ContactProvisional Patent Rights
Posted Tuesday, October 07, 2008 by Jim Ruttler.
Not to be confused with provisional patent applications, provisional patent rights permit a patent holder to recover a reasonable royalty for the period of time while the application was pending. This is important because patent applications can take a couple of years to issue and they are not enforceable until they do issue. These provisional patent rights therefore allow the patent holder to be compensated for ‘infringement’ that occurred before the patent issued.
However, provisional patent rights are very narrow. They require that the application be published, that the alleged infringer have actual knowledge of the published application, and that the claims from the published application be substantially identical to the claims of the issued patent. The requirement for substantially identical claims is very difficult to meet because claims are often amended during prosecution to obtain allowance. Furthermore, even if all three requirements are met, the award of damages is limited to that of a reasonable royalty, which is often much less than lost profits.
In short, given the limited availability of provisional patent rights, it may be more desirable to file a petition to accelerate examination of the application. This will result in an issued and enforceable patent more quickly.
Signals Alone Not Patentable
Posted Tuesday, October 07, 2008 by Jim Ruttler.
Yesterday, the United States Supreme Court refused to review, and therefore allowed to stand as law, a lower court decision that data signals themselves are not patentable subject matter. While this means that standalone claims directed towards computer signals are not patentable, it would still be possible to claim a computing device operable to output or receive a signal because the latter includes patentable subject matter: a computing device. Accordingly, while inventors should be aware of this new decision, it is still possible through creative claiming to effectively patent the same subject matter.
Provisional Application Guidelines
Posted Wednesday, August 20, 2008 by Jim Ruttler.
A provisional application is a patent application that can be filed for utility type inventions that gives the applicant up to a year to file a non-provisional application and any foreign or international patent applications. The benefits of a provisional application are numerous including reduced formal requirements, lower filing fees, and ease of updating with improvements. While the provisional application is never examined, any non-provisional application based on the provisional application has its novelty determined as of the date that the provisional application was filed. In short, one can quickly file a provisional application to secure an early filing date for novelty determinations and then safely make disclosures of the invention before making the investment in the more formal non-provisional application.
PROVISIONAL REQUIREMENTS
Provisional applications include two main requirements. First, the application must disclose the best mode of the invention. This is the best way of practicing the invention that is known to the inventor at the time that the application is filed. Second, the application must enable the invention. This means that one skilled in the particular area of the invention could reproduce the invention upon reviewing the application without too much experimentation. So long as these two requirements are met, the subject matter disclosed in the provisional application can be relied up for novelty determinations later during examination of any non-provisional application based thereon.
PROVISIONAL RECOMMENDATIONS
While not requirements, the following comprise a non-exhaustive list of recommended practices for preparing disclosure materials for a provisional application. To begin, include as many visual aids that are helpful in fully understanding the invention. For mechanical inventions, the visual aids may include various perspective views, exploded views, cross-sectional views, plan views, and elevational views. For process or software related inventions, the visual aids may include flow diagrams, screen shots, sample programming code, and data tables. The old adage that a picture paints a thousand words could not be more accurate with respect to patent application drawings. These visual aids help ensure a complete disclosure given that words alone are often inadequate. Next, supplement these visual aids with a description that explains and embellishes upon the same. The description should include details of the main embodiment of the invention and as many alternative embodiments that can be conceived. Drafting in this manner ensures that the best mode requirement is satisfied and also ensures that the there is ample subject matter for drafting broad claims during examination. Lastly, the description should be neutrally written without the use of limiting language such as best, preferred, only, most desirable, and clearly. Such limiting language provides absolutely no benefit for patentability and can actually result in more narrowly interpreted claims.
TIMING OF FILING
The most preferred practice is to file a provisional application for an invention immediately and before making any disclosures, offers for sale, uses, or publications of the inventive subject matter. This stems from the fact that the provisional filing serves as the presumptive invention date and because these events trigger bars to filing patent applications both in the United States and abroad. Once an application is filed, it is permissible to disclose the invention contained in the application without any harm to patent rights so long as any non-provisional or foreign applications are filed within a year.
PENDING UNPUBLISHED STATUS
Once a provisional application is filed, it is permissible to mark any products, processes, or software covered by the subject matter in the provisional application with “Patent Pending.” However, no member of the public will be able to access the patent application or its contents because provisional applications are not published until and unless a non-provisional application is filed. Note that it is possible to retain an application in an unpublished status for the entire examination period if desired.
INVENTION UPDATES
One of the benefits mentioned for provisional applications is that it is easier to file updated provisional applications having newly developed improvements contained therein. Consider the situation where a significant improvement is made to an invention after a first provisional application is filed. The procedural route for addressing this situation is to merely file another provisional application having the newly invented subject matter disclosed therein. This can be done as many times throughout the year from filing the very first provisional as necessary and all for significantly less than would be required once a non-provisional application is filed. When the non-provisional application is filed, it can include all of the disclosed subject matter from various provisional applications and can claim priority to each of the provisional applications for novelty determinations.
NON-PROVISIONAL, FOREIGN, AND INTERNATIONAL DEADLINES
Once a provisional application is filed, it is necessary to file a non-provisional and any foreign or international applications within one year. Failure to do so will result in loss of the provisional application filing date for novelty determinations and will most likely terminate the ability to obtain a patent on the invention. These applications contain significant formal requirements because they have claims that are examined for patentability by the respective patent offices.
Restriction Practice During Examination
Posted Friday, August 15, 2008 by Jim Ruttler.
Examiners have been more routinely issuing restriction requirements in an apparent effort to ease their workload and increase the fees generated by the US Patent Office. During examination, an examiner can issue a restriction requiring an applicant to select a single invention or embodiment for further prosecution on the merits. In response, the applicant must always comply with the restriction requirement and elect a single invention or embodiment for further examination. However, the applicant can do so with or without traverse. Traverse simply means taking issue with the examiner’s basis for issuing the restriction requirement. Thus, making an election without traverse means complying with the examiner’s restriction requirement without further argument and proceeding with examination on those elected claims. And, making an election with traverse means complying with the examiner’s restriction requirement but also arguing that the requirement was improper.
The decision to make the election with or without traverse is an important one because an election without traverse is binding and non-petitionable. It results in proceeding with examination on the merits of only the elected invention or embodiments. The non-elected invention or embodiments are not examined unless a further divisional non-provisional application is filed. This results in a further delay of examination and additional expenses pertaining to examination and maintenance fees of the separate application. An election with traverse asks that the examiner reconsider his or her position regarding the restriction requirement. If the examiner continues with the restriction requirement a petition can be filed asking for review of the examiner’s position. Note, however, that a traverse can be a waste of resources and a delay of the inevitable and, with regards to embodiment restrictions, can result in detrimental and irreversible admissions against interest.
In short, responses to restriction requirements should be considered carefully as they have a direct impact on examined subject matter, finances, and issuance dates.
International Applications
Posted Tuesday, July 22, 2008 by Jim Ruttler.
Unfortunately, patents must be obtained in every foreign country where protection is desired. Thus, a United States patent will only protect against infringement in the United States; although, it does also protect against importation of infringing articles into the United States.
Because almost all foreign countries are based on a first-to-file system and prevent filing after any public disclosure, it would seem necessary to simultaneously file a patent application in every foreign country where protection was desired before any disclosures were made. However, such simultaneous filing would be extremely difficult logistically and would involve significant expenses at a time when the marketability of an invention is likely to be questionable at best.
Fortunately, it is possible to achieve simultaneous filing without actually doing so by filing an international PCT application within one year of the earliest filed United States patent application. Thus, if a provisional application were filed on August 1, 2007, it would be necessary to file an international PCT application by August 1, 2008. It would then be necessary to file one or more foreign patent applications with specific foreign patent offices within thirty months of the earliest filed United States patent application, in this case 30 months from August 1, 2007 or February 1, 2010. By adhering to this procedure, the foreign patent applications are then treated as if they were filed on August 1, 2007.
Accordingly, use of an international PCT application delays the time for filing patent applications in foreign countries, but makes it possible for those later filed foreign applications to be treated as if they were filed up to 30 months earlier. This time can be used to test the marketability of an invention before wastefully expending resources.
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