Patents in the US, as in other nations throughout the world, protect useful, novel, non-obvious articles, machines, compositions of matter, and methods within the scope of a patent’s claims, in various subject matter areas. Patents for instance were, but presently are not, available in the US on “pure” business methods, pending Supreme Court review of this issue in the US, but European nations have never allowed patents on non-technological methods. Patents are issued and can be enforced only on a nation by nation basis, although some international agreements allow for processing applications through worldwide and/or regional authorities such as under the Patent Cooperation Treaty (“PCT”) and through the European Union or the Southeast Asia patent communities.
Patents are applied for in the national or regional patent offices, either directly or through the PCT. The US allows for “provisional” applications, which need not be in any special form but should include a complete disclosure and at least one claim to the invention. These are not examined and are good for only one year until they expire, but the filing fee is only $110; a provisional patent provides a priority date for a regular utility application filed prior to its expiration. A regular utility application must include an abstract of the disclosure, summary of the invention claimed, a description of any drawings provided, a disclosure of how best to make and use the invention in such detail as to enable one of ordinary skill in the pertinent art to do so, and claims to what the inventor regards as his or her invention.
The US patent filing fee is presently about $585 for a “small entity” – one with less than 500 employees, or a non-profit or university entity – or double that for other entities, for a basic patent with up to 3 independent claims and up to 20 total claims. Lawyer fees for preparation and filing of a utility application for patent averaged from $7000 for the simplest cases to up to $14,000 for more complex biotechnology, electronic, and mechanical inventions, in Chicago, according to the 2007 AIPLA survey.
After filing, an application for US patent is referred to an examiner in the art to which the application pertains. If preliminary matters appear, an office action can be issued within several months noting missing parts or requesting that the application be divided among several inventions disclosed and claimed. A short time is provided for response to these initial matters. When the application is examined substantively, by an attorney or engineer familiar with the art, claims may be rejected on formal bases (indefinite, wrong dependencies, etc.) and/or on prior art patents that make the claims non-novel, or obvious to one of ordinary skill in the art, or as being not in a statutory class eligible for patent (perpetual motion machine, pornographic, or a business method). Applicant’s counsel has usually 90 days to respond, or up to 6 months with payment of late fees; the specification can be corrected, and/or claims amended or added to, within strict limits. Another examination will allow the claims, or some of them, or result in a “final” rejection of some or all of the claims. Applicant’s response must then place the case into condition for allowance, or he/she/it must appeal the final rejection within the Patent Office or file a “continuation” or “continuation in part” application to obtain the right to further examination for negotiation of allowable claims. The normal time from application to issuance of a patent in the US Patent Office has been 2 years, although it has increased alarmingly to 4-5 years recently in many of the examining groups. Once allowed, an issue fee of, currently, $755 for a small entity or $1510 for others must be paid for issuance of the patent.
Patent rights commence in part, on a contingent basis, upon publication of the application, as filed, at about 18 months after filing, which gives the public notice of what is in the Patent Office pipeline. An application can be republished, as when claims are amended during prosecution, upon request and payment of a fee for same. If a patent issues with claims “substantially the same as” those published, and an infringer was given personal notice of pendency of the application and pertinence of the claims to what the infringer is making, using, offering to sell, or selling, then money damages can be collected in a suit filed after issuance.
Upon issuance of the patent, all rights to exclude others from making, using, offering to sell, or selling the invention come into effect, subject to many defenses under the patent laws and court decisions.
Pending applications for patent and issued patents may be searched on the Patent Office website, www.uspto.gov, in any of the sections of the patent and by classification, using any words or phrases, including assignee, inventor, etc. Status of an application after publication can be seen, too, including office actions, responses, and amendments. Whether maintenance fees have been paid at 3-1/2, 7-1/2, and 11-1/2 years from issuance, preventing expiration prior to 20 years from filing, can also be seen on the website.