There are three different types of patents: utility patents, design patents, and plant patents. Utility patents protect how something works, including a system structure and a method implemented within such a system, and design patents protect the ornamental elements of an article of manufacture, the ornamental elements not including the functional elements of the article. Lastly, Plant patents protect new types of plants produced by cuttings or other nonsexual means.
How Long Does Patent Protection Last?
The utility and plant patents term is twenty years from the patent application’s earliest priority date, excluding a provisional application priority date. The term of a design patent is fifteen years from its filing date.
Will My Patent Be Valid In Every Country?
No. Patents are territorial. You have to apply for a separate patent in each territorial region where you would like patent protection.
To protect your patent in multiple territorial regions, you have the option of claiming priority to the first filing of the patent. For example, suppose you file a utility patent application in the U.S. In that case, you have one year from the filing date of that U.S. utility patent application to file the same application in other territories while claiming priority to that U.S. utility patent application. Similarly, suppose you file a design patent application in the U.S. In that case, you have six months from the filing date of that U.S. design patent application to file the same application in other territories while claiming priority to that U.S. design patent application.
Claiming priority to an earlier application provides an earlier priority date for the later application for those disclosed elements common to both applications. In this way, you can prevent your earlier application from being cited as prior art against your later application.
As an example, let’s say I applied for a utility patent in the U.S. and then manufactured the product associated with that patent application in China. I should apply for the same patent in China within one year of filing the U.S. patent application, the China patent application claiming priority to that U.S. patent application. I would then prosecute the patent applications in China and the U.S. separately and hopefully get a patent issued in each of these territories, namely the U.S. and China. By claiming priority to the U.S. patent application, the U.S. patent application is no longer prior art to the China patent application. Each issued patent may then be enforced in its corresponding territory, namely the U.S. and China.
What Is A Provisional Patent Application, And Do I Need To File One?
A provisional patent application can be considered a placeholder. It is a patent application that doesn’t yet have all the requirements of a non-provisional patent application. The drawings may be informal, and claims (a set of sentences at the end of your application that define the metes and bounds of your protection) are not required. A provisional patent application could be submitted containing only the specification and the informal drawings. However, the specification should be as complete and thorough as possible. You benefit from the provisional application’s filing date only for what is disclosed within that provisional application.
You have one year from the provisional application filing date to file a non-provisional patent application that claims priority to that provisional application. The provisional application is itself never examined and goes abandoned after one year.
Once submitted, the non-provisional patent application is examined by the U.S. Patent and Trade Office (PTO) based on the earlier filing date of the provisional application. The priority date is crucial since it determines what prior art may be cited against the non-provisional patent application.
Provisional applications are often used as a placeholder while an inventor decides whether to pursue an invention or while seeking funding to manufacture the invention. Provisional patent applications may also provide protection during the different development phases of a single invention. Specifically, you may file multiple provisional applications covering each of the different development stages and then file a single non-provisional patent application that claims priority to all of the provisional patent applications. As such, the non-provisional application may have multiple priority dates covering the different disclosure in each provisional application.
Of course, an inventor does not need to file a provisional patent application. Instead, a non-provisional patent application may be filed directly, fully disclosing the invention with formal drawings and claims.
What Can I Do If I Believe My Patent Is Being Infringed?
When speaking to a client who believes their patent is being infringed, the first thing I suggest is to take a close look at the product you believe may be infringing. It is important to remember that protection is based on the claims recited in your issued patent, not on the specification as a whole. Carefully inspect the infringing product to ensure that every element recited in the independent claims is in the infringing product exactly as recited or as obvious variation thereof.
If all the elements recited in your independent claims are present in the product in some form, then the product may be infringing on your patent. In that case, the first thing you can do is provide notice of the infringement to the product owner in the form of an informative letter or an actual Cease-and-Desist letter.
An informative letter should provide information on your patent and how you believe the product may infringe on the claims of that patent. It should include a copy of the patent. Most importantly, the informative letter should not threaten litigation. Such a threat would provide the alleged infringer with standing to sue in court for summary judgment as to that infringement. Hopefully, the accused infringer will reply in a manner that provides for negotiations.
If there is no reply or the reply precludes negotiations, a cease and desist letter may be the next step. The cease and desist letter differs from the informative letter in that it demands that the accused infringer stop the infringement and provides financial information relevant o the infringement. The cease and desist letter may also threaten litigation if the accused infringement does not adhere to these demands.
Lastly, if all else fails, the patent holder may file suit against the accused infringer in a federal court.
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