PATENTS 

Roy, Kiesel, Keegan & DeNicola has obtained patents for its clients in a side variety of technologies, including:

• waste treatment systems and equipment, including primary, secondary, and tertiary treatment systems involving pumps, motors, conveyors; waste pit and truck liners
• oil field drilling equipment including blow out preventors, downhole equipment
• oilfield fracturing equipment orthopedic, ob-gyn, diagnostic radiology, cardiology, gastroenterology, hematology, dental, surgical, and other medical appliances and methods
• crawfish and other crustacean harvesting and processing equipment
• audio speakers
• automotive accessory and engine design, including L'ate ramps, wheel chair locking mechanisms, and fuel savers
• sugar cane carts, planters and harvestors
• grappling equipment for unloading ships, railroad cars, and moving material
• oil field platforms, pipeline dredging equipment
• pneumatic fluid dispensers
• boat construction, including hull design and pivoting chairs
• home and business appliances, including washing machine accessories, computer keyboards, shelving structures, cook tops, water closet design, bath tubs, and mops
• highway construction design
• fishing equipment and bait composition
• educational equipment, toys and games
• industrial equipment, including scaffolding, pressure cleaning equipment, tank gauging equipment, hydraulic torque wrenches, valves, mechanical seals, electrical switches, pumps, motors, corrosion monitoring system, back hoe accessories, metal shredders, conveyor systems, bulk shakers and separators, water savers
• plumbing equipment
• game hunting equipment
• ointments and preparations for treatment of burns, poison ivy, and other physical ailments
• land anchors

If you would like to review recently issued patents prosecuted by RKKD Patent Attorneys, click here.
 

A patent is an official document granted by a   government conveying specific rights named in the document and in the statute authorizing it.  Most countries grant patents, with each country differently defining the rights granted by that country's patent.  For this reason, only United States patents will be further discussed.

In the United States, patent rights are defined by  statute to include ". . . the right to exclude others from making, using, offering for sale, or selling the invention throughout the United States, or importing the invention into the United States...."  It is important to note that a patent does not grant the inventor the right to make or sell his invention; a patent grants the inventor the right to stop others from exploiting his invention.

A patent generally contains three  components: drawings, a specification, and most importantly, claims. The patent specification explains the invention in enough detail to enable the invention to be "practiced," that is, to be made or used.  The patent claims contain the legal definition of "THE INVENTION," that is, only the claims are protected by the grant of patent rights.
 
WHAT IS THE TERM OF A PATENT?

In general, most patents expire after 20 years, measured from the patent application filing date.  However, because a patent is only effective upon issuance and because the application process takes a certain amount of time, the term of most patents (the time during which a patent is effective) will be less than 20 years.
 
WHAT IS PATENTABLE?

(Please note that these are complex considerations, and an inventor should seek the advice of a patent attorney regarding these issues.)

Patents fall into three categories: plant patents; design patents; and utility patents.  Plant patents are granted for new asexually reproduced plants, while design patents are granted for any new, original and ornamental design for an article of manufacture. Utility patents, the most common patent, are granted on inventions or discoveries of:

1. Processes,
2. Machines,
3. Manufactures,
4. Compositions of matter,
5. Processes involving new uses of known processes, machines, manufactures or compositions of matter,
6. Improvements in any of the above.

The subject matter of utility patents covers a vast number of items, such as chemicals, computers programs, circuits, machinery, manufactured products (such as baby diapers or golf clubs), processes or methods of making or using a product (such as a method for breeding fish or a method for faxing documents) as well as methods of doing business.

Any invention for which utility patent protection is sought must meet three general criteria: novelty, usefulness, and non-obviousness.  The criteria of novelty requires that the invention not have been known to the public prior to the date of invention.  For instance, if the invention is shown or described in a printed publication before the date of invention, the invention is not novel.  The criteria of non-obviousness requires that the invention be more than an obvious modification of the existing state of technology.
 
WHO MAY OBTAIN A PATENT?

A patent only issues in the name of  the first and original inventor(s). Consequently, a corporation, business organization or other juridical person may not pursue patent protection as an inventor, but can hold patent rights as owner.  It is also common practice, and sometimes contractually required, for inventors to assign their patent rights to their employers.

The law recognizes that an invention may be made by one, two, or a greater number of persons. Accordingly, patent applications frequently name joint inventors. Unless there is an agreement or assignment of the patent to one of the inventors or to a third party, each inventor has the right to exploit the invention with no duty to account to the other inventor or inventors for his actions.  The rights and obligations of joint inventors should be defined by an agreement or the patent should be assigned to a single entity.
 
WHEN CAN ONE APPLY FOR A PATENT?

At a time when the complete invention is mentally pictured, that is, fully conceived in an operating form, the inventor may properly pursue patent protection.  It is not necessary that the inventor have a working model.

A patent application must be filed within one year after the invention is first  described in any publication, placed on sale, sold, or used publicly.  There are exceptions to this rule, as in the case of legitimate experimental use to perfect or develop the invention.  The one year period is specifically allowed by United States law; in most other countries, any public use or sale of the invention anywhere in the world, before the filing of an appropriate patent application, will deny you the right to a patent in that country.

Please note that there are other instances where patent protection may be precluded, and the reader is advised to contact a patent attorney regarding such issues.
 
HOW DO I OBTAIN A PATENT?

To obtain a patent, a formal patent application must be filed with the Patent and Trademark Office ("PTO").  The inventor may file a patent application without the assistance of a patent lawyer or agent. However, this is usually not recommended. Patent law and procedure are complex, and valuable legal rights can be easily lost if the patent application and prosecution of the application are not handled carefully by one skilled in such matters.

If a patent attorney is to prepare the application, the inventor should prepare a disclosure of the invention for the attorney.
 
PREPARATION OF A DISCLOSURE OF THE INVENTION

To properly prepare a patent application, the patent attorney needs a disclosure of the invention.  The disclosure is a written description of the invention and can include  rough drawings and perhaps a model of the invention, if practical. This description should "teach" the invention, that is, the description should be sufficient to allow another, knowledgeable in the area of the invention, to make or use the described invention. Furthermore, the description should contain the best manner of making or using  the invention known to the inventor.  It is also helpful to explain to the  patent lawyer why the invention is an improvement over existing devices; that is, what problems were not properly accounted for in prior devices, but are accounted for in the present invention.
 
CONDUCTING A PATENTABILITY SEARCH

An option an inventor may take before  filing a patent application is to conduct a patentability search. A patent search attempts to answer the question of whether the invention is patentable - that is, is the invention new and non-obvious over prior art?  If a search reveals that the invention is not patentable, then the cost of filing a patent application will be saved.  If the search reveals that the invention may be patentable, the references located in the search can be useful in preparing the patent application, that is, the references can provide useful background information and indicate the possible scope of potential patent claims.

The search attempts to find existing United States patents describing the invention, or describing inventions similar to the invention. The patent attorney will review the patents discovered during the search to form an opinion as to whether the invention is patentable over the prior art patents found.  One should keep in mind that no patent search should be treated as a guarantee of the patentability of an invention or non-infringement of an invention on another patent.  Please be aware that patents not found during an initial search may be found by a patent examiner and may or may not have an effect on the patentability of an invention.  Searches are often conducted in the offices of the PTO in Washington D.C.  The PTO is a public office  where patents can be misfiled, lost or stolen.  Additionally, a search will be limited to an examination of only those issued patents classified in a specified subject matter area. Further, the search cannot include examination of unpublished pending applications and does not include the examination of extensive listings of foreign patents, magazines, trade or technical journals or other publications that may contain articles that effect patentability.  Also, as with most legal matters, issues of patent law require subjective determinations which are many times unpredictable.  For these reasons, there will usually be at least a few patents which will turn up during prosecution of an application which were not found in a preliminary search.
 
The cost of a patent search depends on the nature of the invention and the extent of the prior art, that is, how crowded is the field of the invention.  In general, the cost of a search is much less than the cost of preparing and filing a patent application, and the search can be done quickly, usually in less than a month.

PREPARING AND FILING A PATENT APPLICATION

There are two types of patent applications, the standard patent application and the provisional patent application.

The standard application usually has five parts: (1) a background and prior art discussion; (2) drawings to aid in understanding the description; (3) a detailed description of the invention; (4) the claims; and (5) an oath or declaration by the inventor.  A provisional patent application  requires essentially the same parts  except that an oath and patent claims are not required.  Provisional applications are not examined by the PTO for patentability, and cannot mature into a patent unless first converted into a standard patent application.

Preparation of a patent application requires  a dialogue between the patent attorney and the inventor.  As indicated above, a patent must "teach" one how to "practice" the invention.  As any patented invention must be new and non-obvious, the inventor is the one individual uniquely qualified to explain or teach the invention to another, and particularly, to "teach" the patent attorney so that the patent application can be properly crafted.

Much of the attorney's time preparing the application will be spent drafting the claims. While claims are placed last in the patent application, the claims are first in  importance.  The claims legally define the  protectable invention.  Perfection in the rest of the application will be of little value if the claims do not properly cover the invention.

PROSECUTION OF A PATENT APPLICATION

The process of obtaining a patent begins upon the filing of a patent application.  The process ends when, and if, the PTO determines that the claimed invention is patentable.

Within the PTO, patent applications are assigned for review by patent examiners who have specialized technical expertise in the subject matter of the invention.  In a typical case, the examiner first reviews the patent application for compliance with formal requirements.  Then, he considers the invention as claimed.  He researches earlier patents and publications to determine whether the claims of the patent application define subject matter that is patentable over the prior art (in essence, the examiner conducts a patent search).

From this review, the examiner may determine: (1) that the application is not directed to a patentable invention; (2) that the application contains a patentable invention and agrees with the form and scope of the claims; or (3) that the application contains a patentable invention, but disagrees with the scope of the claims which should be granted.  The examiner then communicates his position on the application to the inventor's patent attorney in an "Office Action."  Usually few, if any, claims are found patentable in the first Office Action.

The patent attorney will request the inventor's assistance and instructions for responding to the Office Action.  The response might take the form of an amendment of the claims, cancellation of existing claims and/or submission of new claims, or submission of an argument seeking to change the examiner's position, with or without an amendment modifying the claims of the patent application.

After receiving the response to his Office Action, the examiner again considers the case and reviews his position.  Agreement may be reached as to the patentability of certain claims, or the examiner may finally reject all claims as unpatentable.  If certain claims are found to be patentable, the application will be placed into condition to mature into, or "issue," as a patent. A "notice of allowance" results.  If the examiner finds all or certain claims unpatentable, the applicant may either appeal the examiner's decision, or allow those claims to abandon.
 
ISSUANCE OF A PATENT

After the "notice of allowance" is issued, an issue fee and often a publication fee must be paid.  About three or four months after the payment of the issue fee, the patent issues.  From filing to issue, the average time a patent application is pending is more than eighteen months, and generally exceeds two years.

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