South Dakota Patent Attorney .us

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Frequently Asked Questions

Frequently Asked Questions about Patents

1. What is the purpose of a patent?

A patent is a grant by the United States government that gives an inventor the right to exclude all others from making, using, selling, offering to sell, or importing the invention in the United States. The patent protection offered in the United States is provided by utility patents, design patents, and plant patents. The functional aspects of an invention are covered by a utility patent, while a design patent protects the non-functional, ornamental aspects of an invention.
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2. What is a plant patent?

Plant patents are directed towards asexually reproduced plants, such as plants that are reproduced by grafting, budding, cutting, layering, or division, but not those reproduced by means of seeds. To qualify for a plant patent, the plant must satisfy the requirements of novelty, distinctiveness, and non-obviousness. Having obtained a plant patent, the patentee can control the exclusive right to reproduce the plant.
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3. What is a design patent?

Design patents cover novel, ornamental, and non-obvious designs for articles of manufacture. The design must be novel, ornamental, and non-obvious. A design patent only covers the ornamental aspects of the product and will not cover the useful features of the design, which need to be protected by a utility patent.
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4. What is a utility patent?

Utility patents cover the functional features of an invention. To qualify for a patent, an invention must be a new and useful process, machine, article of manufacture, composition of matter, or a new and useful improvement to one of these items.
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5. How do I get a patent?

The process for obtaining a patent begins with a patent application filed in the United States Patent and Trademark Office. To obtain a patent, the invention must satisfy the requirements above, and must have also been non-obvious to a person skilled in the art at the time that the invention was conceived. The invention must not have been publicly used, described in a printed publication, or offered for sale more than one year prior to the date of filing the application.
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6. What is involved in prosecution of the application?

The next step in the patent process is called prosecution. After an application is submitted to the USPTO, the government begins its review of the application and whether it satisfies patent requirements. Once a patent application has been filed, it is assigned to an Examiner, who reviews the application, performs a search of the prior art associated with the invention, and compares the submitted application with the results of the search. The Examiner will generally review the patent application for three main determinations: whether the claimed invention is new, whether the claimed invention is useful, and whether the claimed invention is non-obvious.
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7. How much does the prosecution of the application cost?

As a normal part of the examination process, most patent applications are initially rejected in whole or in part by the Examiner via a document called an Office Action. These rejections require the attorney to formally respond to the Office Action by amending the application and/or submitting arguments and evidence to overcome the rejection. Because each response to an Office Action is different, the cost of responding may vary depending on the complexity of the invention and the arguments in the Office Action
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8. What does 'new and non-obvious' mean?

An invention must be new in order to be patentable. Therefore, the inventor must not be claiming a device that has already been in the public domain. Due to this novelty requirement, inventor cannot offer the invention for sale, sell the invention, publish the invention, or publicly use the invention (or allow others to do these things) for more than one year before filing a patent application. These events create what is known as a "statutory bar" to patentability, as a consequence of which the inventor may be denied a patent.

While the United States allows the inventor to sell the invention for one year, most foreign countries require absolute novelty for an invention to be considered patentable. Therefore, if you plan on pursuing international rights regarding your invention, you must have a patent application on file before you do anything that would expose the invention to the public.

Even an invention that is novel will not be considered patentable if the invention was obvious to a person of ordinary skill in the art. Obviousness is determined by comparing the state of the art for a particular field to the invention from the position of a person having ordinary skill in this art field. The state of the art can be determined by many different methods, but it is usually determined by reviewing the various patents issued on similar inventions (prior art) and combining these references to determine if the invention is non-obvious.
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9. What happens after the Examiner's review of the application?

Once the Examiner has reviewed the patent application and considered the prior art, the Examiner will either reject the patent application in an Office Action or issue a Notice of Allowability. Usually, a patent application will have at least one Office Action, and most applications will go through at least two Office Actions. The applicant must submit a response to the Office Action in which the applicant responds to every rejection or objection from the Examiner.

After reviewing the applicant’s Responses, the Examiner may make a Final Rejection or issue a Notice of Allowability. A Final Rejection means that the Examiner considers the invention unpatentable, and will no longer examine the application. The 'unpatentable' decision can be reviewed by the Board of Patent Appeals and Interferences, and a negative opinion from the BPAI can be reviewed in a court of law. However, this type of review can be very expensive to pursue.  Once the Examiner considers the application to be in a condition for allowance, the Examiner will issue a Notice of Allowability. The patent is then ready for issuance and the applicant must forward the necessary issuance fee.
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10. What does 'patent pending' mean?

Once you have filed a patent application on your invention, you may place the mark "Patent Pending" on your invention. While "Patent Pending" does not carry any legal protection for your invention, it warns your competitors that you have filed for patent protection and that you are determined to protect your rights.
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11. How long does the process for the application and prosecution take?

The application process and the issuance of a patent presently requires approximately 18-24 months from the date of the filing of the patent application.
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12. How long is the term of the patent?

Once the patent issues, the patent protection begins on the invention. Utility patent protection extends for a period of 20 years from the date of filing, assuming that maintenance fees are paid when required. Design patents last 14 years from the date of filing.
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13. Is there anything I should do before filing an application?

Because of complex statutory requirements and a vast field of prior art, it is recommended that a patent search be conducted before a patent application is filed. If the search finds a patent that teaches the invention, or the search reveals a combination of patents that would make the invention obvious, the inventor can decide not to pursue patent protection and may save a considerable amount of money. In addition, the search will outline the cutting edge of the technology and will provide a good reference point for determining the patentable aspects of the invention and the breadth of the patent claims that will be allowable.
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14. What does a standard patent search cover?

A standard patent search covers the patents issued by the United States Patent and Trademark Office as well as foreign patent literature. This search will include the classes and subclasses of inventions normally associated with your invention. A patent attorney may review the results of this search and issue a written opinion of patentability regarding your invention and the most relevant prior art uncovered during the patent search. This should provide you with sufficient information to determine the scope and breadth of the patentable aspects of your invention and allow you to consider the costs associated with the filing of a patent application.
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15. Can I conduct my own search on the U.S. Patent Office's web page?

The U.S. Patent Office offers a searchable database with the full text of all U.S. patents issued since January 1, 1976, and full-page images of each page of every U.S. patent issued since 1790. This database is recommended for simple searching to get an idea of the extent of the patents issued in a particular area, or if you have a patent number and want to review the issued patent. However, it is not a substitute for a preliminary search by a professional searcher when seriously considering filing an application, as professional searchers use multiple search strategies and improved software in order to provide complete search results. For example, a professional searcher may conduct a database search, a search of the classifications index, a foreign patent search, and, if necessary, consult with an Examiner to verify that all appropriate classifications have been searched.
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16. Does a U.S. Patent protect my invention in other countries?

No. Each country has its own patent system and legal requirements that must be fulfilled before a patent can be issued in that country. Although the filing of a U.S. patent application may assist in providing an early filing date in certain other countries, a separate application will have to be filed in any foreign country in which patent protection is desired.
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Frequently Asked Questions about Federally-Licensed Patent Attorneys

1. What is a Federally-Licensed Patent Attorney?

Patent law in the United States is federal law. A Federally-Licensed Patent Attorney is federally registered to practice before the United States Patent and Trademark Office as a result of having achieved one or more technical qualifications and passing the Examination for Registration to Practice Before the United States Patent and Trademark Office (also known as the “Patent Bar Exam”). Thus, a federally-licensed patent attorney is licensed to represent clients in preparing, filing and prosecuting patent applications before the USPTO. Additionally, a patent attorney in the United States may render patentability opinions, and may represent clients in all aspects of intellectual property, such as patent preparation and prosecution, including post-patent-issuance procedures, such as reexaminations, patent litigation and patent licensing.
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2. What is the difference between a Patent Attorney and a Patent Agent?

The United States enjoys two primary types of patent practitioners, the patent attorney (or patent lawyer) and the patent agent. Patent attorneys and patent agents are both federally registered to practice before the United States Patent and Trademark Office as a result of having achieved one or more technical qualifications and passing the Examination for Registration to Practice Before the United States Patent and Trademark Office (also known as the “Patent Bar Exam”). Thus, both patent attorneys and patent agents are licensed to represent clients in preparing, filing and prosecuting patent applications before the USPTO. Additionally, patent attorneys and patent agents in the United States may also render Patentability Opinions, as decided by the United States Supreme Court in Sperry v. Florida (373 U.S. (1963).

An important distinction between a patent attorney and a patent agent arises from the rendering of legal opinions related to patents, however. As recently stated by the USPTO in its Rules of Ethics and Professionalism (effective September 15, 2008), patent agents may not provide a legal “opinion of validity of another party’s patent when the client is contemplating litigation and not seeking reexamination” because such activity “could not be reasonably necessary and incident to the preparation and prosecution” of a client’s patent. Therefore, it is extremely important for clients to closely examine and forecast the purpose of any opinions they seek to obtain. Finally, a patent attorney can represent their clients in all forms of litigation and before any court where they are licensed to practice, whereas patent agents are relegated to matters before the USPTO.
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3. Why is it better to retain a firm located near the USPTO?

While the USPTO is located in Alexandria, Virginia, just outside of Washington, D.C., California has the largest number of patent attorneys and agents, followed by New York and Texas. Additionally, and excluding Washington, DC, Delaware has the largest number of attorneys and agents per capita. The challenge faced by patent attorneys and agents across the country, however, is that they lack proximity to the USPTO, making it extremely difficult and expensive for them to arrange examiner interviews, or face-to-face meetings with the patent examiners working at the USPTO.

Thus, a firm located near the USPTO has the advantage of being able to quickly and efficiently contact and meet with patent examiners to promote the prosecution of their patent applications, saving clients significant travel costs and time.
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DISCLAIMER: The information on this website is for general information purposes only. Nothing on this or associated pages, documents, comments, answers, emails, or other communications should be taken as legal advice for any individual case or situation. This information on this website is not intended to create, and receipt or viewing of this information does not constitute, an attorney-client relationship.

South Dakota Patent Attorney .us
An informational page provided as a service of Maier & Maier, PLLC
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