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TYPES OF PATENTS - Patent type addressed by TT&C

Patents, trademarks, copyrights, and trade secrets are different types of Intellectual Property. The USPTO grants patents and registers trademarks, while copyrights are registered by the U.S. Copyright Office at the Library of Congress.

There are three types of patents: Utility, Design, and Plant. Currently, SMU’s TT&C addresses only Utility patent applications.

For an invention to be considered for a Utility patent, it must be novel, useful, and non-obvious. Although novelty and utility are basic properties of an invention, the claimed invention must also be non-obvious to someone “with ordinary skill in the art”.

PATENT ELIGIBILITY - Statutory patent eligibility categories

In addition to novelty, utility, and non-obviousness, the claimed invention must also fall in one of the “statutory patent eligibility categories" which are specific types of inventions that Congress has determined are eligible for patent protection under U.S. law. These categories are defined in 35 U.S.C. § 101 and include:

1. Processes (methods or steps to perform a function)
2. Machines (devices or apparatuses)
3. Manufactures (articles made by humans)
4. Compositions of matter (chemical compositions or mixtures)

These categories are foundational for determining what can be patented.

For all categories except process claims, the eligible subject matter must exist in some physical or tangible form. This means claims on information (data) or a computer program (software) can only address process.

Furthermore, the claim must not be directed toward abstract ideas (such as a mathematical formula), natural phenomena, and laws of nature as these are not eligible for patent protection.

Only a patent lawyer can truly help determine an application’s eligibility based on the above criteria.

TYPES OF UTILITY APPLICATIONS - Provisional vs Non-provisional

There are two types of patent applications for Utility patents; namely, Provisional and Non-provisional. Which of the two types you choose to file depends on your situation and research completion.

Filing a Provisional patent application is optional, and it is not examined by a USPTO examiner and does not require formal patent claims. The purpose of filing a Provisional patent is to obtain an early filing date, since patent priority is based on first-to-file, and it gives the applicant 12 months to further develop the invention or prepare a full non-provisional application. Before the end of the 12 months, the Provisional application must be converted to a Non-provisional.

Filing a Non-provisional application is a requirement as it’s the formal application that will be examined by the USPTO to potentially grant a patent. It must be filed before a Provisional application expires and it starts the formal examination process. The Non-provisional application requires a full description of the invention along with at least one claim defining the invention.

PUBLICATIONS & FILING DEADLINES - Restrictions on application and Required Actions

 In the US there is a one (1) year “grace period” from the date of public disclosure to file a patent application. “Public Disclosure” refers to any discussion of your intellectual property without an understanding that the disclosure is confidential. Submitting a disclosure to TT&C, for example, is understood to be confidential.

The patent application can be Provisional or Non-provisional, and the date the application is filed is the Priority Filing Date (PFD). The figure below illustrates the key activities and timeframe in the patent application lifecycle.

Invention flow through the Patent Lifecycle

If a Provisional application is filed, it must be converted to a Non-provisional application within one year of the PFD.

Within 1.5 years following the PFD the patent application is published by the USPTO, thereby making it public. However, when filing you have the option to request it not to be published. TT&C begins looking for commercial opportunities at this point, even though the patent application is not issued yet. Starting the process when the application is published means we get a 3 to 4-year jump-start in the commercialization cycle.

The National Stage filing is for applications filed under the Patent Cooperation Treaty (PCT) for international filing. In general, TT&C does not pursue international filing.

Once an application is docketed for Examination it may take a couple of years before it is examined and requires responses from the inventors to Office Actions, including rejection of some claims. Failure to respond in a timely manner causes the patent application to be abandoned by the USPTO.

USPTO’S KEY MILESTONE DATES - Before Issue Fee is paid or Maintenance Fees Due

After a patent application is declared Allowable and an Issue Notice is sent by the USPTO there are key dates to keep in mind.

Filing a Continuation Patent Application

Once a patent application is declared Allowable, it takes around three (3) months before the patent issued and the Letters Patent emailed to the Principal Inventor. Normally, the Issue fee is paid once Notice of Allowance is received.

However, if there is a reason to consider filing a Continuation (CON) or Continuation-in-part (CIP) application, it is best to delay paying the Issue Fee until the day before the USPTO patent issue date.

Continuation-in-Part and Inventorship

Filing a Continuation-in-Part patent application is treated as filing a new patent application which claims priority to the earlier application and has new Claims. The inventorship must be re-assessed and confirmed based on the new Claims.

It is very common to add or subtract inventors in Continuation-in-Part applications because of the new subject matter which is claimed.

Maintenance Fees on Issued Patents

In addition to the requirement to convert a Provisional application to a Non-provisional application, once a Patent is issued there are three Milestone dates which require payment of Maintenance Fees (MF). The first MF due date is at the 3.5-year mark. The remaining two MF due dates are at the 7.5-year and 11.5-year anniversary of the Issue date.

Failure to pay the MF by the required date puts the application in a six (6) month grace period. Payment of the normal MF and a surcharge keeps the patent in good standing with the USPTO. If payment for any given MF period is not received within the 6-month grace period, the patent is deemed to be abandoned and cannot be reinstated.