional patent applications are not examined, and are abandoned after 1 year. A non-provisional patent application has to be filed within 1 year after filing the provisional patent application to avoid abandonment and losing the idea to the public domain. If the idea does not have any functionality or use, a design patent application can be filed in many cases. Design patent protects shape or surface ornamentation for an article of manufacture.

After filing a patent application, the application is examined by an examiner at the US Patent Office (USPTO). The examiner at first rejects or objects the application in many cases. These rejections and objections have to be responded with sufficient legal arguments or necessary changes as required by the examiner. Responses have to be filed within a couple of months in most cases. The application will become abandoned if a proper response is not filed within the time provided.

An international patent application (PCT application) should be filed if protection is sought internationally. The USPTO can act as the receiving office for the PCT application, and it can also perform international search and international examination for the PCT application.

Ask questions about patentability of your invention

Is my invention patentable? The invention is patentable only if it falls in one of these 4 categories: (1) a process; (2) a machine or device; (3) a composition of two or more matters; and (4) a tangible article resulting from manufacturing process. Ask more…

Is my invention too abstract? If the invention is not an abstract idea, a formula, a law of nature, an abstract process, a discovery in pure science, a natural phenomenon, a product of nature, or a similar abstract idea or item of nature then it is not patentable. Ask more…

Questions about patent filing and prosecution process

What is the patent process? Getting a patent involves the following steps (Ask more…)

  1. Check if the idea is patentable. Also check if somebody has already publicly disclosed the invention. This requires searching existing patents and other publications.
  2. Draft the patent application. This is the most difficult part, as it requires a lot of skill, particularly to draft the legally enforceable claims part of the patent application.
  3. File the patent application with Patent office, like US Patent and Trademark Office (USPTO).
  4. Respond to Patent office rejections and objects in timely manner. Patent examiner most of the times comes back with rejects to patent application, usually because the invention is obvious (35 U.S.C. §103) or already publicly disclosed (35 U.S.C. §102). Patent application is abandoned if those rejections are not responded with proper legal arguments.
  5. In the end, if the patent application is granted, pay the patent issue fee to the patent office. After issue fee is paid, the patent will be officially issued and you would have enforceable patent rights.

Questions about provisional patent application

Should I file a provisional patent application? File a provisional patent application through an experienced attorney only if you need to expedite the process by some days, not to save money. Ask more…

Does provisional patent application cost less? In the long run provisional patent application costs more, because a non-provisional patent application has to be filed within 1 year of the provisional patent application. The fees and expenses paid for provisional patent application becomes an additional expense. Ask more…

Can provisional patent application cause problems? A quickly filed provisional patent application without thorough review can cause problem later when filing non-provisional application, as somethings required disclosures, description, examples and drawings are not included. A thorough review of the invention after searching prior inventions and considering the legal claims can reveal required disclosures, description, examples and drawings. If these are not included in a provisional patent application, but later included in a non-provisional patent application they are considered new subject matter, and can only get the filing date of the non-provisional patent, which is typically about 1 year after the provisional patent filing date. Ask more…

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  • Is it patentable, an abstract idea, a formula, or a product of nature?
  • Is it public or obvious? Is it publicly available, or prior ideas be easily combined, substituted, or tried in obvious way?
  • Should I file provisional or non-provisional application?
  • Should I file utility or design application? What is the filing process?
  • How about rejections, objections, reexamination, or appeal?

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Why us? We try our best for you:

  1. Less time explaining invention – we get it quickly.
  2. Diligently prosecute patents – explore invention in-depth, considering all the examples, boundaries & limitations.
  3. Don’t compromise – don’t limit patent scope.
  4. Prevent vulnerability to obviousness attacks on patent.
  5. Ensure large patent scope that maintains higher value in future.
  6. Protect inventions in multiple ways – protection from all perspectives to safeguard invention.
  7. Exclusively patent focused – so we understand it better.
  8. Client first service – customized, innovative and creative solutions.
  9. Quality Assured Patent for Electrical, Computer, Software, Mechanical, and Medical inventions using many years of ECE, CS, and Engineering experience and rigorous Total Quality Management.

Client Testimonials about Our Services

The patent attorney has helped us with two patents. What impressed us the most is his expertise in both technicality and law. Our previous perception of working with patent lawyers was that they may do a good job in filing and negotiating, but when it comes to drafting and especially the iterations of revisions, it takes a lot of time and effort to explain to them and reach an agreement. In this case, he has the technical background comparable to that of the inventors, so we only needed the extent of details sufficient to communicate with a co-inventor/colleague. In particular, in the process of drafting, he was clear about the key point of each claim and how the system works, and able to make the modifications to satisfy the filing requirements. When later we had to revise the claims a few times, he always managed to make the best trade-off possible that addressed the patent examiner’s challenges, while not hurting the scope and value of the invention. With the complexity already time-consuming for us (as required by filing a patent), he could even maintain a turnaround of a day or just several hours.

Moreover, his helpfulness was also reflected in the sense that he made us convinced and understood the rationale of each decision point, instead of just making the changes on his own, so that we as the inventors can be synced and participate to achieve a better outcome. In the long term, what we’ve learned from him, the legal aspects and best practices, will facilitate our future research and production of inventions, as we were not well aware of these before.

Overall, during the whole process of both patents, we never felt that we were trying to “use” a patent lawyer, but just interacting with another co-inventor, in terms of: ownership, hard work, knowledge and ease of communication.

L. Zhao (Carleton University, Canada) and M. Mannan (Concordia University, Canada)