3 Strategies for Utility Patent Protection

 

1. File a Provisional Patent Application

The provisional application is not examined by the Patent Office and functions as a placeholder for a subsequently filed nonprovisional patent application.

File “Quick” disclosure of invention for:

Extended “patent pending” period

Early filing date

  • Advantages
    • Less expensive
    • Claims are not required
    • Full costs are only deferred; must file non-provisional patent application within one year to claim priority to provisional filing date
  • Disadvantages
    • Risk of inadequate disclosure of one or more features of invention
    • Must still meet written description and enablement equirements
    • Patent Agent spends less time
  • Recommendation
    • File provisional for early filing date but do NOT wait to prepare and file non-provisional application

2. File a Nonprovisional Patent Application

The nonprovisional patent application (a regular application or a utility patent application) is examined by the Patent Office and may ultimately issue as a patent.

  • Specification*
    • Should enable One of Ordinary Skill in the Art to Make and Use the Claimed Invention Without Undue Experimentation
    • Should be well-written and well-organized
    • Ideally, should be readable by an examiner, a judge, jury or licensee
  • Claims
    • Define the metes and bounds of the patentee’s right to exclude
    • Define your legal rights
    • The broader and clearer your claims are, the broader and clearer your rights are
    • Must be fully supported (i.e., described and enabled) by the specification
    • To infringe, an accused infringer must meet each and every limitation of at least one claim of the patent, either literally or under the Doctrine of Equivalents (DOE)
  • Obtain patents that are clearly worded and as broad and strong as the nature of the inventions and the prior art permit
  • Well-written specification and claims should reduce prosecution costs
  • You need an experienced Patent Agent who is familiar with all the ways a patent can be attacked by infringers alleging the patent is invalid or unenforceable

3. Seek International Patent Protection

Along with domestic filings, patent protection may be simultaneously sought in foreign countries. PCT** patent applications are typically filed when seeking protection in multiple jurisdictions.  A PCT patent application must be filed within 12 months of the first filing of a national patent application (such as a U.S. provisional or non-provisional patent application). The receiving office (RO) performs an international patent search and prepares a preliminary report on patentability. The international search report can help the applicant decide whether it would be worthwhile seeking national protection, and if so, in how many countries, as fees and other expenses, including translation costs, must be paid to enter the national phase in each country. The PCT application grants at least a 30-month window with which to file a national patent application in countries where protection is desired.

*Specification includes: Title, Abstract, Background of the Invention, Summary of the Invention, Detailed Description of Embodiments, and Drawings

**The Patent Cooperation Treaty (PCT) is an international patent law treaty, concluded in 1970. It provides a unified procedure for filing patent applications to protect inventions in each of its contracting states. A patent application filed under the PCT is called an international application, or PCT application.