Areas of Practice > Patents

Patents

Patents are our strong suit. Patent law is what we do. Our primary emphasis lies in patent prosecution. We at Lerner Greenberg Stemer LLP have years of experience filing and obtaining patents in the United States and around the world. The U.S. patent system distinguishes among three different types of patents:

• Utility Patents are directed to a useful process, a machine, a manufacture, or a composition of matter. Patents may be awarded to improvements. A “process” is the same as a “method.” The term “manufacture” refers to articles which are made.

• Design Patents protect original and ornamental designs for articles of manufacture. Designs do not protect the function but the looks of a thing.

• Plant Patents protect asexually reproduced, distinct varieties of plants, including cultivated spores, mutants, hybrids, newly found seedlings.

Foreign patent systems define additional patent rights. These include the utility model or the German Gebrauchsmuster.

Opinions/Searches:
A considerable part of our work deals with expert opinions. We keep up-to-date on all developments in the intellectual property (IP) law arena, and we are able to provide timely advice concerning all such developments. We prepare infringement opinions. clearance opinions, freedom-to-operate searches, memoranda of IP law...

Patent-Eligibility:
Not everything is patentable. An abstract idea is not patentable. A law of nature is not patentable. Something that is not useful is not patentable and, in some cases, even if something is useful, it may not be patent-eligible. See our detailed memo on "Bilski."

Patents are Defensive in Nature:
A patent to an invention does not give you the right to make or use the invention. A patent is a defensive right. It gives you (i.e., the patent owner) the right to exclude others from making, using, selling, or importing the patented invention in the United States. In contrast with many foreign jurisdictions, there is no requirement for a patent holder in the United States to actually make or use the invention. In other words, a U.S. patent may be used to obstruct the coming to market of an invention during the term of that patent.

Publication:
Patent applications are published 18 months after the filing date. In order to patent an invention, you need to describe it in detail. Since the description of the invention will become public, it is not possible to keep it secret. If you wish to keep your idea to yourself, you should consider squirreling it away in a drawer, or keeping it confidential by way of a Trade Secret.

Provisional Patent Application:
The application may first be filed in the form of a provisional application. This is not really an application for a patent, because it will not be examined and no patent can issue from a provisional. Consider it a time stamp, instead. It will establish two things for you: it will be an official acknowledgement that you had the invention/idea at least as early as when you deposit the provisional application, and it will establish your right of priority with regard to foreign and international applications.

Non-Provisional Patent Application:
This is the real application, the application that will be examined and, hopefully, mature into a patent. The non-provisional patent application is filed together with an oath or declaration by the inventor stating that he/she is indeed the inventor. The application is then subjected to an examination by a patent examiner at the Patent Office.

Examination:
The patent examiner reviews the application in light of the formal requirements (see below). The specification must contain an “enabling” disclosure of the invention and the claims must be clear and definite. The examiner also compares the claimed invention with the prior art (earlier patents and other technical literature). If the invention is not new or it is obvious over the prior art, the patent examiner refuses to issue a patent.

Office Action:
Upon completing her review, the patent examiner issues an Office action – usually a rejection of the application. The most common rejection in the first Office action is based on the patent examiner’s allegation that the claims define something that is not new or something that is an obvious variation of something that is known form the prior art.

Response/Amendment:
The applicant answers the Office action by responding to each of the examiner’s objections, either by pointing out the examiner’s errors or changing the application to satisfy the objections. It is often necessary to add limiting language to the claims so as to remove the prior art rejections. The additions must be within the bounds of the original specification, i.e., no “new matter” can / should be added.

Notice of Allowance/Issue of Patent:
When the patent examiner is satisfied that all requirements have been met, the claims are allowed. Subject to the payment of an issue fee, the Patent Office issues a patent.

Patent Term - Maintenance Fees:
A utility patent may be valid for a maximum of 20 years, counted from the date of the first application. Maintenance fees are due every four years. If these fees are not paid, the patent expires. This means that the public is then free to use the invention. Design patents are valid for 14 years, counted from the date of issue. No maintenance fees are due for design patents.

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