Syringe Patent from 1890

The process, application and securing of a Patent is a long and (often) arduous process. A single procedural misstep can result in no Patent being issued. Worse yet, novice attempts to secure a Patent may result in a Patent being issued that is too narrow in scope to be of any practical use to the Patent holder. In essence, this Patent will make it easy for someone else to “design around” the Patent, and possibly, secure a Patent with more “teeth” than the Patent originally obtained by the novice.

To avoid this type of “patent poaching,” you need to secure the assistance of an experienced, knowledgeable, and licensed patent attorney who focuses on helping clients protect intellectual property.

Patent Law: Title 35 of the United States Code

For the Applicant filing a first Patent Application in the United States, who also desires Patents in other nations, the general rule is do not sell, offer for sale or disclose publicly your invention before the necessary documents are filed in accordance with the relevant international treaties.

Inadvertent public disclosures of the invention will bar Patents in most countries. Offers to sell the invention or sales of the invention will bar a Patent on the invention in the United States if the Patent Application was not filed before the offer to sell or the sale. In short, until the appropriate documentation is in place, it is best not to publicly disclose the invention.

Under Title 35 of the United States Code, the United States is a first to file nation rather than the first to invent nation, i.e., the inventor filing the first national or international patent application for invention A receives the benefits of the law rather than the inventor who is first to invent invention A.

Utility Patents Describe

  1. Mechanical Inventions
  2. Electromechanical Inventions
  3. Electrical Inventions
  4. Electronic Inventions
  5. Chemical Inventions
  6. Man-made Microorganism Inventions
  7. Biological and/or Pharmaceutical Inventions
  8. Processes for making or using any of the above (items 1-7)
  9. Software inventions associated with hardware, devices or processes

State-of-the-art or Novelty Searches

Pursuant to current United States case law, it is prudent for the Applicant to be in possession of the state-of-the-art search prior to filing a nonprovisional Patent Application. Since the United States became a first to file nation, more and more Applicants are filing a provisional Patent Application before the state-of-the-art search is completed.

A favorable state-of-the-art search is no guarantee of patentability or that no other relevant prior art exists.

Different Types of Applications

Note: An application for a Design Patent, Utility Patent or a Provisional Patent Application is not a patent. Until the Patent Office issues a patent, no patent rights exist!

Learn more about the differences between types of Intellectual Property.

Do I Need An Attorney To Get My Patent?

Under US law, anyone can represent himself/herself. During my years of practice, when an individual came to me after representing himself/herself to procure a US Patent, the Patent was usually so limited in scope that someone else could easily “design around” the claims of the Patent. Thus, the individual had spent money, time, and effort to procure a US Patent that would not prevent someone else from making, using or selling a product that is essentially the same.  Worse still, some pro se Applicants have come to me with a pending Application that was unfixable (filing date, USPTO fees, potential Patent rights – all forever lost).

Patent Law is one of the few recognized specializations in the practice of law. Patent, Trademark, Copyright law is generally known as intellectual property law. Patent attorneys are registered to practice this type of law before the US Patent and Trademark Office and are also a member of at least one State Bar.

The USTPO recommends that anyone applying for a Patent seek the services of a registered agent or a registered patent attorney, and the Provisional Application for Patent is a preliminary step toward obtaining a viable patent.

As a patent attorney, I am also an attorney who is licensed to practice other areas of the law.  However, my primary focuses are on the practice of intellectual property law (Patents, Trademarks, Copyrights) in conjunction with business law. This combination of skills and experience enhances my clients’ bottom line.

Business Patent Law, PLLC’s business is to add value to your intellectual property portfolio.