IP Service

Patent search is a general term that is used to describe a process for identifying references related to the current art.  These references may be including but not limited to patents, patent applications, scientific articles, any statement or description posted on the internet.   While patent search is considered to be an important part of work done by a patent examiner during the examination, it is also a helpful tool for an inventor to evaluate how innovative an idea is or navigate the art away from the scope covered by prior art.

To become a valid patent, an application must be able to overcome many legal hurdles.  In this adversary system, the first hurdle is likely to be set by the USPTO, more specifically, a patent examiner.  During the patent prosecution, patent examiners heavily count on existing patent literatures and scientific articles and use them for novelty or non-obviousness evaluation.  Therefore, it is wise for inventors and applicants to get ahead of the game by tapping into that database first.

Patent practitioners sometimes have different opinions on whether a patent search is needed and how deep a search should go.  In fact, there is no standard on the amount of a search that is considered to be sufficient.  It also depends on the inventor’s need and resources.  More thorough the search is, more expensive it is.  However, even a simple but effective search may help an inventor to avoid losing sight of the most obvious prior art.  The search may also provide hints to an inventor on how to streamline his invention and draft claims that are distinct from prior art.

It has been known that laws of nature, physical phenomena, and abstract ideas can’t be patented.   However, this doesn’t mean that anything fell outside of those three categories is patentable.   For an invention to become a patent, it must meet certain legal requirements such as novelty, non-obviousness, usefulness, and enablement.

On the other hand, an invention may have different aspects of innovation that are ALL worth protection.  Generally speaking, three types of patents are applied in US for the protection of different kinds of subject matter, i.e., utility, design, and plant patents.  A utility patent is created for a new and useful process, machine, manufacture, or composition of matter.

Timing is another important issue that inventors and applicants must pay close attention to when they consider getting patents for their inventions.  The current patent law is changed from First to Invent to First to File.  This means that an inventor would lose the right for patent if the claimed invention has already been available to the public before the filing date even though the inventor may be the first one to invent.   The law has also required that the filing of a patent application be done within one year after the inventor makes it available to the public.

Before spending additional resources and moving further down the path for getting a patent, a patentability opinion is to help inventors / applicants to better understand the likelihood of success and realize potential opportunities or pitfalls ahead.

When submitting an application to the USPTO, there are two filing options available for inventors and applicants: provisional and non-provisional applications.  These two types of applications are different yet related with each other.  Although a non-provisional application is a complete version of patent application and a provisional application tends to be less thorough, they are both formal applications that bear legal significance for the invention.

A non-provisional application is a submission to the USPTO in a full course.  Applicants must hand in specification, claims, drawings, and all required forms so that the filling date is officially recognized as the priority date.  In a typical process, the application will be published in about 6 months after the submission and later examined by a USPTO examiner.

A provisional application is filed before the submission of a non-provisional application.   A formal patent claim is not required in a provisional application.  It does not need to include any information disclosure statement for references the applicant may know at the time.  A provisional application is neither published nor examined by the USPTO during the 12-month pendency period after it is filed.  However, a provisional application does NOT automatically enter into the stage of examination and must do so through a non-provisional application, which either claims the benefit of the provisional application or results from conversion of the provisional application before the 12-month pendency period is expired.

Once either type of applications is submitted and accepted by the USPTO, a status of “patent pending” is granted for the invention.  One of advantages for filing a provisional application first and claiming its benefit later in a non-provisional application is that the priority date of the patent, if allowed, is the filing date of the provisional application and the term of the patent starts from the later submission date of the non-provisional application.  Another advantage is that this gives time to applicants for figuring out how to use or commercialize the invention before filing the more formal non-provisional application.

However, no NEW matter is allowed in the following non-provisional application if it is not described in a way that meets requirements of 35 USC 112 in the previous provisional application.  This important point tends to be overlooked by inventors and applicants because they usually treat the provisional application as a “simple” or “inexpensive” tool to get started.  Improper use of a provisional application may lead to serious consequence such as the loss of right for patent.

After a non-provisional patent application is submitted, it will enter into the examination stage in about 6 months or longer.  A USPTO examiner starts to look at the application in detail.  After the review the examiner may allow or disallow the application to become a patent.  If the application is disallowed, it is most likely due to the examiner’s objection, rejection, or both and an Office action is issued.

Objection is mainly related to the form of claims and rejection is applied to the content of claims.  If an examiner rejects an application, it is likely that some or all of claims have been called into question for legal requirements, such as novelty, non-obviousness, enablement, written description, etc.  In order to overcome rejections in the Office action, applicants must file a response by complying with the examiner’s suggestion, amending rejected claims, or arguing against the examiner’s position.  If there is no response to the Office action before the due date, the application is considered to be abandoned.

When a rejection is non-final (usually the first one) and the response is filed within the deadline, there is no examination fee charged by the USPTO.  However, if a rejection is made final, additional documents and fee besides a response arguing against the rejection need to be submitted to the USPTO to avoid abandonment.

Unlike patent, which protects an owner’s exclusive right on the invention by fully exposing it to the public, trade secret affords such right to the owner by purposely keeping a matter as a secret.  Trade secretes comprise things that can or can’t be patented as long as they are unique and not readily observed by others.  Business information, formulas, and software can be treated as trade secrets if they are kept confidential.

While trade secret is protected by the federal law such as the Economic Espionage Act of 1996, it also falls within the jurisdiction of state courts.  In Illinois, it is protected by the Illinois Trade Secrets Act that took effect in 1988.

In practice, trade secrets are protected by signing and execution of carefully-tailored nondisclosure agreements.

A trademark or service mark is a word, phrase, logo, or sound that identifies the source of goods or services.  There are three types of trademarks: federal, state, and common law trademarks.  Federal trademarks are registered through the USPTO and enforceable at the national level.  State trademarks are registered through a state agency and enforceable within that state.  Common law trademarks are also called unregistered trademarks.  They are not registered either at the federal or state level.  Their authority is established through their use in either interstate or intrastate commerce.  Therefore, should a dispute arise, an owner’s right on a common law trademark might still be enforceable.

Although a trademark can be used without registration, it is not a pleasant experience for a user to stop using a trademark after another user who has used it before him for the same class of products forces him to do so.  This situation can be mostly avoided by conducting a search before the use of a trademark.  A trademark search also helps a user to make informed change on a proposed trademark before registering it.  This will save a user considerable time and money down the road.

Having a trademark registered at the USPTO provides a protection to the owner of the mark at federal level.  A trademark application can be submitted to the USPTO under the basis for filing of either “use in commerce’ or “intent to use”.  The mark must be actually used in commerce if “use in commerce” is chosen as the filing basis.  If the mark has not yet been in commerce but is expected to be used in the future, “intent to use” should be chosen as the filing basis.  If a mark is allowed on an “intent to use” basis, a statement of use must be filed and approved after the mark is used in commerce so that it is officially registered.

Compared to filing a patent application, submitting a trademark application is relatively straightforward.  However, it doesn’t mean there is no pitfall in the process for registration given the fact that every application is unique and the product bearing the applied-for trademark is also different from one another in different cases.  Therefore, a careful evaluation on the application, such as appropriate trademark samples, is still needed to avoid unnecessary delay or refusal of registration.

Once a trademark application is filed, it takes from about four months to more than one year for it to be registered depending on whether an Office action is issued or an appeal is initiated.  In the Office action the examining attorney states refusals or requirements.  Applicants must overcome refusals or meet requirements in the response or the application is abandoned.

The most common grounds for refusals include, but are not limited to “likelihood of confusion”, “merely descriptive”, “ornamentation”, etc.  Although these refusal grounds focus on different aspects of inadequacy in the applied-for trademark, they all point to the deficiency on the core function of a trademark: to identify the source of goods or services of one party and distinguish them from those of others.  Applicants need to respond with arguments and evidence to overcome refusals.  While coming up with strong arguments, applicants must realize that those arguments stated in the response become a public record and may be later used against the trademark owner in legal proceedings.  Therefore, a response must be carefully drafted so that it can help overcome refusals and reserve the most benefits and the largest scope of protection for the applied-for mark.

Copyright protection encompasses original works of authorship fixed in any tangible medium of expression from which the works can be perceived, reproduced, and communicated.  Under the protection, the copyright owner has exclusive rights to reproduce, prepare, and distribute copies of the work to the public by sale, rental, lease, or lending.  However, copyright laws protect only the expression of an idea and not the idea itself.

Generally speaking, for works created after January 1, 1978, copyright protection lasts for the life of the author plus an additional 70 years. Under the fair use doctrine, limited portions of a work may be used by someone other than the copyright owner for purposes of commentary, criticism, or news reporting.

An owner of a work is not required to register with the US Copyright Office because copyright exists from the moment the work is created.  However, copyright of a work must be registered before the owner is legally permitted to bring a lawsuit to enforce it.  Timely registration creates a legal presumption that the owner’s copyright is valid.