Patents

Patent

DeLio, Peterson & Curcio represents a wide range of clients in patent counseling, patent drafting and patent prosecution before the U.S. Patent and Trademark Office. Our services include:

Patent Searching

A preliminary search of the prior art is recommended to make an initial determination of the prospective patentability of an invention. This search will be made in the records available to the public in the Public Search Room of the U.S. Patent and Trademark Office. This for most technologies, represents the most complete and accessible collection of U.S. patents. The search will usually locate those previously issued U.S. patents which are believed to be the closest to an invention. After reviewing these patents, DeLio, Peterson & Curcio will render an initial opinion to as to the patentability of the invention, and advise clients on the scope of the patent protection which appears to be available. DeLio, Peterson & Curcio has longstanding relationships with qualified patent searchers in Washington, D.C., and overseas to help achieve an efficient and thorough analysis.

Filing a Provisional Patent Application

The new U.S. Patent Law effective on March 16, 2013 grants a patent on an invention filed on or after such date to the first inventor to file. The inventor is no longer able to rely on invention records to establish priority over others who may have filed for a similar invention. There are only limited exceptions to this rule that the first to file is granted the patent. One is where the earlier filed patent application was derived from the inventor. Accordingly, it is still good for the inventor to maintain dated and witnessed records of the conception and reduction-to-practice of the invention. One or more provisional patent application filings can establish priority. An initial provisional patent filing may be made immediately based on the invention disclosure, to establish an invention date on which the inventor can rely to overcome others who may disclose or claim a similar invention. A subsequent provisional application may also be filed once the patent attorney has prepared a claim that describes the invention, either before the patent search or after the opinion on patentability.

Provisional applications are not examined by the U.S. Patent and Trademark Office, and only provide a benefit date for subsequent filing of a non-provisional U.S. or foreign patent application that is filed within one (1) year of the provisional. Only non-provisional patent applications are examined by the U.S. Patent and Trademark Office. The benefit accorded the provisional application depends on the amount of disclosure in the provisional as compared to the disclosure and claims filed in the non-provisional application.

Limitation on Certain Activities before Patent Filing

U.S. Patent Law requires that a patent application be filed no more than one (1) year after the invention is first placed on sale, published, or used publicly in order for a valid patent to issue. Even if a U.S. patent application is filed within this one year period, you will lose rights to another inventor who files a patent application or publicly discloses the invention before you. Early filing of a provisional or non-provisional application is important. However, to file for foreign patent protection, a patent application must be filed before making any public disclosure of the invention.

Filing a Non- Provisional Patent Application

Only non-provisional applications are examined by the U.S. Patent and Trademark Office. Preparation of a non-provisional patent application is subject to specific requirements established by the Patent Laws and involves describing the invention in a specification and preparing drawings, if necessary. The non-provisional application will include a series of claims defining the scope of patent coverage sought. The claims are normally drafted to claim the invention as broadly as possible, without claiming anything found in the prior art.

In connection with the filing of the patent application, it will also be necessary to file other documents with the U.S. Patent and Trademark Office, including a declaration of inventorship and power of attorney, a statement disclosing all material prior art of which the inventor is aware, including the patents located in the search, and, where appropriate, an assignment of the invention.

After the non-provisional patent application is filed in the U.S. Patent and Trademark Office, the application is subjected to an examination by a Patent Examiner to determine the patentability of the claimed invention. This examination basically seeks to determine two things, namely, (1) whether the invention as claimed is novel, and (2) whether it is unobvious. In addition, the non-provisional application is examined to determine whether the invention is clearly described and claimed with the specificity required by the Patent Laws. In some cases, the examination results directly in allowance of the application.

If the application is rejected, there is an opportunity to respond and argue against the Examiner’s rejection, and to amend the claims if necessary. If the arguments are successful, the Patent and Trademark Office will issue a notice of allowance. If they are unsuccessful, there is a further limited opportunity to file subsequent requests, amendments and responses to the Examiner. There is also an opportunity to appeal the Examiner’s rejection.

Once the U.S. Patent and Trademark Office issues a notice of allowance, an issue fee will be due. Thereafter, maintenance fees will be due by the end of 4, 8 and 12 years after issuance of the patent to keep it in force. If all maintenance fees are paid, the patent will remain in force for twenty (20) years from the date of the original application.

The costs involved in patenting the invention include the Patent and Trademark Office fees and service fees which are charged on an hourly basis. The costs of issuing a patentability opinion, and preparing the provisional and non-provisional patent applications will naturally be affected by the complexity of the invention. The costs of prosecution after filing, e.g., responding to an office action, etc., are in addition to the fees charged for preparing and filing the application in the first instance.

Foreign Patent Filing

DeLio, Peterson & Curcio enjoys longstanding relationships with foreign associates throughout the world that assist in securing patent rights outside the United States for its clients with international IP portfolios. If a foreign patent is desired, a patent application must be filed before making any public disclosure of the invention. Individual national patent applications may be filed under the Paris Convention within one (1) year of the U.S. filing date and such filing will enjoy the priority of the U.S. filing date in all Paris Convention countries. If a foreign application is to be filed in a country that does not subscribe to any of the normal patent conventions, it should be filed immediately after the U.S. application and before any public disclosure.

Some of the foreign filing costs can be deferred and reduced when electing to file an application under the Patent Cooperation Treaty (PCT). Utilizing this method, a PCT filing is made through the U.S. Patent and Trademark Office designating each of the foreign countries in which patent protection may ultimately be desired. The main advantage in utilizing the PCT procedure is that major expenses involved in filing the foreign national applications, including translation costs, foreign associate expenses and the national filing fees, may be deferred for up to thirty months from the U.S. filing date without loss of filing date priority. As a practical matter, this provides an additional period beyond the one year Paris Convention time limit within which to make a decision regarding specific foreign filings. However, the PCT application itself must be filed within the one year Convention period if the filings are to enjoy priority of the U.S. filing date.

Foreign filing costs vary widely by country. Additionally, prosecution costs and issue fees are incurred in each country for direct national filings.

In most European countries it is possible to file a single European Patent Convention (EPC) application to obtain patent coverage in each member country. Only a single prosecution occurs in a central office and the examination may be conducted in English. However, after the EPC patent has been granted, fees must be paid in and the patent registered in each individual designated country to bring the patent into force.

For effective worldwide coverage, a client should consider filing in all countries having important markets for the invention, and in all countries having a strong industrial base where the invention might be manufactured for export to countries where patent protection will not be sought.

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