Patent Attorney Milpitas San Jose Bay Area

What is a patent?
What is the process for getting a patent?
Do I need to do a patent search?
Are there different strategies for filing patents?
Do I want a patent or a copyright?
Do I want a utility patent or a design patent?
My Question Is Not Listed Here

What is a patent?

A patent for an invention is the grant of a property right to the inventor, issued by the United States Patent and Trademark Office. Generally, the term of a new patent is 20 years from the date on which the application for the patent was filed in the United States or, in special cases, from the date an earlier related application was filed, subject to the payment of maintenance fees. U.S. patent grants are effective only within the United States, U.S. territories, and U.S. possessions. Under certain circumstances, patent term extensions or adjustments may be available.

What is the process for getting a patent?

An application is filed, containing a description of the patented subject matter, one or more drawing figures, and detailed description of the patented subject matter called claims.

Once the patent is filed, you get a filing date, meaning that you have priority over any other patent filed after that date with the same claimed subject matter.

Sometime in the future, usually between 6 months and 3 years, you will get a response from the patent office. Most likely, this response will be what is called an office action. An office action lists all of the issues that the patent examiner found with your patent application, called objections and rejections. The list of issues may include issues with drawings, wordings of the application or the claims. If there are rejections based on prior art, the office action will include brief description of cited prior art references and exminer's reasoning to suppor the rejections.

Arguments that a patent examiner usually use deal with obviousness and lack of novelty. Usual arguments made by the examiners deal with obviousness and/or novelty or the patent claims.

Obviousness means that in light of a combination of earlier patents, applications (or publications), it would have been “obvious” to someone skilled in building things similar to your subject matter (“skilled in the art”) to make what you have invented. Lack of novelty means that all elements of your claims can be found in at least one of prior issued/published patents, applications or publications.

Do I need to do a patent search?

The advantage of doing a patent search is that you may find that your invention or something very close to it is already in public domain, thus saving you thousands in patent and attorney fees. At the very least, a search report will provide useful information about prior art references and attorneys generally use this information to draft better applications. The disadvantage is that it is generally incomplete, as there is no visibility into unpublished patent applications, which in the US pertains to most patent applications less than 18 months old.

It is generally recommended that one do a search if one is not familiar with the general subject matter. For instance, if the inventor has been involved with research and development in his field for many years, it is likely that he knows whether or not his approach is a novel one. But if one came up with an idea in a flash and has little or no visibility into the broader subject matter, it is a good idea to do a search.

Are there different strategies for filing patents?

Yes. Filing provisional patents will set you up early in the patent process, but will also delay the USPTO from even queueing up your application for examination until a utility patent is filed. At the end of the 12th month you must make a decision as to whether you want US or you want to seek multi-national rights to attach to your application.

Filing a utility patent immediately gets you into the queue for examination, is a bit more expensive and requires more work on the part of the attorney. However, it then gives you the same 12 months you would have had to decide whether you want just US or multi-national rights. Strategic claim drafting in light of known competitors is also an strategy that adds substantial value to a patent.

Filing a PCT application gives you about 30 months from the earliest filing date of the application to decide what countries you want to file in (30 months if a PCT is filed first, 18 months if it is filed after filing a utility or provisional patent). If you only wish to file in only a few countries and if you already know the countries of interest (based on your business interest, etc.), you might be better off filing in those countries directly.

Do I want a patent or a copyright?

A patent protects subject matter that is either a machine, process, article of manufacture, or composition of matter. It must be novel and unobvious.

A copyright protects an author’s original work of authorship. This includes literary, dramatic, musical, artistic and other similar intellectual works. Copyright gives the author the exclusive right to sell, distribute, or reproduce it. Patent provides the inventor a right to prevent others from practicing the claimed subject matter.

Do I want a utility patent or a design patent?

A utility patent protects a method or system that is useful, whereas a design patent protects something that is strictly ornamental. For instance, one could design a handle on a suitcase of a particular shape and protect that with a design patent, but not if the handle was such that the shape had utility (i.e., made it less likely to slip).

My Question Is Not Listed Here

Contact Madnawat Law Office for your trademark or patent related questions. There is no charge for initial counseling. Please note that sending an email or calling the firm or receiving a response or a phone call from the firm does not automatically create a attorney-client relationship.