Intellectual Property Guides

http://www.uspto.gov/ – The only official website for the U.S. Patent and Trademark Office.

http://www.uspto.gov/main/patents.htm – The main webpage for U.S. Patents at the U.S. Patent and Trademark Office.

http://www.uspto.gov/web/offices/com/iip/index.htm – A section of the U.S. Patent and Trademark Office’s Web site devoted to independent inventors and offers a broad range of material covering most aspects of the patent and trademark process.

http://www.uspto.gov/main/faq/index.html – The FAQ webpage maintained by the U.S. Patent and Trademark Office.

http://www.uspto.gov/patft/index.html – Patent and Published Patent Application Searching at the U.S. Patent and Trademark Office.

http://www.google.com/patents – U.S. Patent Searching maintained by Google®.

http://www.pat2pdf.org/ – Website providing free downloads of U.S. Patents and U.S. Published Patent Applications.

http://portal.uspto.gov/external/portal/pair – The U.S. Patent and Trademark Office public Patent Application Information Retrieval (PAIR) website to review the status and file history of pending and issued patent applications.

http://www.uspto.gov/web/offices/pac/mpep/index.htm – Manual of Patent Examination and Procedure. A manual used by patent examiners to evaluate your patent application.

http://www.uspto.gov/web/offices/pac/dapp/pctlegaladminmain.html – The U.S. Patent and Trademark Office PCT webpage.

A patent is a legal written instrument granting a property right to the holder from the U.S. Federal Government. This property right or patent allows the holder to prevent competitors from manufacturing, using, selling or importing the invention covered by the patent. A patent also allows the holder to obtain damages from competitors who engage in such behavior. U.S. Patents are originally obtained in the name of the inventors; however Patents are freely transferable or may be licensed. Licensing agreements with third parties may result in significant royalties.

The term of a patent is 20 years from the patent application filing date subject to the payment of maintenance fees. Under certain circumstances, patent term extensions or adjustments may be available.

By filing a U.S. patent application, one may designate a device as “patent pending” to the public. This is an effective marketing tool and provides notices to any competitors.

The holder of the patent must enforce the patent in the Courts without the aid of the U.S. Patent and Trademark Office.

Once a patent application is filed, it is reviewed for any informality and allocated to a specific technology center having charge of the areas of technology related to the invention within the U.S. Patent and Trademark Office. The patent application is then assigned to a specific “patent examiner” within the technology center for examination. The patent examiner reviews the patent application in great detail. The patent examiner then issues his or her decision on patentability and reasons for that decision in a first “office action.” In the vast majority of patent application, the patent examiner rejects all or most of the patent application claims.

To overcome these rejections the applicant and his designated agent may present arguments in favor of patentability, including but not limited to, amending the original patent application to overcome the rejections and more clearly distinguish the invention over the prior art. However, any amendment filed must have full written support in the original patent disclosure. Any material contained in the amendment that does not have full written support in the original patent disclosure may receive a “New Matter” rejection from the patent examiner.

After the applicant has submitted a reply to the first “office action,” the patent examiner reconsiders the patent applicant in light of applicant’s reply. The patent examiner may allow the patent application or issue a second “office action” to which the applicant may also reply.

At some point during the prosecution of the patent application, the patent examiner may issue a “final” office action as soon as the second office action. Once the patent examiner has issued a “final” office action, the applicant may continue to pursue the invention in the U.S. Patent and Trademark Office by;

1. Appealing the patent examiner’s decision to the Board of Patent Appeals and Interferences by submitting a Notice of Appeal and a brief in support of the applicant’s position;
2. Filing a Request for Continued Examination (RCE) with a reply to the “final” office action; or
3. Filing a “continuation application.”

Once all the patent examiner’s rejections have been overcome, the patent examiner will issue a Notice of Allowance. This Notice gives the patent holder three months to pay an issue and publication fee. Once these fees are paid, a U.S. Patent will issue in two to three months.

Once the Patent has issued, the holder of the Patent must pay maintenance fees on the 3.5 year, 7.5 year and 11.5 year anniversaries to maintain the property rights granted by the U.S. Patent.

In order for an invention to be patentable it must be novel as defined under the patent laws. An invention is not novel, and hence not patentability, if:

• A patent may not be obtained if the invention was known or used by anyone in the United States other than the inventors or their agents before the patent applicants made the invention;
• A patent cannot be obtained if the invention was patented or described in a printed publication in the United States or a foreign country before the patent applicants made the invention;
• A patent cannot be obtained if the invention was patented or described in a printed publication in the United States or a foreign country more than one year prior to filing the U.S. patent application; or
• A patent cannot be obtained if the invention was in public use or on sale in the United States more than one year prior to filing the U.S. patent application.

Therefore, if the inventor describes the invention in a printed publication or uses the invention publicly, or places it on sale, he/she must apply for a patent before one year has gone by, otherwise any right to a patent will be lost.

Even if the invention is not identical to anything known or published previously, a patent may still be refused if the differences would be obvious. To sustain this rejection, a patent examiner must show that the invention would have been obvious to a person having ordinary skill in the area of technology related to the invention before the applicant made the invention.

There are several different types of U.S. patent applications.

1. UTILITY NON-PROVISIONAL PATENT APPLICATION – A utility non-provisional patent application is the most common patent application. It is the one described above. This is the patent application for any useful invention that issues into U.S. Patent if allowed by the U.S. Patent and Trademark Office. A utility patent application includes a written description of the invention, drawings explaining the invention, an oath or declaration, fees, and claims. The claims are written to particularly point out and distinctly claim the subject matter which the applicant regards as the invention.
2. PROVISIONAL PATENT APPLICATION– A provisional application provides the means to establish an early effective filing date in a patent application and permits the term “Patent Pending” to be applied in connection with the invention. This type of patent application is not examined and expires after 12 months. In order to obtain a patent on the invention, a utility non-provisional application must be filed “claiming the benefit” of this provisional patent application within the 12 month pendency period. The 12-month pendency for a provisional application is not counted toward the 20-year term of a patent granted on a subsequently filed non-provisional application which claims benefit of the filing date of the provisional application.
3. DESIGN PATENT APPLICATION – A design patent application protects the ornamental design of products and not their utility functions. Any design patent has an enforcement period of 14 years from the application’s filing date.

The fees for filing patent applications may be reduced for “small entities” in the U.S. Patent and Trademark Office. Small entities include individual inventors, small businesses, universities and non-profit organizations.

Publication of patent applications occurs after the expiration of an 18-month period following the earliest effective filing date or priority date claimed by an application. Following publication any member of the public may request access to the entire file history of the patent application.

The requirements for obtaining a patent in a foreign country vary in accordance with the patent laws of that country. New England Patent & Trademark is happy to act as a liaison with foreign patent attorneys to help you obtain foreign patent protection.

An applicant may individually apply for patent protection in each foreign country subject to the requirements of that country. If an invention is made in the United States, it is necessary for an application to obtain a foreign filing license before filing any foreign patent applications. The filing of a U.S. patent application constitutes the request for a foreign filing license and the granting or denial of such request is indicated in the filing receipt mailed to each applicant. After six months from the U.S. filing, a license is not required unless the invention has been ordered to be kept secret.

In addition, the United States adheres to the Patent Cooperation Treaty with many other countries.

The Patent Cooperation Treaty (PCT) allows an applicant to file a single International Application. This International Application designates various countries in which the applicant may intend to seek patent protection.

The International Application does not issue into any foreign patents. It does provide 1) a standardized application format; 2) a search of the invention for patentability; and 3) a longer time period for applicants to decide whether to file national applications within each country.

These national application or “national stage” applications may be filed for one or all countries designated by the International Application. Each national stage application is subject to the requirements of that country, including separate fees and translations.

Please note that this page contains guidelines for patent applications in the U.S. This information contained on this page is not legal advice. This information does not create an attorney-client relationship. New England Patent & Trademark highly recommends that anyone interested in obtaining a patent or trademark seek the counsel of a registered patent agent or patent attorney. We are happy and available to provide such counsel.

http://www.uspto.gov/ – The only official website for the United States Patent and Trademark Office.

http://www.uspto.gov/ – The main webpage for U.S. Trademarks at the U.S Patent and Trademark Office.

http://www.uspto.gov/main/faq/index.html – The FAQ webpage maintained by the U.S Patent and Trademark Office.

http://portal.uspto.gov/external/portal/tow – The U.S. Patent and Trademark Office public Trademark Document Retrieval searchable database website to review the status and file history of pending and registered trademarks.

http://www.uspto.gov/web/offices/tac/tmlaw2.html -The U.S. Trademark Law Rules of Practice and Federal Statutes.

http://tess2.uspto.gov/tmdb/tmep/ – The Trademark manual of examining procedure used by examining attorneys when evaluating your trademark application.

http://tess2.uspto.gov/netahtml/tidm.html – The U.S. Patent and Trademark Office searchable database of acceptable goods and services descriptions for your trademark.

A trademark is a word, phrase, symbol or design, or a combination thereof that identifies and distinguishes the source of the goods. A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a product.

Registration of your trademark is not required. Anyone can establish rights in a mark based on legitimate use of the mark in commerce.

However, owning a federal registered provides the following advantages:

• It provides public notice of your claim of ownership of the mark.
• It provides a legal presumption of your ownership of the mark.
• It provides a legal presumption of your exclusive right to use the mark nationwide on or in connection with the goods and/or services listed.
• It allows the owner to file a complaint in Federal Court concerning the mark.
• It serves as the basis for seeking mark registration in foreign countries.
• It allows the owner to file with the U.S. Customs Service to prevent importation of infringing foreign goods.

You may use the terms “TM” (trademark) or “SM” (service mark) with your mark, regardless of whether you have filed an application with the USPTO.

However, you may use the federal registration symbol “®” only after the USPTO actually registers a mark, and not while an application is pending.

No. A trademark application may be filed for a future intended use as long as the applicant has good faith intent to use the mark in commerce in the near future.

A trademark application typically takes a year and a half or so to process, during which time you are perfectly free to use your trademark.

When the application process is over, the PTO will issue a Notice of Allowance, and give you six months to start using the mark. You can even purchase a few years of extension of you need it. Thus, you can reserve a trademark for about three and a half years before you actually need to use it in public.

The term of a trademark is potentially infinite as long as the mark is being used in commerce for the good and services described in the Federal registration.

The holder of the trademark must enforce the trademark in the Courts without the aid of the U.S. Patent and Trademark Office.

Once a trademark application is filed it is assigned to an “examining attorney” at the U.S. Patent and Trademark Office. The examining attorney reviews the trademark applications for federal registration and determines whether an applicant meets the requirements for federal registration. The examining attorney will conduct a search for conflicting marks, and an examination of the written application, the drawing, and any specimen.

If the examining attorney decides that a mark should not be registered, the examining attorney will issue a letter (Office action) explaining any substantive reasons for refusal, and any technical or procedural deficiencies in the application.

If the examining attorney sends an Office action, the applicant’s response to the Office action must be received in the Office within six months of the mailing date of the Office action, or the application will be declared abandoned.

If the applicant’s response does not overcome all objections, the examining attorney will issue a final refusal.

To attempt to overcome a final refusal, the applicant may, for an additional fee, appeal to the Trademark Trial and Appeal Board (TTAB). The TTAB is an administrative tribunal within the U.S. Patent and Trademark Office.

If the examining attorney raises no objections to registration, or if the applicant overcomes all objections, the examining attorney will approve the mark for publication.

Any party who believes it may be damaged by registration of the mark has thirty (30) days from the publication date to file either an opposition to registration or a request to extend the time to oppose.

An opposition is similar to a proceeding in a federal court, but is held before the Trademark Trial and Appeal Board.

If no opposition is filed or if the opposition is unsuccessful, the application enters the next stage of the registration process. A Certificate of Registration will issue for applications based on use, or a Notice of Allowance will issue for intent-to-use applications.

After a trademark application is filed, the assigned examining attorney will search the USPTO records to determine if a conflict, i.e., a likelihood of confusion, exists between the mark in the application and another mark that is registered or pending in the U.S. Patent and Trademark Office. The principal factors considered by the examining attorney in determining whether there would be a likelihood of confusion are:

• the similarity of the marks; and
• the commercial relationship between the goods and/or services listed in the application.

In addition to likelihood of confusion (discussed above), an examining attorney will refuse registration if the mark is:

• primarily merely descriptive or deceptively misdescriptive of the goods/services;
• primarily geographically descriptive or primarily geographically deceptively; misdescriptive of the goods/services;
• primarily merely a surname; or
• ornamental.

Please note that this page contains guidelines for patent applications in the U.S. This information contained on this page is not legal advice. This information does not create an attorney-client relationship. New England Patent & Trademark highly recommends that anyone interested in obtaining a patent or trademark seek the counsel of a registered patent agent or patent attorney. We are happy and available to provide such counsel.