Patent Prosecution & Protection

What is a Patent? 

Patents are appropriate for useful things or methods of doing something.  An award of a patent, by the United States Patent and Trademark Office, entitles the user to exclude others from making, using or selling the patented invention.

There are three main kinds of patents: utility, plant, and design.

Utility Patents 

Utility Patents cover inventions, such as, a machine, an article of manufacture, a method of doing something, a chemical or DNA sequence or the method of its use, products of genetic engineering, or improvements to any of these things.

Plant Patents 

Plant Patents may be granted to anyone who invents or discovers, and asexually reproduces, a new variety of certain kinds of plants. Other kinds of plants, especially those altered by genetic engineering, may be protectable under utility patents.

Design Patents 

Design Patents cover the ornamental appearance of a useful device but not its function.

Ideas vs. Inventions

A patent is an invention, not an idea.  An idea, by definition, is a concept or mental impression. An invention, by definition, is something fabricated or made up. Thus an invention is something more detailed than just an idea.  One of the requirements for obtaining a patent is to disclose the invention in sufficient detail so that one skilled in the art to which the patent is addressed can carry out the claimed invention. Therefore, an idea is insufficient to provide the disclosure required to satisfy the requirement for obtaining a patent.

Filing for a Patent

A utility patent, once issued by the USPTO, grants the inventor the exclusive right to prevent others from making, using, or selling his invention for a period of twenty (20) years from the date the patent was filed. Obtaining the grant requires that the inventor, through the patent attorney, sufficiently disclose and claim the invention.

When filing a non-provisional utility application, the patent attorney must take the invention disclosure and all references provided by the inventor and draft the patent specification and claims. The specification contains the technical disclosure necessary to support the claims. The claims are the legal language defining the “metes and bounds” of the invention.

A very detailed disclosure and documentation provided by the inventor to the patent attorney will greatly assist in drafting the specification and claims. After an initial consultation, the inventor should complete the disclosure form with as much detail as possible, including any sketches and descriptions of alternatives that the invention might cover.  This initial disclosure will provide the information required to determine legal fees relative to preparation.

After filing the application and information disclosure statement, a first office action from the patent office is likely to occur within nine (9) to eighteen (18) months, usually rejecting the application. The patent attorney and inventor will confer at this time to determine next steps.

 Special Notes on Computer Software   

This is an area of the law which has evolved and is evolving. Some references may state that software is not patentable. This is only partly correct.

Inventions which are software based are clearly patentable, if they meet the other requirements for patentability. The distinction is not a clear one, but if the program does something in the real world, you can patent how it does what it does.

With regard to foreign patents many countries do not allow or severely limit patents on computer implemented methods. If you were interested in patent protection outside the USA, you would need to consider this issue country-by-country.

Methods of operating a computer may or may not be patentable. Patent applications on pure software are often rejected as being mathematical algorithms or purely mental steps.  But, methods of data compression and transmission have been patented, and the rules have become more friendly toward computer-implemented methods as the technology has become more mature.  This protection is more akin to method patents than product patents.  It should be noted that one does not patent the program code (a copyright matter), but rather the steps the program performs.

Copyright is still the right way to protect program code, as such, since it protects against copying, without reference to the novelty or non-obviousness of the code.

Often the key parts of the program code are maintained as trade secrets. You will want to have agreements with users and, especially with anyone who has access to source code protecting your trade secret status. Also, there are ways to avoid providing source code for those parts of the code which you consider secret when you register your copyright.

Special Notes on Business Methods 

With regard to Business Methods, in recent years, the doing something in the real world has extended into what would previously have been considered an un-patentable business method. Computer-implemented, or not, methods of doing business, were considered patentable since the 1995 State Street Bank case. In 2008, the Bilski case set out an exclusive machine or transformation test, which effectively eliminated business method patents which did not use a particular machine or transform articles.  However, the Supreme Court held on June 28, 2010, in the Bilski appeal decision, that test was not exclusive. So, at least until the courts rule otherwise, Business Methods appear to be patentable subject matter, even if they’re not tied to a specific machine and don’t transform articles.

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Janelle Christine SnyderReviewsout of 4 reviews

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