If you have invented a new machine, chemical composition, industrial process, or manufactured article, you may be able to acquire a patent to protect it. If you believe that your invention has value in the marketplace or is otherwise important, a patent may be a worthwhile investment to protect the economic value of your invention. A patent provides exclusive intellectual property rights to make, use, sell, or offer to sell the patented invention for a term of 20 years. Contact our Tacoma office for a consultation with experienced patent lawyers that can assist you with pursuing a patent for your invention.
Patent applications are submitted to the US Patent and Trademark Office (USPTO) and undergo a rigorous and complicated examination process. The USPTO and patent law mandate that utility patent applications include drawings, written specifications, and claims that all adhere to stringent clarity and thoroughness standards. Because of the complex nature of the patent application process, the USPTO advises inventors to engage a registered patent lawyer to assist with drafting, filing, and prosecuting the application. Our Tacoma patent lawyers have decades of experience in the patent application and prosecution process. Contact Sierra IP Law's Tacoma Office to consult with one of our patent attorneys to discuss the application process and your options for pursuing patents and/or other appropriate intellectual property rights.
The first step in determining whether to pursue a patent is confirming that a patent is the form of intellectual property protection that you need. Some types of innovations are not patent subject matter, such as a original written or visual materials (creative writings, graphical designs, photographs, etc.), which can be protected by copyright registration, and logos and brand names (trademarks), which may be protected by trademark registration with the trademark office at the USPTO. If a patent is the right form of intellectual property, you must determine what type of patent is needed. There are different types of patent applications that cover different types of innovations:
A skilled patent attorney can guide you in determining which type of patent protection is needed. If a patent application is appropriate, it is critical to perform a patentability search to make sure your invention novel and non-obvious in view of related information that was made public before your invention ("prior art"). It is highly recommended you consult a patent attorney to conduct the patent search. The patent laws related to patentability are complex and a proper search requires a patent attorney with experience and skill.
Before filing a patent application, it is highly recommended that an inventor have a patent attorney to perform a patent search and analysis to determine whether their invention is novel and is non-obvious in view of previously disclosed or patented technologies. A patentability search is a comprehensive investigation conducted to identify any existing patents or public disclosures that are similar to the subject invention. This search delves into various databases, including US and foreign patent office databases (e.g., the European Patent Office (EPO), and World Intellectual Property Organization (WIPO)), scientific journals, trade publications, and other public resources to find prior art, which can be defined as any evidence that an invention or a similar technology has been publicly disclosed prior to the invention. Patent law does not allow for the issuance of a patent if the invention was previously disclosed or it is obvious in view of previously disclosed technology.
A layperson may believe that they are able to reasonably determine whether an invention is novel (i.e., never been done before) with enough time, effort, and thoroughness. However, there are nuances to the determination of novelty under the law. For example, a lack of novelty can only result from a single source (e.g., a single patent, a single journal article, a single YouTube video, etc.) that discloses each and every aspect of a claimed invention either expressly or inherently.
To illustrate inherency, a previously issued patent may disclose a chemical technology that includes ingredients A, B, and C. Your invention might include chemical constituents A, B, C, and D, and you may believe that you invention is novel on the basis that it includes an additional constituent D. Nonetheless, the issued patent may disclose a method of combining A, B, and C in such a way that constituent D is produced in the mixture of A, B, and C (and possibly constituents other than D). For example, the patent may disclose heating the mixture of A, B, and C with other constituents at a particular temperature that results in chemical reactions that produce D in situ. Thus, even though the prior patent does not disclose D expressly, it discloses it inherently and your invention that includes A, B, C, and D is anticipated (i.e., not novel). Thus, even though the novelty requirement seems to be straight forward, there are many nuances in the patent law relating to novelty. Novelty analysis requires the knowledge of an experienced patent attorney.
Obviousness is a highly complicated determination that include federal statutes informed by hundreds of federal court opinions that define the edges of patent law. Patent attorneys must study the relevant patent statutes and the court decisions that define these statutes in order to have an adequate understanding of obviousness. In conducting the analysis, the patent attorney must first determine the level of skill possessed by a person having ordinary skill in the art. This determination is highly fact dependent and varies between different areas of technology. Without sufficient knowledge of patent law, this threshold determination cannot be made. In order to make a proper obviousness analysis of the invention, a patent attorney must be involved in the patentability analysis.
Subsequently, the patent attorney must review the patents, documents, and other relevant items found in the search and determine whether the search results collectively disclose all of the elements of your invention, and, if so, whether it would be obvious to combine those elements to arrive at the invention you are seeking to patent. The determination of whether it is proper combine elements from various prior patents and disclosures is a highly complicated determination with many facets of the law that must be considered. The general rules of obviousness are based on the US Supreme Court case, Graham v. John Deere Co. The case provides a general outline of the legal requirements for a finding of obviousness, which include the scope and content of the patents and documents found in the search, differences between your invention and the search results, the level of ordinary skill, and secondary considerations of non-obviousness that include practical considerations that indicate that your technology is innovative, such as your technology solves a problem that the items found in the search don't solve or the invention has demonstrated substantial commercial success as a product. These are the basic considerations of the law of obviousness. However, the law of obviousness has many more considerations beyond the basic legal structure provided by the Graham case.
Consequently, it is highly recommended that inventors engage a patent attorney to conduct a thorough patentability search and analysis. Foregoing the assistance of a patent attorney can be far more costly than the patent attorneys fees that you would pay for an investigation into the likelihood that you will be granted a patent for your technology.
Filing and prosecuting patent applications is time-consuming and expensive. By conducting a patentability search, a patent attorney can gauge the likelihood that the inventor will be issued a patent by the patent office. If the search reveals a high similarity to existing patents and technology, inventors can decide not to proceed with the patent application, saving them significant resources. Also, the search might reveal aspects of the inventor's technology that are already patented, but also highlight areas that are innovative and distinctive from prior technologies. A skilled patent attorney can aid the inventor in preparing a patent application that focuses on the unique aspects of their technology to ensure it is distinguishable from the prior art. Thus, the search findings can be used to strengthen the patent application and the patent protection provided by an issuing patent. By tailoring the patent application to emphasize how the invention differs from existing patents and disclosures found in the search, the patent application can make a compelling case for the novelty and non-obviousness of the invention to the patent office.
A patentability search can also aid in determining whether there is a risk of patent infringement. Patent infringement can result in litigation, patent attorneys fees, financial penalties, and an injunction preventing you from making, using, selling your technology. As part of the patent due diligence prior to filing a patent application, the prior art should be analyzed by an experienced patent attorney to identify potential infringement issues.
For businesses and entrepreneurs, a patentability search provides valuable insights into the competitive landscape. Experienced patent attorneys can aid the client in understanding what has already been patented, and assist the client in making strategic decisions about product development, research directions, and how to claim the technology in a patent.
A patentability search should be the first step in the patent process. It not only helps inventors and businesses understand the patentability of their invention but also guides them in making informed decisions about patent applications and the probability that a patent will be granted. In a world where innovation drives progress, ensuring technology is novel and non-obvious through a thorough patentability search is paramount. The skilled patent lawyers at Sierra IP Law can evaluate your invention and perform a thorough patent search and analysis.
Once confident in the invention's patentability, a patent application can be drafted for submission to the patent office. This document is comprehensive, detailing the invention in a written specification, providing at least one written claim, drawings (if necessary to illustrate the technology), and an abstract. These documents not only need to be detailed and technical, but they must also be drafted so as to avoid many pitfalls created by the complexities of patent law. There are many esoteric "rules" of patent drafting that must be observed by the drafting attorney in order to avoid issues during the patent examination process and in the enforcement of the issued patent. It is imperative to engage an experienced patent attorney to draft any patent applications that you may wish to pursue. While individuals or small businesses may wish to minimize costs by drafting and filing applications without assistance, it is more likely than not that such pro se patent applications will not result in issued patents. Moreover, even if a patent issues, it would likely have many flaws, fail to observe the finer points of patent law, and be difficult to enforce against an infringing party.
After it is drafted, the application is filed with the relevant patent office, such as the USPTO. Patent applications should be filed at the earliest possible time in order to secure the patent applicant's best chance of success. The America Invents Act (AIA) that came into effect in 2013 and changed US patent law such that the US now has a "first-to-file" patent system. Under the AIA, priority of rights in an invention is no longer based on who invented something first, but rather who won the race to the patent office. Thus, you should consult with a patent lawyer at the earliest possible time, if you believe that you have a patentable invention.
The time required to prepare patent applications is in the range of a couple of weeks to a couple months, depending on the complexity of the technology. Our patent attorneys and patent professionals are efficient and prompt, but it does take significant time to prepare a proper application. The content of the application must be of required thoroughness and quality, particularly the patent claims. The claims are what define the rights of the patent applicant, and thus must be specific enough to properly identify the invention while not being so specific that it allows competitors to easily design around the claims to avoid infringement. Proper claim drafting is a delicate balance that requires the skill of an experienced patent attorney.
Once the application is drafted and the applicant reviews and signs the proper patent forms, the application can be submitted to the patent office. Upon receiving the application, the patent office conducts a preliminary review to ensure all formal requirements are met. This includes checking for the correct filing fee, appropriate document formatting, and all of the proper patent forms. If there are discrepancies, the applicant is notified and given a chance to rectify them. Many pro se applicants get tripped up by the preliminary examination process. The patent office rules for formalities alone are enough to confound an applicant that does not have the assistance of a patent attorney that knows how to prosecute patent applications.
After the application gets through preliminary examination, the application is transferred to an appropriate patent art unit within the patent office and subsequently assigned to a patent examiner. The wait between filing and the beginning of examination by the patent examiner is usually at least six months and can be over a year, or even longer in extreme cases. However, it should be understood that the invention is patent pending as soon as it is submitted to the USPTO. All products covered by the application can be marked as "patent pending", along with any literature, documentation, and promotion of the invention.
The patent examiner will perform a search for similar patent filings covering similar inventions and analyze the patent claims to determine whether claims are patentable in the examiner's opinion. The examiner will then issue an office action that provides the examiner's initial opinion on the patentability of the invention, identifying any claims that are considered patentable, identifying which claims are rejected, and the bases for the rejection(s) of any claims. The issues raised in the patent office action can be under various patent statutes and can relate to formalities, patent subject matter requirements, and rejections based on prior patents and patent filings disclosing similar inventions. It is unlikely that the patent applicant can successfully respond to these rejections without the assistance of a patent attorney with the skill to prosecute patent applications effectively.
The response to the office action may include amendments to the pending claims in order to address any formality issues and to distinguish the claims from the cited patents, patent filings, and related public disclosures of similar technology and inventions. In order to advance the patent application, a response must be filed that addresses each and every issue raised by the patent examiner by claim amendments and/or lawyer argument.
Once a response is filed, the patent examiner will review the amendments and arguments and re-assess the patentability of the claimed invention in view of the filed response. The patent examiner may then allow all or some of the claims or issue rejections in final office action. If all of the claims are allowed, the examiner may issue a notice of allowance indicating that a patent can be issued for the invention as claimed. If further rejections are issued, the patent attorney will analyze the newly issued rejections and determine a strategy for responding to the final office action. The strategy may include one or more of amending the patent claims to conform to allowable subject matter identified by the patent examiner, submitting further arguments, filing a request for continued examination (requires a fee) to continue the process with the examiner, or file an patent appeal, which removes the application from prosecution and moves it to Patent Trial and Appeal Board (PTAB) for the USPTO.
The PTAB consists of administrative patent judges that review the application and the examination record and consider the examiner's position and the applicant's appeal arguments. The patent appeal essentially removes the patentability determination from the examiner and puts the appealed issues before the PTAB with the examiner and patent applicant presenting their opposing positions as adversaries. The appeal process is an administrative legal proceeding. While most applications do not go to appeal, the possibility of the need for an appeal is a further reason that an applicant should have the support and assistance of a skilled patent attorney that understands how to set up an application for appeal and argue a patent case before the PTAB.
Patent attorneys need years of experience to develop the skill to properly handle patent applications from beginning to end, which may include an appeal before the PTAB. There should be an understanding of the distinctions between the invention and the prior patents and publicly disclosed technology, a plan for the emphasizing those distinctions in the patent claims and legal arguments, and the skill to carry the patent application through the entire examination process. The patent attorneys and other patent professionals at Sierra IP Law have the expertise and experience in filing applications, handing the examination process, and appeals. Contact our Tacoma office to discuss your invention and the patent process with one of our patent attorneys.
The exclusive rights provided by a patent allows the patentee to protect the economic value of the invention. For the term of the patent (20 years from the patent filing date), the applicant has the exclusive right to make, use, sell, or offer the invention for sale. If anyone else tries to copy the patented invention and sell it without patentee's permission, they become liable for patent infringement of the patent. The patent provides the power to stop others from copying, selling, or using claimed invention. A patent protects the inventor's hard work and creativity from being used by others without authorization.
Patent infringement occurs when someone copies a patented invention, whether the invention is a machine, manufactured item, composition of matter, or a method. If the features of the method or product of the infringing party are equivalent or identical "elements" claimed in the patent, there are grounds for asserting patent infringement. No intent is required on the part of the infringer. If you have a patented product and you have marked your product or the packaging, literature, and/or advertisements for your product with the patent number, you have provided constructive notice to the world. With constructive notice, the infringer may not be aware that they are infringing your patent, but they are still liable.
A cease and desist letter is an initial step that informs the other party that they have infringed your patent and you intend to take legal action unless they stop producing, selling, and providing the infringing product. It is often the first step in resolving your dispute with the infringer. In many circumstances, the cease and desist letter and some negotiation is sufficient to resolve the patent dispute. Many infringing parties are unaware that they are infringing and wish to avoid the unlawful act of infringement and a lawsuit. They may cease the infringement or seek to negotiate a patent license. A patent license would give the other party permission to use your patented intellectual property in exchange for a fee that they pay to you for the privilege. The patent lawyers at Sierra IP Law's Tacoma office are highly experienced in handling patent infringement disputes and patent licenses.
If the other party persists in infringing your patent, the next step may be to file a lawsuit against the infringing party. Patent infringement is a civil matter, not a criminal one, so the process involves filing a civil complaint in federal court asserting patent infringement and possibly other related legal claims and seeking an injunction ordering the defendant to stop the infringing acts and damages resulting from the patent infringement and other wrongs. An injunction is a court order to cease an activity. The damages are a monetary compensation to you for the damage caused to the patent owner.
Patent infringement suits are highly complicated processes. The patent attorneys at Sierra IP Law are skilled and experienced in evaluating patent infringements and determining the risk and rewards of pursuing a patent infringement lawsuit. Contact our Tacoma office for a consultation with one of our patent attorneys.
"Partnering with Mark Miller at Sierra IP Law is one of the smartest choices I could have made in the world of bringing a new invention to market. He is extremely responsive, knowledgeable, and professional. I could never have conceived of the areas he has advised me on and covered in attempting to write a patent on my own. He and his team have not only insured that my Intellectual Property Rights are well protected, but they have advised and recommended additional protections that I could not have thought of otherwise. I highly recommend Sierra IP Law to anyone looking for a strong and trustworthy legal partner."
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