Utility Patent Applications
The U.S. patent laws are federal statutes specifically authorized by the U.S. Constitution. The underlying public policy is to encourage both inventive activity and early disclosure of inventions. In return for making an early disclosure through the patent system, the inventor receives the exclusive right to make, use and sell the claimed invention for the term of the patent. Theoretically, the inventor of a unique commercial product, will get a 100% market share.
Utility patents are designed to protect a variety of new technologies, these include articles of manufacture, manufacturing processes, apparatuses, electronic circuitry, chemical compounds, and mechanical or chemical process, etc. Protection would be denied, however, when the discovery is merely an abstract concept, such as a mathematical theory or a law of nature.
Much has been written about whether computer software is protectable. At the present time, the scope of protection for computer software has expanded to cover software inventions that a few years ago most practitioners thought were unpatentable.
Mechanical inventions are typically new combinations of old components that perform a new function or provide a new feature. Here the Patent Office must determine whether the improvement over the prior art is significant enough to warrant the grant of a patent.
Chemical inventions require special considerations and the inventor must often be prepared to demonstrate that either the substance or a composition comprising a defined range of constituents is new, useful and non-obvious.
A utility patent application must contain a description of the invention, which is detailed enough to meet the requirements under 35 U.S.C. 112. This means that the instructions in the specification are sufficient to enable a technically trained reader to carry out the invention. The best mode known to the inventor at the time of filing must also be disclosed. Care must also be taken to ensure that this description supports the patent claims.
The patent claims are the legal definition of the invention. They are a series of numbered paragraphs that use words to build a fence around the technology considered to be new. The rules for drafting patent claims have developed over the years through decisions handed down by the courts and the Patent Office. Not surprisingly therefore, the rules for drafting and construing patent claims have become fairly arcane. Claim drafting is an area that definitely requires expertise. An inventor runs the risk of drafting claims that are either invalid or useless, without expert guidance.
After the application is prepared and filed, the Patent Office will examine the application for utility, novelty and unobviousness as well as sufficiency of disclosure. The bulk of the examination is usually concentrated on whether the invention is novel and legally unobvious. The Patent Office will compare the claimed invention to the prior art, typically using previously issued patents. The inventor can expect the Patent Office initially to object to at least some of the claims, on the grounds of obviousness or lack of novelty. In fact a skilled practitioner will often insert very broad claims which will force the examiner to consider a very broad search area. The Patent Office may also have some objections to the phrasing of the claims or may object that the claims cover more than one invention. In response the inventor can amend the application to overcome the objections, provided no new matter is added to the application.
If the inventor satisfies these objections, the patent is allowed and is issued after the payment of an issue fee. Thereafter a utility patent h as a potential existence until a date twenty years from the filing date, provided maintenance fees are paid when the patent is 3 1/2, 7 1/2; and 11 1/2; years old.
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