Utility Patent Application

Provisional patent applications (PPAs), while they can be filed quickly and at minimal expense, must be converted into a utility patent application within one year to obtain an issued patent.

A utility application can be filed even if you have not previously filed a PPA. You can also convert a PPA filed earlier into a utility filing by filing the utility request within one year after the PPA filing. This will allow you to claim the priority date of your PPA. If the PPA is correctly claimed and has sufficient details, the effective date to file the utility application will be the filing day of the PPA. This applies even if the utility was filed months after the PPA.

Table of Content

1.1 Preparatory steps before drafting your Utility Patent Application?

1.1.1  Document the invention process

1.1.2  Search for prior art

1.1.2.2    DIY patent research

1.1.3  Be aware of imperfections in the search process

1.2  Inventorship – what happens when you have multiple inventors?

1.2.1  How to fix improper inventorship?

1.2.2  How to correct typos in the name?

1.2.3  Ownership

1.3  How to protect your ownership if you hire consultants to work on your invention?

1.3.1  Consultant’s Agreement

1.3.2  Joint Ownership Agreement (JOA)

1.4  Does your employer have rights in your invention?

1.4.1  If your employer isn’t interested in your invention submission

1.1 Preparatory steps to be done before drafting your Utility Patent Application

1.1.1 Document the invention process

Although electronic records can be used as an inventor’s notes, the best option is still a bound notebook with consecutively numbered pages. This inventor’s notebook is used to record when and how you first started building it.

This is crucial because the inventor’s notebooks and corroborating evidence have been vital in proving who invented the invention. Even with the first to file system, inventor notebooks can still prove derivation.

These items are typical of a lab notebook:

• Description of the invention
• Tests and results
• Prior art research
• Illustrations of the invention

Each entry you make in your notebook should be signed and dated. In addition, you should keep your entries chronologically and make them as soon as possible after you have completed each step of the invention process.

You should keep separate print-outs, photos, or other documents in the notebook. In addition, a caption should be added to the notebook that describes the document.

Also, make sure you have a trusted witness sign every entry in your notebook. This is especially helpful for someone who brings a suit. Although you only need one witness for the trial, it is better to have at least two witnesses if one is unable to be there. Because the witness must be familiar with the field of the invention, they must also testify that they understand the contents of the notebook.

Witnesses should sign confidentiality agreements before reading your notebook. If you have met the requirements discussed above, it may be possible to protect trade secrets stored in your notebook. According to the Congressional Record dated 3 March 2011, Congress stated that inventors could file a provisional petition application to get around some of the problems with the inventor’s book. This application serves the same purpose as the inventor’s notebook. It requires a description of the invention, which includes how it works. It is also a dated document from the government, making it difficult to alter. Therefore, it will not be a costly discovery if a claim is later disputed.

1.1.2 Search for prior art

A patent search may be helpful at different stages of an invention process. A patent search can be helpful at various stages of the invention process. The patent search can also help brainstorm and help to refine your idea. Thorough knowledge of the prior art will help you to draft claims. This course will teach you how to create claims that have the proper scope, so you can get patents that are as wide as possible but still defendable.

You can search for prior art (sometimes called a patentability search) by visiting the USPTO office at Alexandria, the USPTO’s trademark and patent depository libraries across the country, or online databases.

1.1.2.1 Professional patent research

Professional patent researchers can be hired, such as an attorney or agent. Hiring a professional has the advantage that they are more familiar with the concept of novelty or obvious. This means that they/they can conduct more detailed research than a non-professional.

1.1.2.1.1 What do you give the researcher?

Before performing a patentability check, a researcher should know everything about your invention. If the researcher is not a licensed patent attorney or agent, ask them to sign a confidentiality contract. You don’t need to sign a confidentiality agreement if you work with a lawyer or agent. However, your conversations are confidential as per the law.  

Next, send your researcher a description and drawings of your invention. This should include the novel aspect of it and any drawings. Also, give a rough idea of the classes you are looking for. And finally, give deadlines. Your inventor’s notebook should be given to your researcher. However, you must keep a copy of it and remove any dates.

1.1.2.1.2 What should you expect from your researcher

After the researcher has finished, they will typically tell you what they discovered, including the classes and subclasses searched and the patents or references they found. Finally, a patent agent or attorney will give you their opinion on the patentability and validity of your invention.

1.1.2.2 DIY patent research

1.1.2.2.1 Begin with the USPTO’s research system

It is best to visit the USPTO research center. However, it is preferred because of its Exam Assisted Searching Tool (EAST). You can speak directly with examiners and other staff members available to assist researchers. EAST can be used for free, but you must pay to print it. EAST allows you to search by class, subclass, Boolean, or keyword terms. You can also combine both.

You can also visit a Patent and Trademark Depository Library. These libraries are located in major cities. The USPTO’s website lists its locations and hours of operation. Unfortunately, these don’t have EAST but the Web-based Examiner Search Tool (WEST). Also, the libraries don’t have information on foreign patents or other non-patent materials such as journals.

If these options are not available, you may also consider an online search or patent database search. Google, the USPTO, and the European Patent Office offer this service free. There are also fee-based search options. Although records here are not as detailed as EAST databases, they are often simpler to navigate.

1.1.2.2.2 Refine your search terms

Get familiar enough with your patent applications, including the claims, abstract, and specification, to create Boolean search words and the classification that best describes your invention. For you to locate patents already in USPTO’s system, your search terms should be exact and comprehensive. Synonyms might be helpful. The USPTO website is an excellent resource for helping you navigate through the multitude of classifications. It may take trial and error before you find the right keywords and where to look.

1.1.3 Pay attention to any imperfections during the search process

While you may think your search is good, it’s likely not as detailed as what a patent examiner will. It’s because:

• If you don’t publish pending applications, they won’t show up.
• It is possible to search keyword searches for incorrectly classified patents in the databases.
• Recent patents that have been granted won’t be immediately in the system.
• Patent searches won’t uncover foreign patents.

1.2 Inventorship: What happens when there are multiple inventors?

The inventors have contributed to the conception and reduction of the practice of the invention. Conception is the creation, in mind, of a clear and permanent idea for a complete and operative invention. While the reduction to practice means that the claimed invention must work for its intended purpose, to be considered a co-inventor, each person must have contributed to at least one part of the invention’s claims.

One must have contributed to conception to be considered an innovator. However much energy and time they devote to the project, those who do not contribute to its conception are not considered inventors.

Many inventions result from collaborations between people whose contributions rise to the co-inventorship stage. It is not enough to follow the instructions of the inventor. A person hired to implement an inventor’s invention would, for example, be considered hired labor and is not considered a co-inventor.

1.2.1 How to correct improper inventorship

If you discover after filing that you have accidentally left out a Co-Inventor, or that you have failed to list a person who should be listed as a Co-Inventor, you may petition the PTO for corrective action. The supporting declarations of the other co-inventors will explain how the mistake was made. You must also agree to the proposed changes. According to 37 CFR.1.324, you will have to pay a petition fee to correct inventorship. The following is the list of items that you will need to include in your request:

• (1) Each person adding as inventor must declare that the inventorship error occurred and is not deceptive.
• (2) A statement from currently named inventors that has not submitted a declaration under paragraph (b(1). This section either agrees or disapproves of the proposed change.
• (3) A statement by all assignees from the parties who have submitted a statement under paragraphs b(1) and b(2) of this section, agreeing to the change in inventorship in the patent. The statement must be consistent with of this chap.

1.2.2 How can you correct typos?

35 USC 256 Controls the Correction for named inventor.

(a) Correction: Whenever an inventor is listed in an issued patent by mistake or an inventor is not mentioned in an issued patent due to an error, the Director may issue a certificate correcting the error on the application of all parties and assignees.

(b) Patent is Valid Only If Error Corrected: If the error can be rectified as required in this section, it will not invalidate the patent. A court may order that the patent be corrected upon notice and hearing from all parties. The Director will issue a certificate.

1.2.3 Ownership

If you have co-inventors or joint inventors, each inventor shares patent ownership. “Each co-inventor may make, use, offer for sale, or export the patented invention within the United States without the consent and accounting to other owners.” This is similar to joint tenants of a house. Any co-inventor can use, make or sell the invention, but they must not pay anyone. The best way to avoid future conflicts is to have one voice when controlling the patent.

1.3 How do you protect your ownership when you hire consultants to help with your invention?

1.3.1 Agreement with a Consultant

A Consultant’s Agreement should be signed by anyone who is only helping the inventor. This agreement allows the person to assign all rights to the invention to themselves.

1.3.2 Joint Ownership Agreement (JOA)

A JOA is a way to prevent problems from arising from shared finances. For example, who owns what financial shares in the invention? Common is for co-inventors to assign the company. A JOA may be used if no company is available to receive the assignment of all inventors. A JOA usually:

• Prevents one inventor exploitation of the patent without consent from the others. If they are unable to reach an agreement, however, most inventors may act.
• This document contains a process for resolving disputes.
• Includes information about how to split any revenue. It is usually proportional with the inventor’s expenses.
• Informs inventors about the steps to create and market their invention.

1.4 Does your employer own rights to your invention

Your employer may require you to transfer your invention rights if you are hired to invent products or create new ones. When you find yourself in such a situation, it is advisable to consult a lawyer. For example, this could happen in the following situations:

• An employment agreement was signed before the invention. This agreement is sometimes known as a “preinvention agreement.” Usually, the agreement contains a clause that allows you to surrender your invention rights. This includes inventions you have created at home or in your spare hours. Make sure to read the entire agreement.
• You were explicitly hired or employed to invent. The precedent of the US Supreme Court states that you don’t need to sign a separate agreement by your employer for this.
• Your employer bought shop right, which gives you a limited, nontransferable patent right to use the invention exclusively for your business. You must have created the invention using resources provided by your employer (e.g., time, the computer, equipment, or supplies).
• You work at a college/university and have given the school permission to invent any inventions you make with its resources.

1.4.1 If your employer doesn’t want to submit your invention

You can request a release from your employer if you have told your employer about your invention, but the company isn’t interested. A release is a document that allows the employer to return your invention.