Each step is important, and inventors who bypass any step will not be matched with an agent or attorney.
If the differences between your invention or improvement and another patented invention would be obvious to one skilled in the art, you cannot receive patent protection. Some people call this the “inventive step” because this requirement prevents the issuance of patents for normal development or expansion, and rewards those who create and innovate within the field.
Patent protection does not extend to vague concepts or ideas. The actual invention must be reduced to practiceeither by creating working prototype, or by describing the invention in sufficient detail such that a person with ordinary skill in the relevant field could create a working prototype.
Conception is the touchstone of inventorship, the completion of the mental part of invention. *** An idea is definite and permanent when the inventor has a specific, settled idea, a particular solution to the problem at hand, not just a general goal or research plan he hopes to pursue. The conception analysis necessarily turns on the inventor’s ability to describe his invention with particularity. Until he can do so, he cannot prove possession of the complete mental picture of the invention.Burroughs Wellcome Co. v. Barr Laboratories Inc., 40 F.3d 1223, 1227-1228 (Fed. Cir. 1994)
Inventors may participate in the USPTO’s online patent training module, print out (or take a picture of) the final completion certificate, and email it in.
ALL inventors who are going to be listed on the patent must either:
So, experienced patentees are exempt, but everybody else must complete the training.
This is a mandatory requirement for this program. Take your prior art search seriously. There is always some prior art out there, and we will ask you how you conducted your search.
“Prior Art” encompasses all existing information, knowledge, and references existing anywhere in the world prior to filing a patent. Of course, not all prior art matters. When patent agents and attorneys talk about “prior art,” they are referring to the following, in relation to your particular invention:
Under the Patent Law, “[o]n taking up an application for examination . . . the examiner shall make a thorough study thereof and shall make a thorough investigation of the available prior art relating to the subject matter of the claimed invention.” Essentially, if your invention is disclosed anywhere in the prior art, it is not patentable.
A great place to start is to look through existing patents. You may do so on the USPTO’s website, the European Patent Office’s website, any one of several paid subscription services, or by using Google Patents. A well-done search should reveal similar inventions, including those inventions upon which your own invention likely relies. More importantly, the prior art search should help educate you, as the inventor, as to the current state of your particular field.
The USPTO considers all prior art, and not just applications, patents and other descriptions from the United States. Many companies around the world file patents with the EPO, and many of these are in English, or translated into English. We recommend searching through applications and patents separately.
Not really. Companies usually have experienced attorneys run prior art searches using sophisticated software. However, your basic search should help inform you if your invention already exists, and will aid in helping you determine the bounds of your invention!
Luckily for us here in Georgia, the USPTO has a resource center located on the campus of Georgia Tech! The Patent and Trademark Resource Center can teach you how to do an effective and efficient patent search. The library website has numerous tutorials, and the coordinator is available for personal consultation Monday through Friday, on an appointment basis. You may set up an appointment by e-mailing firstname.lastname@example.org or calling 404-894-4500.
The Georgia PATENTS program and GLA are not directly affiliated with the Patent & Trademark Resource Center, so if you are interested in consultation with the center, you must contact the center directly.
If you have found less than 3 references, you likely are not searching effectively. If you find more than 10, you are likely not searching efficiently. Too few references suggest you have not truly explored the prior art. Too many means that you do not necessarily understand the bounds of your invention, or your invention is likely already a part of the prior art.
You may utilize the assistance of a commercial search company, but the results must be less than 3 months old, and we will need to see a copy of the contract with the search company to ensure you have not disclosed or assigned rights in the patent.
Before starting your application, please make sure you:
Once you complete an application form, our staff will review the form and contact you within a reasonable period of time to ask follow-up questions and/or schedule an intake appointment.
We usually attempt to contact applicants within about a week. However, during the following periods, you should expect significant delays:
During these periods, our office is normally undergoing significant staffing changes, coinciding with the end of the law school semesters or holidays. We ask that you exercise patience if you apply directly before or during any of these periods.