Protecting intellectual property rights is critical to the successful operation of many businesses. Often, revenues rely directly on patents. Protecting the rights to products and technical solutions your organization has developed begins with patent prosecution.
Domestic and International Patent Prosecution
Although the term may bring to mind a criminal courtroom or some other type of contentious litigation, “prosecution” is used quite differently in the patent arena. Patent litigation addresses potential infringements, while patent prosecution refers to the process of obtaining a patent.
Many lawyers focus their practices on a particular area of the law, and there is usually an advantage in working with an attorney whose background and experience has specifically prepared him or her for the type of case at hand. However, that is not generally required. If a client chooses to ask his divorce lawyer to incorporate his business or his tax lawyer to draw up an employment contract, that is ill advised but perfectly legal.
Patent law is an exception to that rule. Because of the specialized knowledge required to work effectively with patent applications, an attorney practicing in this arena must have a hard sciences background and must be specifically admitted to the U.S. Patent Bar. That shows just how important it is to have a knowledgeable patent attorney with a scientific background guiding you through the patent application process.
Making a Patent Application
Of course, there is more to pursuing patent protection than inventing a device or process and then filling out an application. The process begins with research and strategy, and the guidance of an experienced patent lawyer can be invaluable.
Who May Apply for a Patent?
- The appropriate patent holder will be:
- The inventor
- Someone to whom the inventor has assigned the rights
- Someone to whom the inventor is legally obligated to assign the rights
Determining the appropriate applicant and ensuring that all necessary paperwork is in place to permit the applicant to pursue patent registration can be complicated. The determination and preliminary work may be even more complex when there are joint inventors, or when an employee or outside contractor has invented the work in a context other than a direct “hired to invent” relationship.
Thus, it is important to get knowledgeable guidance about patent law and processes as early as possible. Ideally, a business will have consulted with a qualified patent attorney before hiring or contracting with an employee or outside inventor, to be sure that the agreement with that party protects the employer’s patent rights. If that has not occurred, the next best time to seek legal assistance is as soon as you know there is a potential patent application in play.
The Patent Application Process
The patent application itself requires detailed specifications and, in some cases, drawings. In addition, a patent application must include an oath or declaration from the applicant. The technical specifications associated with submission of a patent application are so specific that they include margins, font size, line spacing and numbering.
Other details will vary, not just based on the nature of the patent but also on the applicant and on the applicant’s plans for the patent. For example, certain smaller entities may qualify for lower than standard fees in connection with a patent application. Further, the requirements regarding publication of the application will vary depending on certain factors, including whether or not the applicant intends to pursue foreign registration.
Provisional v. Non-Provisional Patent Applications
The provisional patent application process was designed to allow inventors a quicker and less expensive means of establishing an early claim to an invention. Since the United States shifted to a “first to file” model in 2013, the provisional application process has become an important aspect of patent rights protection for many inventors and assignees.
However, a provisional patent application is not a path to being granted a patent, but a way for an inventor or assignee pursuing a patent to stake his claim and to gain the right to use the phrase “patent pending” in connection with the invention. A provisional patent application will be deemed abandoned if the applicant fails to follow up with a non-provisional patent application within 12 months.
International Patent Prosecutions
Although the U.S. Patent Office and the European Patent Office have established the Office of International Patent Cooperation to simplify and coordinate global patent issues, pursuing a patent application outside the United States is somewhat different from pursuing a U.S. patent. If you are uncertain as to whether it is necessary to pursue patent rights internationally, we can help you assess the situation and, if you decide to pursue foreign patents, manage that process for you.
Talk to a Patent Prosecution Attorney
Neglecting to pursue a patent in a timely manner or committing errors that result in the loss or limitation of patent rights can cost your company more than future revenues. The organization could lose significant sums invested in the research and development of the invention. If your company is in the business of invention, it is in your best interest to develop a relationship with an experienced patent lawyer as soon as possible and to get professional guidance at every step.
Work With KPPB LAW Today!
If patents are not a regular part of your business but a situation has arisen in which you believe that you have a potentially valuable patent claim, act quickly. If you are not experienced in the patent process or assessing the viability of a patent claim, it is all the more important that you seek legal advice immediately. Contact KPPB LAW for more information.