Patent It Yourself - PDF Archive

ChaPter 1 | INTRODUCTION to PATENTS and Other INTELLECTUAL PROPERTY | 13
that at the time you came up with your invention, it would
have been considered unobvious to a person skilled in the
technology (called “art”) involved in your creation. As we’ll
see in Chapter 5, unobviousness is best shown by new and
unexpected, surprising, or far superior results, when compared
with previous inventions and knowledge (“prior art”) in
the particular area of the invention. (In addition to being
novel and unobvious, utility inventions must also be “in a
statutory class” and be useful. More on this later.)
D. How Long Do Patent Rights Last?
How long can you, the patent owner, exclude others from
infringing the exclusive rights granted by your patent?
Utility and plant patents expire 20 years from the date of
filing while design patents last 14 years from the date of
issuance. The terms of patents for certain products whose
commercial marketing has been delayed due to regulatory
review (such as for drugs or food additives) can be extended
beyond the statutory period.
While the term of a patent is calculated from its filing
date, the monopoly period it creates—its in-force period—
doesn’t start until the patent issues. Effective June 2000,
every patent is guaranteed an in-force period of at least
17 years. The patent term will be extended for as long as
necessary to compensate for any of the following:
• any delay caused by the PTO failing to examine a new
application within 14 months from filing
• any delay caused by the PTO failing to take any of the
following actions within four months:
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reply to an amendment or to an appeal brief
issue an allowance or Office Action after a decision
on appeal, or
issue a patent after the issue fee is paid and any
required drawings are filed
• any delay caused by the PTO failing to issue a patent
within three years from filing, unless the delay was
due to the applicant filing a continuation application
or buying a delay to reply to an Office Action, or
• any delay due to secrecy orders, appeals, or interferences.
The patent’s in-force or enforceable monopoly period
starts when the patent issues, usually about one to three
years after the application is filed. From the date of filing to
issuance (termed the “pendency period”) the inventor has
no rights, with one exception: If the patent application is
published, an inventor will obtain gain some “provisional”
rights against an infringer. An inventor may obtain
royalties from an infringer from the date of publication
provided (1) the application later issues as a patent; and (2)
the infringer had actual notice of the published application.
(35 USC 122, 154.). When, and if, the patent later issues—
whether or not the application was published—the inventor
will obtain the right to prevent the continuation of any
infringing activity that started during the pendency period.
Relevant time periods are indicated in “The Life of an
Invention,” above, and in the chart in Appendix 6.
E. Patent Filing Deadlines
As we’ll see in more detail in Chapter 5, in the United
States you must file your patent application within one year
after you first commercialize, publish, or reveal without
restriction details of the invention. However most foreign
countries don’t have this one-year grace period, so there’s
some disadvantage if you sell or publish before filing. For
this reason, your safest route is to file a complete U.S. patent
application before you publish or commercialize your
invention. Under new legislation, you are permitted to file
a “provisional patent application” (PPA) describing your
invention in detail, in accordance with the instructions in
Chapters 3 and 8. (No claims, discussed in Chapter 9, are
needed.) This PPA can be used, under most circumstances,
to defeat or block a patent application or invention of
someone else who may subsequently file a patent application
on the same invention. How ever, to obtain the benefit of the
PPA’s filing date, a regular patent application must be filed
within one year after the PPA’s filing date—more on this in
Chapters 7 and 8.
F. Patent Fees
How much will it cost to get a patent? Assuming you use
this book and don’t use any patent attorneys or agents, and
not including costs of drawings, typing, photocopying, and
postage, the only fees you’ll have to pay are government fees.
The amounts of these fees are listed on the PTO Fee
Schedule in Appendix 4. As indicated in the Schedule, most
PTO fees are two-part: large entity and small entity. The
large-entity fees are generally paid by large corporations,
while the small-entity fees, which are half the large-entity
fees, are generally paid by independent inventors. For more
on this, see Chapter 10, Section E5. The names of these fees
and the circumstances when they’re due are as follows:
• Utility Patents: To file a provisional patent application,
you’ll have to pay a PPA Filing Fee. To file a regular
(nonprovisional) utility patent application, you must
pay a Utility Patent Application Filing Fee. This fee
now has three components—filing fee, search fee, and
examination fee—but all three must be paid together.
To have the PTO issue your utility patent, you must