Choosing an Attorney for a Utility Patent
Strong patents form the backbone of intellectual property protection. When it comes to filing for utility patents in particular, certain considerations must be taken into account that differ from other patent filings.
Jeff Streets, a highly experienced IP attorney, speaks with us on the necessary steps involved in obtaining a utility patent and the requisite skills to look for in hiring a patent attorney for the job.
To begin with, what distinguishes a utility patent from other types of patents?
A patent is a type of property that gives the patent holder the right, for a limited period of time, to exclude others from making, using, selling, offering to sell, or importing the subject matter that is within the scope of protection granted by the patent. If the subject matter is a new and useful process, machine, article of manufacture or composition of matter, or any new and useful improvement thereof, then the patent is referred to as a ‘utility’ patent. In other words, a utility patent grants a property right in an inventive method, apparatus or composition.
By contrast, a ‘design’ patent may be granted for a new, original and ornamental design for an article of manufacture. The word ‘ornamental’ means that the property right is directed to the appearance of the article, rather than the functionality of that article. Accordingly, an owner of a utility patent could stop another person from making a product that provides the patented functionality regardless of the appearance, but an owner of a design patent could only stop a person from making a product with the patented appearance.
A plant patent may be granted to whoever invents or discovers and asexually reproduces any distinct and new variety of plant.
How broad can the invented process covered by a utility patent be? Does this breadth of coverage vary significantly between sectors?
The term ‘breadth of coverage’ is often used to refer to the scope of the claims in an issued patent. Since it is the written words of the claims that describe the scope of the property right conferred by the patent, the breadth of coverage of a utility patent is determined by interpreting the scope and meaning of the claims. Drafting an appropriate set of claims requires experience, skill and strategy in order to accomplish two critically important and competing objectives.
The first objective is to write claims that describe features that are new, useful and non-obvious relative to existing publicly available information (aka ‘prior art’) so that the claims will be allowed to issue in a patent. The second objective is to write those same claims without any unnecessary details so that the property right enables the patent holder to effectively deter others from making, using or selling articles or using processes in competition with the patent holder.
The scope of the claims in any patent is a function of both the prior art and the manner in which the claims are written to emphasise and focus on the new, useful and non-obvious features of the invention.
Drafting an appropriate set of claims requires experience, skill and strategy in order to accomplish two critically important and competing objectives.
Please describe the process involved in obtaining a utility patent. What are the key steps involved?
The crucial first step toward obtaining a utility patent is for the inventor to prepare an invention disclosure. The patent attorney is responsible for preparing the patent application to meet the legal requirements of the United States Patent and Trademark Office (USPTO) and implement a suitable claim strategy, but the quality of a patent application is improved if the inventor or applicant provides a complete and detailed disclosure of the invention and its various embodiments. The use of drawings is strongly encouraged. As part of the patent application, the attorney will prepare a set of claims that vary in scope and serve as a series of patentability questions.
After the patent application has been finalized to the satisfaction of both the applicant and the attorney, the application is filed with the USPTO. The USPTO will assign a serial number and filing date, then notify the applicant of any missing parts, such as an inventor’s declaration. After a period of several months, the USPTO will assign a patent examiner that will search for relevant prior art and provide the applicant with an office action describing any rejections made against the claims. The applicant must file a response addressing all of the rejections within a period of about three months.
Next, the patent examiner will send out either a final office action or a notice of allowance, where the final office action may either maintain the earlier rejections or set out new rejections that may have been necessitated by the applicant’s claim amendments. The applicant has the option to appeal any final rejections or continue working with the patent examiner by filing a request for continued examination, but the process is intended to lead to a conclusion by the final office action or any response to the final office action.
Why is it worthwhile to retain a patent attorney during this process? What obstacles can they help to overcome?
An experienced patent attorney that focuses on patent preparation and prosecution will prepare the patent application with a view toward avoiding the many potential rejections that can be made against an application. For example, the patent application must include a written description that describes the invention with sufficient detail to enable a person having an ordinary level of skill in the art to make and use the invention without undue experimentation. A patent application with broad claims may require a broad description, including multiple embodiments.
Furthermore, the claims themselves must convey a clear and definite meaning while being directed to patent eligible subject matter that is new, useful and non-obvious. Each of these requirements is the applicant’s responsibility and failure to meet any one of these requirements may prevent the patent application from ever resulting in an issued patent. It is critical to address these issues during preparation of the patent application because the applicant is prohibited from adding new matter to the patent application after filing.
An experienced patent attorney that focuses on patent preparation and prosecution will prepare the patent application with a view toward avoiding the many potential rejections that can be made against an application.
How does an effective utility patent attorney advocate for an invention’s patentability before the USPTO?
To be an effective advocate, a patent attorney must have a deep understanding of both patentability standards and the relevant technology of the patent application. It is also necessary to determine whether a rejection of the claims is based upon a logical fallacy, an improper patentability standard, a failure to address every limitation of the claims, an unreasonably broad or improper interpretation of the claims, an incorrect understanding of the prior art, and similar errors. These types of improper rejections should be rebutted with legal arguments supported by legal citations and/or technical explanations supported by citations to the prior art or the applicant’s specification and drawings.
If a claim rejection is determined to be valid, then it may be necessary to submit claim amendments closely based on the applicant’s specification and determined to narrowly distinguish the claims from the prior art. Furthermore, if the patent examiner has made a clear error and will not withdraw a rejection, then it may be a successful strategy to file an appeal. Patent examination practice and procedure is a very specialised endeavour and there is no substitute for knowledge, experience and ability.
What specialised skills and professional experience should be sought when looking for an ideal utility patent attorney?
A person may not represent an applicant for patent before the USPTO unless they are in good standing on the USPTO’s register of patent practitioners. In addition to this requirement, you should look for a patent attorney whose practice focuses on patent preparation and prosecution and who communicates with you in a clear and prompt manner. Applicants with little or no experience with patent preparation and prosecution will heavily rely upon the patent attorney’s ability to communicate the procedures, objectives and strategies that must be understood to manage the prosecution of their patent application.
A patent attorney should also study your invention disclosure and quickly exhibit a solid understanding of your invention. The patent application is a technical document as much as it is a legal document. So, the patent attorney must have a solid understanding of the invention and an ability to prepare a comprehensive and clear written description of the invention. For many inventions, the patent application will also require drawings that illustrate the claimed aspects of one or more embodiments of the invention.
Certain inventions may benefit from additional case-specific efforts. In one example, a chemical process or formulation may benefit from numerous examples or experimental results to provide enablement for embodiments across a broad range of component concentrations or show criticality of a specific ingredient, concentration or process condition. In another example, a software-related invention may benefit from a review of recent patent ineligibility decisions to identify claim limitations and specification support that will overcome abstract idea rejections.
Your patent attorney should be able to identify these situations and request additional information that may improve the likelihood that you will be granted a patent for your invention.
Jeff Streets
20319 Corbin Creek Drive, Cypress, TX 77433, USA
Tel: +1 281-732-1945
Jeff Streets has been a registered US Patent Attorney for over 29 years, with a focus on US patent application preparation and prosecution. Jeff has handled patent prosecution for large and small companies and independent inventors, and understands the different roles necessary to best serve these distinct client types. In addition to 29 years of experience in patent preparation and prosecution, Jeff has earned a Bachelor of Science in Chemical Engineering, a Masters of Business Administration, and a law degree.
Streets Lawfirm, PC provides patent application preparation and prosecution services covering a wide range of technologies, including computer software, mobile apps, computer systems, mechanical devices, chemical and electrochemical processes, chemical formulations and compositions, and oil field tools and processes.
