Primer on the Patent Process
By Matthew S. Bethards
The importance of protecting the intellectual property of innovative companies has increasingly gained traction over the last couple of decades. Intellectual property (namely patents, trademarks, copyrights, and trade secrets) represents a critical asset that gives a company the competitive edge it needs to succeed. Intellectual property is needed to protect a business name, its creations and innovative ideas. Acquiring and enforcing a patent is among the most powerful ways to protect your company’s innovations from piracy.
Patents, however, are not commodities. They are technical, highly specialized assets that can give tremendous market power to those who obtain and enforce them effectively. The value of a patent can be measured by its ability to exclude others from making, using, or selling your innovation. A patent’s value depends on two basic criteria: the nature of the invention patented, and the quality of patent drafting and “prosecution” or patent application process.
Patents represent a formidable weapon in the marketplace if they are prepared effectively. Companies often point to their patent portfolio as evidence of their preeminence in a particular industry. However, inventors and companies need to be aware that the patent application and process have many strict deadlines and formalities and can be complicated.
There are several parts to a patent application, the most crucial of which are the patent claims. The claims are the legal description of the invention, much like a property description of the “metes and bounds” of what an inventor claims to be his invention. There are a number of statutory requirements that make claim drafting an incredibly complex task that requires the skill of highly competent patent counsel.
Another part of the patent application is the specification which describes how to best make and/or use the invention. For complicated technologies it is especially important to have a patent attorney that is knowledgeable in the relevant technical field to quickly understand and clearly convey the technical aspects of the invention.
Once the patent application has been prepared, it is filed in the Patent and Trademark Office (PTO). After an initial review to be sure the application is complete and all fees are paid, the application is assigned to an examiner. Examiners are scientists or engineers knowledgeable in the field of the invention. Although the application may be assigned to an examiner relatively quickly, it typically takes one to three years for an application to be reviewed.
When reviewing an application, an examiner will pay special attention to the scope of the claims. He will conduct a “prior art” search of inventions already known and compare them to the claims in the patent application. The examiner then prepares a letter (an “Office Action”) to the applicant’s attorney explaining the examiner’s position relative to the application. It is very common for the examiner to reject some or all of the claims because the claims, as broadly interpreted, describe something already known to the public.
Just because a patent application is initially rejected does not mean that the invention is not patentable. The rejection can be overcome by amending the claims, or by pointing out errors in the examiner’s analysis. Amending the claims and responding to an Office Action can be just as complex as preparing the initial patent application. A position taken by an applicant during patent prosecution can be used against him when trying to enforce the issued patent.
The examiner reviews the response and will allow the claims if he agrees with the changes and arguments made and a patent is granted. If the examiner does not agree with the applicant’s position he will again reject one or more claims through a second Office Action. Often this Office Action will be a “final action.” Despite the name, an applicant may still be able to reach agreement with the examiner by submitting another response and/or interview with the examiner. If agreement is reached, the claims will be allowed and a patent will issue.
If agreement is not reached, the applicant may appeal the examiner’s decision to a PTO administrative board, or pay a fee to continue the dialogue with the examiner.
After the patent claims are finally allowed, the patent will issue after the payment of another fee. The applicant is given the ability to enforce the legal right to exclude others from practicing the invention only when the patent issues. The patent term typically lasts up to 20 years from the date an application was first filed. However, for the patent to remain in force during the patent term, maintenance fees must be paid .
The above synopsis is intended to touch on the more basic aspects of the patent process. Advice from competent patent counsel is recommended. Nevertheless, the rights conferred by a patent typically justify the time and expense involved in applying for one.
(The above article first appeared in the February 2006 issue of Connect magazine and is reprinted with permission).
Matt Bethards is a patent attorney with the business law firm of Stoel Rives LLP. With a background in chemistry, Matt advises companies on patent preparation and prosecution strategies and other intellectual property matters. He can be reached at (801) 578-6992.
This column is not to be considered legal advice or a legal opinion on specific facts or circumstances. The contents are intended for informational purposes only. If you need legal advice or a legal opinion, please consult with your attorney.