The term “Provisional Patent” is often wrongly used to refer to a a Provisional Application. A Provisional Application is not a Patent and will not become one by itself. A Provisional application is merely a filing that includes a disclosure of the invention to obtain a Filing Date that can be claimed by a Utility Patent Application if the Utility Application is filed within one year of the Provisional, properly claims benefit of the Provisional, and includes claims to an invention that the Provisional taught one how to make and use. Provisional applications are not examined by the Patent Office and expire on their anniversary… as if they never existed… if no Utility Application is filed properly claiming their benefit.
A Utility Patent protects a new, useful and non-obvious process machine, article of manufacture, or composition of matter. Provided Maintenance Fees are paid, a Utility Patent lives from Issuance until 20 years from its earliest claimed Filing Date.
A Design patent protects the new and distinct ornamental design of an article of manufacture. Design Patents have no Maintenance Fees and live for 14 years from Issuance.
A Plant Patent protects a new and distinct asexually-reproduced plant.
Prior to filing a patent application a patent search is often beneficial. And if you intend the commercialize the invention, it is highly recommended.
There are several types of patent searches, each done differently according to the particular objective. These include;
It should always be kept in mind that patent searching is an art and not a science. Similar inventions are often categorized differently, and similar features are often given different names from patent to patent, so perfect confidence is practically impossible and the best search will balance the searcher’s budget with the needed degree of certainty in the results.
While a patent search is a snapshot taken on the day the search is conducted, activity is oftentimes underway in the Patent Office which cannot be found at that time. And other activities still eligible for patent protection may not have even yet been filed at that time. A Patent Watch can continue to monitor for later-issuing patents and later-publishing applications to supplement and update the search results. This is an inexpensive and virtually instant way for a client to follow the patenting activities of a competitor, to watch out for activity related to a competing product in the market, or to be made aware as soon as possible when a patent issues or an application publishes which may be a threat or may simply be of interest. If you are in a given business, you should want to know what your competitors and others are doing. I recommend setting up an ongoing Patent Watch to any client in a competitive industry or rapidly changing technology.
The patenting process typical begins with a meeting, either in person, by phone, or by video conference, where the inventor provides some disclosure about the invention and how it differs from and improves on the prior art. The process typically (but not always) proceeds as follows;
1) Conflict evaluation – Patent Practitioners must initially evaluate whether any invention under consideration will compete with the inventions or businesses of their other clients.
2) Consultation – Depending on the budget, goals, and business model of the inventor, a recommendation will be made on the best strategy towards obtaining a patent… Is a search warranted? What type? Should a patent application be filed? What type? Should the application be prosecuted in secret? Is the cost of expedited examination justified? Does the client qualify for discounted USPTO Fees?
3) Deposit – A deposit may then be required according to the strategy elected. Some firms will require a retainer and execution of a contract to secure their services.
4) Disclosure – The client will be asked to prepare a full disclosure, including a written summary of his invention and whatever sketches, images, and samples are available and needed to assist in the writing of the application. Recall that a Utility Application will need to teach others how to make and use the invention, so the disclosure will need to include enough to enable that. If the application is to be a Design, samples or a complete set of photos/drawings/illustrations must be provided along with information about the novelty and value of each ornamental aspect of the article.
5) Search – Patent searching prior to filing an application is not required, but is highly recommended. It can save lost time, wasted effort, and a lot of money if it finds that your invention is not saleable because it would infringe another patent, or if it finds dead ringer prior art that would prevent a meaningful patent.
6) Application preparation – An application is drafted and forwarded to the client with preliminary drawings prepared by a professional Patent Draftsman and with the requisite forms. A Utility application will consist of a Specification, including the Drawings, which describes your invention in detail, and a set of Claims which point out and distinguish that which you regard as your invention. A Design Application makes just a single claim to ornamental aspects of the article shown in the Drawings. An Oath is prepared for the inventor to execute, declaring that he/she is the true inventor and is disclosing all known relevant prior art. These things are sent to the client for review and execution.
7) Payment and Application Filing – Final payment is made, and the application is filed, typically electronically, and a Filing Date is secured which may be useful not only in preventing later filers from patenting the same invention, but also in preserving foreign filing rights… and which may be used in certain later-filed applications. If the application was a Provisional, the process is now complete until a decision is made by the client within the upcoming year about filing a formal Utility application. Utility and Design Applications will be examined in order according their Filing Dates unless payment of an additional fee with a request to expedite is made. These expedited programs can typically result in full examination of a Utility application within 12 months or of a Design application in a few weeks.
8) Pre-exam review – While the examination of Design, Plant, and Utility applications on their merits may take some time according to the backlog in the relevant examining department, applications will be reviewed for completeness and compliance within a few weeks of filing, and a Filing Receipt will be issued which will generally include a “Foreign Filing License” authorizing the filing of non-US applications.
9) Examiner assigned – Depending on the type of application and whether an expedited examination was requested, there can now be a rather long wait for an examiner to be assigned. The examiner will be selected according to his/her expertise in the category of your invention. Recent backlogs in certain departments are causing a wait of 3 or more years just for examination of many Utility Applications to begin.
10) Search and Examination – The examiner will first consider your claims and then either do or have done a search to try to find prior art that disqualifies those claims. Since this examiner has typically specialized in the category of your invention for many years, he/she will know of, or have access to a huge library of, US/foreign patent/non-patent old/recent information, often including prior art that no practical amount of patent searching could have found.
11) Office Action – The examiner will then articulate his findings in an Office Action. Rarely does a first Office Action allow even a single one of the as-filed claims. The examiner will spell out his/her reasons for rejecting (or sometimes allowing) each claim, with specific reference to each claimed feature in the prior art that was found in his/her search.
12) Response – A Response to the Office Action will be prepared and filed, which must address each point raised by the examiner. Incorrect reasonings may be challenged with proper arguments, but usually the Response will include an Amendment that narrows the claims in accordance with the cited prior art.
13) Final Rejection or Allowance – If the arguments / Amendments have successfully convinced the examiner, a Notice of Allowance will be issued which sets forth the requirements for gaining Issuance of the patent. If not, the examiner will typically issue a Final Rejection, for the most part closing out the initial phase of the examination.
14) Appeal or Continued Examination – Once a Final Rejection has been issued, prosecution can only be continued under certain limitations. For instance, a fee can be paid to have the examiner reopen the case and consider another Amendment, or an Appeal can be filed to the Appeals Board to challenge the examiner’s findings.
15) If the patent is allowed, a Notice of Allowance will outline the allowed claims and require payment of an Issue Fee. The patent certificate will be issued, and the actual patent rights will thus commence, several weeks after the Issue Fee is paid.
16) In the case of a Utility Patent, Maintenance fees will be required to keep the patent active beyond 4, 8, and 12 years. Assuming such fees are paid, the patent will live for 20 years from its Filing Date. Design and Plant Patents are not subject to Maintenance Fees and will live for 14 years from their Issue Date.
As can be appreciated from above, the patenting process can be long and arduous… and it can get quite expensive. Each hurdle will bring additional cost in the form of charges by the attorney/agent and fees charged by the Patent Office. The client should be prepared for this wait and expense. Additionally, once an application is filed, no new disclosure may be added to the application. So clients still in the process of developing and improving their inventions will have no opportunity to protect those new developments except by filing a new application. While this would lead one to delay the filing until development is complete, the recent change to a First-to-File system inflicts a new element of risk in doing so. Clients should therefore carefully consider not only their budget, patience, and level of development, in deciding when to file, but also the risk of competitive intervention. Provisional applications can be a very useful tool for dealing with such uncertainties.