Francelina M. Perdomo Klukosky, Esq.
Manhattan, NY: (212) 980-7206
Non-Provisional Patent Applications
Non-Provisional Patent Applications NYC Francelina M. Perdomo Klukosky - Perdomo Law
NYC Non-Provisional Patent Application Law Firm, Perdomo Law in Manhattan New York, NY 10007
In order to obtain an issued utility patent, an inventor must file a non-provisional patent application. Non-provisional patent applications have several specific requirements, require the payment of fees, and go into the queue for examination. If a patent examiner agrees that the application meets the requirements for a patent, the applicant is invited to pay issue fees and an enforceable patent is issued.
With this very brief background, lets unpack the specific requirements and explain them in a little more detail. This discussion is primarily directed to US patent law, but it generally applies in all countries.
Why Do I Need an Issued Patent?
An issued utility patent is an exclusionary right
that gives the patent owner the right to sue an accused infringer for patent infringement. So, if you are inventing something within the scope of the patentable subject matter (a topic for another article), and if your invention meets the substantive requirements of patentability of novelty and inventiveness (also called non-obviousness), you may be able to obtain a patent.
The exclusionary right can be very valuable. It gives the patent owner a degree of market exclusivity and is a valuable business asset, that can be sold, licensed, or used as a security interest. Your customers and partners will want to see issued patents. You are much more likely to get a deal with an issued patent.
So with regard to provisional patent applications, they have the limited lifespan of one year and must become a non-provisional patent application. Only a non-provisional patent application advances to prosecution, so only a non-provisional patent application is allowed and can mature to an issued patent.
Features of Non-Provisional Patent Applications
Here are some critical features of non-provisional patent applications.
- The content is locked. Small changes such as correction of typos can be made, but you can’t come along after the patent is filed with a new variation of the idea. There is a strict rule prohibiting the addition of new subject matter. This is an important distinction with provisional patent applications – with a provisional, you can in effect add new material during the course of the year. But you can’t do it with a non-provisional.
- Non-provisional patent applications require claims. Claims are the legally enforceable part of a patent. If you’ve ever bought or sold a home, you may have seen a legal description of real property, defining a starting point, and a line in a certain direction for so many feet, etc., that defines the boundaries of the property. Patent claims are analogous. The claims define the boundaries of the invention. Claims are written in a stylized format that should be left to experts.
- A non-provisional patent application must have a specification and drawings (if necessary) that supports the claims. The specification is the main body of the patent application. Everything in the claims needs to be discussed in the specification. To use a silly example, suppose the claims recite an invention that washes dishes and mops floors. The specification must discuss washing dishes and mopping floors. If the specification only discusses washing dishes, then the part about mopping floors won’t be supported by the specification, and that is a problem that will cause a rejection during the examination.
- Non-provisional patent applications have formal requirements. For example, the specification has to be filed using a font that is easy to read, 1 ½ or double-spaced, single columns, one-inch margins on standard paper. There are also certain specific sections and headers that should be used.
Patent Attorneys and Agents
At this point, the question comes up for many inventors: can I do this myself? Theoretically you can, but theoretically you could also fly a jetliner or perform surgery on a friend. But unless you are a pilot or trained surgeon, neither of these activities is a good idea. When you get into an airliner, you expect a well-trained and competent pilot. It’s the same with patents. There are large number of rules and procedures that must be followed. You need competent counsel to file and prosecute your patent application.
Don’t get a DIY book (they probably exist) and wing-it. If you can’t afford competent patent counsel, you probably can’t afford to develop, manufacture, and market your invention either. Even licensing a patent application requires resources. Competent patent counsel will likely not break the bank.
Patent Prosecution (Patent Examination)
After a patent application is filed, it goes into a pile on a patent examiner’s desk for examination. It typically takes (in the US) 18-30 months for a patent examiner to begin the examination process.
There are ways to speed this up this initial step in the United States. In particular, there is an accelerated examination option called “Track One” in which a patent examiner will pick up an application out of turn. This means an examiner should pick this up in about 3 months, instead of 18 months (or more). There is a fee required.
During examination, a patent examiner, who is an employee of the USPTO (or the national patent office in other countries), reviews the application for formalities and substantive requirements. The substantive requirements necessary to get a patent are:
1. Do the claims recite patentable subject matter? (35 USC §101)
2. Are the claims novel? (35 USC §102)
3. Are the claims non-obvious? (called “inventive” in international patent applications and some other countries) (35 USC §103)
4. Does the application meet the written description requirement? This includes enablement and definiteness. (35 USC §112)
During the examination, the examiner will almost always issue at least one patent rejection. In rejection, the examiner must write the reasons she/he believes the claims do not meet one or more of the substantive patent requirements.
Applicants have six months to respond to a rejection, or the patent application lapses. However, in the US, the late fees are required if the applicant does not respond within three months. The response must be in writing and must contain specific arguments addressing the arguments of the examiner. The claims can be amended at this stage, but the rule against adding new matter still applies and the claims must stay within the scope of the specification as originally filed. There is a way to add new information to a patent application using an “inventor’s declaration,” which can be used to add, for example, experimental data not in the original application or some other clarifying information, as long as the material is within the scope of the original specification.
For the basic filing fee, a patent applicant is entitled to two rejections, called a “non-final rejection” and a “final rejection.” If the applicant is still working with the examiner after a final rejection, it is possible to pay fee called a “Request for Continued Examination” and continue the examination.
Allowance and Issue
When the examiner is convinced that the patent application meets the substantive requirements, a notice of allowance will issue, and the applicant must pay issue fees. A few months after that, the patent will issue. After the patent issues, the patent owner has all the benefits of an issued patent as noted above so that it can be a very valuable asset.
Contact NYC Non-Provisional Patent Application Lawyer Francelina Perdomo for a Case Assessment
Consulting with a NYC Non-provisional patent applications Lawyer is a critical step in protecting the value of your property that should only be performed by qualified and experienced professionals like those at Perdomo Law.
Please contact us for a case assessment.
Additional References
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