© 2024 Wayne J. Colton, Inc.
San Antonio, Texas

Patents

Capitalizing on your ingenuity ...

TL;DR

  • patents protect new and useful ideas, and some ornamental designs
  • patents give the owner monopoly-like rights to make, use and sell the invention
  • an inventor has no rights in their invention unless applied for and granted
  • successful examination requires a good application, which cannot be changed
  • an international patent application can be based on an earlier U.S. application
  • our patent services

About Patents

Patents are about innovation — introducing new ideas, methods or things to advance some field of endeavor. Many inventions involve changes to improve an existing article or process, while others involve an entirely new article or unforeseen process. Inventions of this type are protected by utility patents.

There are also design patents and even plant patents. Design patents protect innovative visual appearances of articles. Although sometimes overlapping copyright protection, a design patent only protects an ornamental design as either applied to or embodied in some article.

The owner of any type of patent is granted powerful rights to keep others from making or using the invention anywhere in the United States or its territories or possessions. The patent rights also include the rights to keep others from selling the invention, or even offering it for sale. If the invention is a process, these rights extend to any product made by the process. Finally, the owner of a patent also has the right to prevent importation of the invention into the United States or its territories or possessions.

Depending on the type of patent, these rights can exist for up to 20 years from the filing date of the application, or 15 years from the date the patent is granted. The extensive rights provided by a patent are not just powerful, they are also sweeping. Although not technically a monopoly, patent rights are very often referred to as the “patent monopoly.” As a counterbalance, an inventor’s right to pursue a patent is fragile and very easily lost.

At least some trademark rights may be obtained through simple use of a mark. Similarly, at least some copyrights may be obtained by simply capturing the work, for example on paper or in a recording. An inventor, on the other hand, has no patent rights in the invention unless they are applied for and granted by the federal government.

To obtain patent rights in an invention or discovery, a properly prepared application must be filed with the U.S. Patent and Trademark Office. This application must be filed before any act that is considered a waiver of patent rights takes place. Most commonly, patent rights are lost due to the sale or offer for sale of an item including the invention or by disclosure of the invention to others. This issue is in reality complicated, however, and any question regarding waiver of rights should be addressed to a registered patent attorney.

Before rights are granted, the patent application must pass a strict examination to verify that the invention is new and not obvious. During this examination the patent applicant is given the opportunity to participate by responding to any negative action taken by the patent office. This generally entails providing evidence and making legal arguments that the invention is patentable. All communication with the patent office must be in writing.

Success is almost always determined by the details of the invention. These details must be found in the application as originally filed. The examination does not consider features of the invention that are not disclosed in the application, and the description of the invention cannot be changed after the application is filed. A properly prepared and complete application is critical.

International Rights

An international application can be filed as the original U.S. application or at the same time as a regular U.S. filing. The international application may also be filed after the regular U.S. application is filed. If so, it must be filed within a limited time period, which varies by type of invention, for the international application to be examined as if it had been filed on the same date as the U.S. application.

It is important to have the priority of the earlier application because many foreign countries have very strict laws regarding disclosures prior to filing. If the international application is not linked to the original application any disclosures, sales or offers for sale occurring after the U.S. filing and before the international filing will be used against the later filed international application in many countries.

Patent Attorney Services

Patent Applications

At the core of the patent practice we write patent applications for both U.S. and international filing. This entails working with the inventor to ascertain the necessary details of the invention, and preparing a thorough description of the invention and how it is made and used. We will also prepare a set of patent claims, which are the legal definitions of the invention and a very important part of the application.

As we approach filing, we ensure that any change in ownership from the inventor is appropriately documented and any information required to be submitted to the USPTO is prepared. Once the application is finalized, we submit it and all related documents to the USPTO, at which time the invention is “patent pending.”

Once filed, we monitor the application and respond to any actions issued by the USPTO, which generally entails preparing legal arguments for granting a patent. During this process we may ask the inventor or owner for a sworn statement or declaration of facts supporting our arguments. If necessary we will appeal an examiner’s final decision to the USPTO’s Patent Trial and Appeal Board, and if need be we are able to appeal the Board’s decision in a federal appeals court in Washington, D.C.

If we also have an international patent application filed with the World Intellectual Property Organization (WIPO), we will have the same interactions with the WIPO examiner. There is no appeal of a WIPO examiner’s determination, but no final decision is made during this examination.

We also coordinate with a network of foreign patent attorneys and agents as they prosecute corresponding applications in their own countries. To prevent one proceeding conflicting with another we guide our foreign counsel as they interact with their national patent offices.

Contact Us now to discuss filing a patent application with a registered patent attorney.

Protecting Patent Rights

In addition to preparation, filing and prosecution of U.S. and international patent applications, our patent practice includes developing strategies for protecting potentially patentable subject matter from conception of the idea to filing of the application. For business clients this aspect of the practice will often involve establishing intellectual property policies enforced through employee agreements regarding ownership of inventions.

Where IP policies include timelines or procedures for disclosing inventions we can prepare invention disclosure forms for the use of employees, thereby ensuring critical information is well documented. In cases where patent rights are to be owned by a company or a person who is not the inventor we will prepare an assignment of rights and other documents to secure ownership and ensure that the inventor is unable to improperly interfere with the prosecution of the patent application.

Contact Us now to discuss pre-filing protection of inventions with a registered patent attorney.

Patent Licenses and Sales

A typical patent license is a multifaceted agreement containing highly tailored terms reflecting the specific estimations of the parties regarding the present and future market for the licensed product. Consequently, the typical patent license is also a generally unique document.

A properly prepared patent license includes many terms that work together to ensure both the performance and the success of each party. It also includes provisions that make clear what is to happen if a party falls short of expectations, and if or under what circumstances the agreement may be terminated. We are available to help clients negotiate favorable terms, and to then prepare a patent license agreement that ensures client expectations are met.

A patent purchase agreement is much more straightforward than a patent license. That said, there are steps we can take to help ensure that the seller has clear title to the patent and that the buyer’s rightful ownership of the patent is protected.

Contact Us now to discuss patent licenses or patent assignments with a registered patent attorney.

Patent Disputes

In the event of a patent dispute, we are prepared to take action to settle the matter. If it cannot be settled amicably, however, we are also prepared to litigate the matter in a federal court. If appropriate, we may also pursue relief through USPTO administrative proceedings.

These proceedings may include filing a petition for an “inter partes review” or for a “post grant review,” each of which is a proceeding that challenges the validity of a newly granted patent. Where a “substantial new question of patentability” exists a request for reexamination of a patent can be filed up to six years after the patent expires. Where the same invention is claimed by different parties, it may be possible to challenge an earlier filing through a “derivation proceeding.”

Contact Us now to discuss patent litigation with a registered patent attorney.

Patent Searches and Opinions

A novelty search can be carried out prior to preparing a patent application for filing, which can include an opinion based on the search as to whether the searched for invention is likely to be patentable. In-depth searches can also be carried out as the basis for evaluating the validity and scope of a patent in the context of litigation, sale or license of a patent, or prospective manufacture of a patented product. In preparing an infringement opinion, the in-depth search and validity opinion is important to ensuring the scope of each patent claim is correctly assessed. We can conduct any level of search and render a corresponding opinion as requested by a client.

Contact Us now to discuss patent searches, patentability opinions, or patent validity opinions with a registered patent attorney.

Other Patent Matters

If you have a different patent issue Contact Us now to discuss it with a registered patent attorney. It is very likely that we can help you.