Patent Protection Through the United States Patent and Trademark Office
Patent protection in the USA is based on Federal Law, and the basis for our patent system is found in Article I, Section 8, Clause 8, of the United States Constitution which grants Congress the power to "promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries." The United States Patent and Trademark Office (USPTO) is not a taxpayer-funded entity like many US Government institutions. Instead, the USPTO is funded entirely through the fees paid by the inventors, universities, and corporations that utilize the patent system. Whether filing an application, asking for an extension of time to respond to an Examiner, issuing the patent for the first time, or maintaining the enforceable status of a patent, an applicant/patent owner will have to pay these fees to the USPTO, or risk losing their application/issued patent.
Utility Mechanical/Electrical inventions can begin as either a Provisional or as a Non-provisional patent application in the USPTO. A Provisional application establishes a filing date for the invention as well as provides "Patent Pending" status for 12 months. A Provisional application does not require a set of claims and will not be searched or examined by the USPTO. A Non-Provisional must include a set of claims and will be searched and examined by the USPTO and could potentially issue as a patent once the Examiner has found at least one claim to be patentable.
Our firm provides all services related to patent drafting and prosecution in the USPTO, including the drafting and filing of all inventor documents, the preparation of formal patent drawings by an experienced patent draftsman, payment of any necessary fees, tracking due dates for responses to Office Actions or maintenance fees, and various other legal services related to these. We can draft and prosecute design patents in addition to utility patents, which operate under a slightly different set of rules. During each step in the process, we can continue to evaluate the client’s IP budget, activities of competitors, changes in the law, and newly found prior art to ensure that we are being strategic about each filing in the USPTO.
Patent Protection Through International Patent Offices
Patent protection in foreign countries is based on the laws of the particular country at issue, with the notable exception of certain treaties (Patent Cooperation Treaty (PCT), the European Patent Office (EPO), etc.) where patent offices from individual countries will actually operate under the same or a similar set of laws. Each country has their own patent office with a set of administrative laws for obtaining patents along with some type of legislation at the federal level regarding the enforcement of patents in their country’s courts. A US patent cannot be enforced in a foreign court and foreign patents cannot be enforced in US courts.
International patent protection can generally begin in one of three ways: (1) by filing individual national applications in each country, (2) by filing a PCT application and later deciding which countries to enter, or (3) a combination of (1) and (2). In each case, to file an application in the patent office of a foreign country it is necessary to find local counsel with an active license in the foreign patent office to complete the filing. Generally speaking, with parallel patent prosecution occurring in the USPTO, patent cases can be expedited in foreign patent offices once the patents have been approved in the USPTO.
Our firm is experienced in engaging with foreign attorneys to complete the drafting and filing of applications in foreign countries. In many cases, our firm can prepare applications for foreign attorneys which are already substantially in compliance with the foreign patent office rules, requiring less legal fees from foreign associates.