Patents
What is a Patent?
A patent is a set of exclusive rights granted to an inventor for a limited period of time for the invention or discovery of a new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof.
In the US, there are two types of patents, (1) a utility patent, which protects the way an article is used and works (35 U.S.C. 101), and (2) a design patent which protects the way an article looks (35 U.S.C. 171).
How do I establish my Patent right in a particular invention?
You can establish rights based on the filing of an application for patent with the United States Patent and Trademark Office (USPTO). The filing of a patent application establishes a “date certain” as to your invention. There are two (2) types of applications which can be filed (1) a provisional application and (2) a non provisional application.
The provisional patent application provides temporary protection in that it establishes the filing date but does not start a review of the application for patentability by the USPTO. The provisional patent provides the inventor with a “grace period” of one (1) year from the filing date in which to market and/or develop an invention (while using the term “patent pending”) before it is necessary to invest in a non-provisional patent. The provisional application provides the inventor with a less costly way to explore the potential of the invention while protecting the proprietary right of the inventor. It is important to note that while a provisional application does provide protection in the form of guaranteeing the filing date, to obtain the full effect of a registered US patent, it is necessary to file a non provisional application prior to the automatic expiration of the provisional patent one year from the date of the provisional filing.
A non provisional application is what is traditionally thought of as the patent. A non provisional application can be either a utility or design type, and it establishes the filing date as well as begins the USPTO’S patent review process. Where a provisional application was filed, a non provisional application may be able to claim a priority date to the earlier filed provisional application giving the inventor the earlier filing date.
What does a patent do and how can it protect my invention?
A patent provides a limited monopoly to the holder, which confers certain rights to prevent others from making or practicing what is covered in the patent. The burden of enforcing patent rights falls upon the patent holder. To determine whether a potential infringement has occurred it is necessary to determine whether a party or person without authorization has made, used, sold or offered for sell, or imported an infringing invention or its equivalent. Patents are territorial, which means infringement can only occur in a territory in which the patent is in force. For instance, a US Patent holder may only enforce his rights against an infringer in the US. A US patent holder may extend his protection to additional territories by the filing of additional applications in those territories. The scope of protection may vary from territory to territory, because the patent application will be examined by the each territory’s patent office.
The scope of the patented invention or the extent of protection afforded to a patent holder is defined by the claims of the granted patent. In other words, the claims inform the public of what is not allowed without the permission of the patent holder.
In the US, no infringement action may be started until the patent is issued. However, pre-grant protection is available under 35 U.S.C.154(d), which allows a patent owner to obtain reasonable royalty damages for certain infringing activities that occurred before patent’s date of issuance. As a result, it is advisable to register your patent with the USPTO as well as any other territories in which you would like protection as early as possible.
How can California Coast Legal Group help with a Patent?
- Establish guidelines concerning the documentation of inventions and policies to help protect and preserve patent rights;
- Formalize recording procedures and design inventor notebooks for documenting information concerning inventions;
- Establish new invention submission guidelines and counsel on establishing guidelines and policies for accepting outside invention submissions; and
- Conduct intellectual property portfolio audits to determine missed opportunities and clarify decision making on expansion opportunities.
Additionally, we work directly with domestic and international patent professionals to provide cost-effective assistance to you in all territories to: - File Provisional patent applications;
- File Non Provisional patent applications;
-Including Utility, and
-Design patents - Conduct patent clearance searches;
- Draft patent opinion letters; and
- Conduct due diligence audits on claims of patent infringement.
This is only a sample of the patent services we offer. If you do not see your specific concern listed please contact us directly to discuss.
This information is intended to provide you with general information concerning patents and is not intended as legal advice. If you are interested in having us assist you in any patent matter, please contact us at legal@californiacoastlegal.com.