Inventors need to know a few potential pitfalls in the development of an invention before a patent application is filed. To avoid any problems, inventors should contact a registered patent practitioner with questions and/or ask for advice on how to proceed. No question is too ridiculous to ask and developing a relationship of trust with a practitioner benefits the inventor throughout the patent process.
Error 1. Expecting a Fast Process
The patent process at the U.S. Patent and Trademark Office (USPTO) may take a significant amount of time. An application may wait 1-3 years from the date of filing before an examiner performs a prior art search and issues an office action. Most applications typically will receive at least one office action that rejects parts of the application and/or the claims. Even when the prior art found by the examiner is not exactly a perfect match for your invention, examiners are known to issue a prior art rejection with an expectation that the applicant will put into the record a description of the differences between the prior art and the claimed invention. The stated differences become a position of the applicant for the life of the patent, thus preventing applicants from asserting later that the invention is something else altogether.
A response to an office action is typically due within 3 months from the date the office action is issued (this act use to happen by mail, but most communications with attorneys and examiners now is performed electronically). The due date can be extended up to 3 additional months with payment of additional fees to the USPTO. An examiner typically issues a response within 2-3 months of the filing by an applicant. This time period is monitored by the USPTO; however there are no strict deadlines that must be met by the examiner. If the time the application is waiting for an examiner becomes noticeably long, a patent term extension may be granted to move the expiration of an issued patent to a future date to allow the applicant to recapture some or all of this delay.
Error 2. Contacting a Patent Practitioner Too Late
An inventor faces competing factors when determining when to file a patent application. Because the patent system grants patents using a first-to-file criteria, inventors may want to file an application as soon as possible. This approach is highly recommended. However, an application must describe how to make and use the invention that is being developed. Determining exactly when a design of an invention has reached a mature state to permit filing of an application is sometimes difficult to predict. A patent application that requires additional details to be described about features of a design being actively developed may result in a need to file a second application to include these new details in order to describe how to make and use the invention.
Filing a second application, known as a continuation-in-part (CIP), adds expense to the patent process. The CIP application may use more than one filing date to determine what information qualifies as prior art. Most patent practitioners will gladly help guide an inventor in navigating the process of when to file or how many applications are filed over time.
Error 3. Waiting Too Long to File an Application
Applicants must be careful when they perform certain activities so these actions by the inventor do not preclude granting a patent. For example, publishing a description of the invention that makes its details available to the public can be considered prior art that may be used to reject an application and/or invalidate a patent. Any public disclosure of the invention should be described to a patent practitioner to determine when an application must be filed or the invention is barred from becoming a patent. Applicants need to realize that posting information (text, photos, etc.) onto the Internet, sharing marketing materials or technical requirements, presenting information at a conference or trade show, and offering the invention for sale may trigger these issues.
In the U.S., an inventor generally may file an application within one year from one of these triggering events without barring the application from becoming a patent. In some other countries, the application may require “absolute novelty” in which an application must be filed BEFORE any of the above events. Many applicants and their attorneys will try to avoid these events for a host of reasons. Sharing any of the disclosed information under a Non-Disclosure Agreement (NDA) may provide a remedy. Informing your patent practitioner of these events before they happen and allowing recommended actions to be taken before the events occur may save significant efforts after the fact. Once again, active communication with your patent practitioner is recommended.
Error 4. Claiming Patent Rights Too Soon
Applicants should realize that patent rights do not exist until the Tuesday morning when the USPTO issues their patents. Additionally, the patent rights are defined by the claim language used in the patent, not the claims that are originally filed, and not all of the details described in the application. Anyone asserting patent rights they do not yet possess may be creating a cause of action for the party being threatened and may enable the filing of a lawsuit that can be expensive to defend. The safest way to handle these situations is to assert a patent after it issues and to inform the potential infringer of the relevant claims without an accusation of infringement until such a determination is made by a qualified patent attorney.
Applicants may wish to inform competitors of the existence of a patent application in a hope to prevent a competing product from being developed and sold. Great care should be taken in how this notice is given with a friendly request to inform the competitor of the existence of the pending application that may issue in the future where the applicant intends to enforce any rights once they are granted. Once again, communicating with your patent practitioner is advised to provide the desired notice without creating additional problems. When in doubt, contact the attorney.
Other issues may arise that an attorney will recognize and provide recommendations on how best to proceed. Most situations may be mitigated if handled before problems arise. The best advice is to not act rashly and consult knowledgeable practitioners when in doubt.