Patent protection forms the cornerstone of most manufacturing companies' intellectual property programs. If the realities of your business make it necessary to disclose confidential information to a fairly broad group of employees or customers, misappropriation or loss of the secret nature of the information is a constant risk. In addition, the commercial value of many inventions comes from incorporating them into a product that is mass produced, which often fully discloses an invention or discovery.

Under these circumstances, patent protection is the protection of choice because it gives the patent holder the right to prevent (in legal terms -"exclude") others from practicing the invention covered by the patent. A patent holder can derive commercial value either from being the only source of the patented item or by receiving royalties from licensing the patented invention to others, or by engaging in a combination of both.

TYPES OF PATENTS

• Utility Patents are granted on any new and useful process, machine, manufacture or composition of matter, or any new and useful improvement thereof. Utility patents protect things and/or the way an invention works.

• Design Patents are granted on a new, original and ornamental design for an article of manufacture. Design patents protect the way an item looks.

• Plant Patents are granted on any asexually reproduced distinct and new variety of plant, including cultivated sports, mutants, hybrids and newly found seedlings, other than a tuber propagated plant or a plant found in an uncultivated state.

The two main types of patents used in the US are utility and design.  All U.S. patent applications, whether utility or design, must be filed within one year of the first offer for sale or printed publication of the invention.

LEARN MORE:

THE PATENT PROCESS
Patent rights in the United States are granted by the U.S. government by the Patent and Trademark Office in a procedure called "prosecution" in which the applicant discloses the invention in writing and makes claims as to the aspects of the invention for which the patent should be granted.

In order to be patentable, an invention or discovery must be novel (not previously known by someone else), useful and nonobvious (a legal standard meaning not obvious to a person of ordinary skill in the art at the time the invention was made).

If a patent is granted, it provides the patent holder the right to exclude others from practicing the invention or discovery without the patent holder's consent for a specific period of time. In the case of utility patents (granted for machines, processes, formulations of materials, etc.), the patent lasts 20 years from the time of filing; design patents (covering the originality of the appearance of an item) last 14 years.

Patents are only granted to the inventor. If you have employees who invent or discover patentable items in the course of their employment with your company, your company can become the owner of the patent by having the rights assigned to it, either before or after the patent issues. It is important that your company have written agreements with its employees establishing the company's rights to inventions, discoveries or improvements employees conceive of or develop (alone or with others) while employed by your company. Many of the intellectual property problems faced by all companies (new companies are not alone in this one), have to do with competing ownership claims to inventions or discoveries. A great deal of controversy and legal costs can be avoided if these questions are dealt with up front. "Hired to invent" employees will generally understand that your company will expect them to agree to assign their inventions to the company -- at least those inventions that are related to your business.

Companies are strongly urged to have every potential inventor employed by it sign an employment contract explicitly stating that all inventions developed as a part of his/her employment will be the property of the company. Individual assignments should also be signed prior to filing each and every patent application.

NATIONAL VS. INTERNATIONAL PROTECTION
Patents issued in the United States extend to products made or methods practiced in the United States, used in the United States or sold in the United States. U.S. patents do not protect against production outside of the United States. In a global economy, most companies will want to obtain patent protection in at least Europe, Canada, China and Japan. The European Patent Office, located in Munich, has the power to grant a so-called "bundle" of patents covering most of the major European countries. Generally speaking, the process of obtaining foreign patents is slower and more cumbersome than the patent process in the U.S. The decision whether to obtain patents in other countries may often be deferred until almost one year after the initial filing of a U .S. patent application. An international convention gives the applicant the benefit of the first filing date in a subscribing country so long as subsequent applications are filed within a year. Most foreign countries require absolute novelty of an invention before granting a patent. Publicly disclosing the invention prior to filing the U.S. patent application can place the invention in the public domain in many foreign countries and thus destroy absolute novelty.

EX PARTE REEXAMINATION OF PATENTS
Any person or entity at any time may cite to the Patent and Trademark Office in writing prior patents and printed publications which that person believes raise a substantial new question of patentability of any claim of a particular patent, as stated in 35 U.S.C. § 301. Citations of prior art may be filed at any time during the period of enforceability of a patent. The period of enforceability is the length of the term of the patent plus the 6 years under the statute of repose for bringing an infringement action. In addition, if litigation is instituted within the period of the statute of repose, citations may be submitted after the patent has expired, as long as the patent is still enforceable against someone.

In addition to the reexamination fee, the request for reexamination must include:

• A statement pointing out each substantial new question of patentability based on prior patents and printed publications;
• An identification of every claim for which reexamination is requested, and a detailed explanation of the pertinency and manner of applying the cited prior art to every claim for which reexamination is requested;
• A copy of every prior art citation;
• A copy of the patent for which reexamination is requested;
• A certification that a copy of the request has been served on the patent owner.

Prior art considered during reexamination is limited to prior art patents and printed publications. An explanation is required of how the person submitting the prior art considers it to be pertinent and applicable to the patent, as well as an explanation of why it is believed that the prior art has a bearing on the patentability of any claim of the patent. It is therefore important that the request clearly set forth in detail what the requester considers the "substantial new question of patentability" to be in view of prior patents and printed publications. The Patent and Trademark Office must determine whether a substantial new question of patentability affecting any claim of the patent has been raised, as stated in 35 U.S.C. § 304. The presence or absence of "a substantial new question of patentability" determines whether or not reexamination is ordered. The meaning and scope of the term "a substantial new question of patentability" is not defined in the statute and has developed to some extent on a case-by-case basis.

A decision on the request is typically made no later than 3 months from its filing, with the proceedings accorded special dispatch within the Patent and Trademark Office. If the examiner concludes that no substantial new question of patentability has been raised, the request will be denied and a portion of the fee refunded.

If the request is granted, the examiner will issue a decision concluding that a substantial new question of patentability has been raised by (A) identifying all claims and issues, (B) identifying the patents and/or printed publications relied upon, and (C) providing a brief statement of the rationale supporting each new question. Once ordered, the reexamination proceeds to conclusion and cannot be withdrawn.

PATENT SEARCHES
Patent searches are a review of the existing prior art literature for a particular technology. In some instances the searcher consults with a patent examiner for guidance on the field of search. There are several reasons one should consider having a patent search performed. Specifically, one should obtain a patent search for determining:

• Patentability of an idea or invention
• Validity of a patent that has already issued
• Freedom to operate in a particular patent landscape

PATENT SEARCH AND OPINION
Prior to preparing a patent application, our attorneys and agents typically have a patentability search performed and prepare a patentability opinion for our clients. It is important for someone contemplating seeking patent protection to understand the value of patentability searches and opinions.

The patentability search investigates whether or not an idea is worthy of a patent and may save the cost of a patent application if the idea or invention is found in the prior art literature. The patentability search also supplies information that allows a stronger patent application to be drafted. For example, novel aspects of the invention should be emphasized in the patent application. One cannot emphasize the novel aspects of the invention unless one is aware of the relevant prior art.

A patentability opinion is a professional legal opinion about the likelihood that the invention could receive patent protection. The patentability opinion should also include considerations about the likely scope of a patent that could be obtained. The information in the patentability opinion can be used by the client so that the client can decide whether it is worth proceeding with the preparation, filing, and prosecution of a patent application.

Additionally, a patentability search and opinion leads to more efficient preparation and prosecution of a patent application, because the search and opinion allows the patent drafter to prepare a patent claim set that has the proper scope and accurately represents the contribution made by the invention over the prior art.

PATENT VALIDITY
Patents are presumed valid. Sometimes the patent examiner is not aware of the most relevant prior art. The presumption of validity may be rebutted, however. Patent validity searches are performed to determine whether prior art exists that could render issued patent claims invalid. Validity searches are often performed because of current or anticipated litigation. A validity opinion evaluates the prior art discovered in the search and determines whether the patent at issue is invalidated by the prior art.

Our attorneys regularly conduct patent validity searches and issue opinions to our clients to aid them in making business decisions and compete more effectively in the marketplace. An opinion that the patent claims are invalid may be a basis for avoiding a charge of willful patent infringement.

FREEDOM-TO-OPERATE
The freedom-to-operate patent search (also called a clearance search) is performed in order to determine whether a particular practice or product (currently in existence or potential) would infringe any enforceable patent.

The freedom-to-operate searches and opinions, provided by our attorneys, aid our clients in avoiding potential liabilities and third party patent rights when selling, marketing, manufacturing, and importing their goods and services.

PROVISIONAL PATENT APPLICATION
A provisional application is a temporary patent application that may be filed without a formal patent claim, oath or declaration, or any information disclosure statement. The provisional application is not examined by the U.S. Patent Office.

The advantage of the provisional application is that it locks in a priority date for the disclosed invention. This may become important when overcoming prior art references that are published or filed in between the earlier filing date of the provisional and filing date of a later filed non-provisional application.

Additionally, the filing of a provisional application stops the running of any statutory time bars that would prevent a patent from being granted. In the U.S., one can be barred from receiving a patent if certain events have occurred more than 12 months prior to the filing of a patent application. For example, if one sells a product more than 12 months prior to filing a patent application for the same product, one loses the right to obtain a patent on the product. If, however, a provisional application was filed less than 12 months after the product was sold then there is no bar for the subject matter disclosed in the provisional application and Trademark Office.

The filing of a provisional patent application allows the term "Patent Pendings" to be applied, which can have significant marketing advantages.

A provisional patent application lasts 12 months from filing. The 12-month pendency period cannot be extended. Therefore, an applicant who files a provisional application must file a corresponding non-provisional patent application for examination in the U.S. Patent and Trademark Office during the 12-month pendency period of the provisional application in order to benefit from the earlier filing date.

The life of the patent is not affected by a claim for priority from a provisional patent application. That is, the 20 year period of exclusivity begins when the later filed non-provisional is filed. Provisional patent applications are less expensive to file in the U.S. Patent and Trademark Office than regular non-provisional patent applications, because the filing fees are less. In addition, provisional patent applications may also be less expensive to prepare than non-provisional patent applications due to the fact that they need not be filed with a complete set of claims. Thus, if properly prepared in accordance with the disclosure requirements of the U.S. patent laws, a provisional patent application may save clients time and money.