When Are Claims Needed?

Provisional applications do not need claims, but non-provisional patent applications do.  The claim or claims must particularly point out and distinctly claim the subject matter which the inventor or inventors regard as the invention. The claims define the scope of the protection of the patent. Whether a patent will be granted is determined largely by the claim language.  A nonprovisional application for a utility patent must contain at least one independent claim. Dependent claims can be used that refer back to, and further limit, another claim.

What Is The Purpose Of The Abstract?

The Abstract enables readers to determine quickly the nature of the technical disclosures of the invention. The Abstract is generally limited to a single paragraph and should not be longer than 150 words.

How Do You Request A Foreign Filing License?

By filing a patent application, one already simultaneously requests a license.  Notice of whether the request is denied or granted is indicated on the filing receipt that is mailed to the applicant.

Is There Any Guideline On Selecting The Title Of The Application?

The Title should be descriptive of your invention and should be less than 500 characters.

Is Computer Software Patentable In The Us?

Yes, computer software is patentable in the US.

Can I Get A Design Patent For Software?

Yes.  For example, GUI elements or icons can be protected as design patents.

In Addition To Patent Protection, What Other Options Are Available To Protect Software Products?

In many countries, computer programs, whether in source or object code, are protected under copyright. The major advantage of copyright protection lies in its simplicity.  Copyright protection does not depend on any formalities such as registration or the deposit of copies in the 151 countries that are parties to the Berne Convention for the Protection of Literary and Artistic Works.  This means that international copyright protection is automatic -- it begins as soon as a work is created.  Also, a copyright owner enjoys a relatively long period of protection, which lasts, in general, for the life of the author plus 50 or, in certain countries, 70 years after the author’s death. However, copyright protection extends only to expressions and not to ideas, procedures, methods of operation, or mathematical concepts as such.  Although copyright protects the “literal expression” of computer programs, it does not protect the “ideas ”underlying the computer program which often have considerable commercial value.  Compared with copyright protection, the patent life is much shorter, namely and in general, 20 years from the filing date of the application.   Trademarks also are available to prevent competitors from marketing confusingly similar products.

Can Multiple Inventions Be Described In One Non-Provisional Application?

Yes, this can be done.  However, if you present claims directed at different inventions in one application, the examiner may require that the claims be restricted to a single "independent and distinct" invention. This type of Office action is called a "requirement for restriction." Any response to such an Office action must include an election of the single invention to which the claims (and, hence, examination) will be restricted.

Is There Anything An Inventor Must Do Before Filing For A Patent Application In A Foreign Country?

For inventions made in the US, the inventor sometimes first must obtain a license from the USPTO Director before applying for a foreign patent. This is required if the foreign application deadline is before the US application deadline, or the foreign application is due before six months have elapsed from the time the inventor filed his US application unless he earlier obtained a filing receipt with a license grant.

A license is not required six months after the US filing date, unless the invention is ordered to be kept secret. If there is an order to keep it secret, the USPTO Director must consent to the filing of a foreign patent application while the order of secrecy is still in effect.

Can Multiple Inventions Be Described In One Provisional Application?

Yes,  you can include multiple invention disclosures in one provisional patent.  The PTO does charge extra fees if you exceed a particular number of pages in your application.

What’S The Difference Between A Patent Attorney And Agent?

Both can prepare a patent application and conduct USPTO prosecution. But only an attorney can practice law; for example, an attorney can conduct patent litigation in the courts while an agent cannot.

How Do I Finance And/Or Market My Invention?

You can raise funds from friends and families, angels, and venture capitalists.  The Small Business Administration (SBA) provides excellent information on starting, planning, marketing, obtaining venture capital, and financing a small business. The SBA also provides training and counseling for SBA loan programs.   You also can get help from your local Small Business Development Center (SBDC).

How Does An Attorney Or Agent Get On The Uspto Registry Of Patent Attorneys And Agents?

Prior to admission, applicants show compliance with USPTO rules, which includes showing good moral character and being  in possession of particular legal, scientific, and technical qualifications such as college education in engineering or physical sciences.  They also must pass a rigorous examination to ensure that they are familiar with USPTO practice and procedure.

What Is The Role Of The Us Patent And Trademark Office (Uspto)?

According to its web site, the US Patent and Trademark Office (USPTO) administers the patent and trademark laws as they relate to the granting of patents for utility inventions, designs, and plants and the issuing of trademark registrations. The USPTO examines applications for patents to determine if the applicants are entitled to patents and grants the patents when they are so entitled. It examines applications for trademark registration to determine if the applicants are entitled to register their trademarks and issues trademark registrations. The USPTO publishes issued patents, approved trademark registrations, and various publications concerning patents and trademarks.  It also records assignments of patents and trademarks and maintains search rooms and a national network of Patent and Trademark Depository Libraries for use by the public to study issued patents, registered trademarks, pending trademark application, and records relating to both patents and trademarks. And, it supplies copies of records and other papers.

Where Can I Learn More About The International Patenting Process?

For a start, you can visit the World Intellectual Property Organization at http://www.wipo.int.  This site contains a database of foreign legislation and treaties.  It also points visitors to a directory of foreign intellectual property offices.

Do I Need To Hire A Lawyer Or Agent?

As the patent application process is complex, you should contact a registered patent attorney or agent. Only registered attorneys and agents may help others to obtain patents.  A roster of patent attorneys and agents registered to practice before the USPTO can be found at the USPTO web site.

Can An Issued Patent Be Reexamined?

Yes, this process can be initiated by the patent owner, the public, or the USPTO Director.  A request for reexamination can be submitted if there is a substantial new question of patentability.  The USPTO’s Central Reexamination Unit looks at whether the patent should have been issued in light of the prior art.

What Can And Cannot Be Patented?

Thomas Jefferson refined the law in 1793 to define that which was patentable as being "any new and useful art, machine, manufacture or composition of matter and any new and useful improvement on any art, machine, manufacture or composition of matter." That definition of invention, with minor changes, is still the law.  In general, physical phenomena, laws of nature, and abstract ideas are not patentable unless they are tied to machines and devices, among others.

How Do You Transfer Patent Rights?

Patents have the attributes of personal property and thus applications for patent, patents, or any interest therein can be assignable in law by an instrument in writing. The applicant, patentee, or his assigns or legal representatives may in like manner grant and convey an exclusive right under her application for patent, or patents, to the whole or any specified part of the US. To be effective against any subsequent purchaser or mortgagee for valuable consideration, the patent or application assignment should be recorded in the Patent and Trademark Office within three months from its date or prior to the date of such subsequent purchase or mortgage.

How Does A Company Own The Patent Or Application?

This can be done through an assignment that transfers all rights from the inventor(s) to the company.  The assignment should be recorded.

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