And don't worry if you have no drawings of your invention - during your initial consultation at Paul S. Rooy P.A. we routinely prepare sketches "on-the-fly" based on your description, and you can take them with you when you leave.

The reason the Patent Attorney must know all aspects of the invention before rendering a threshold patentability assessment is that the combination of features of the invention must be novel and non-obvious, as explained below. Merely stating the function of an invention (e.g. “My invention is a golf ball retriever which goes around corners” or “My invention is a card game for surfers”) is insufficient for this purpose. The Patent Attorney must know the invention physical structure, including its individual parts and components and how they interrelate, fit and work together, to make this initial assessment.

An equally fundamental reason for initially meeting personally with a prospective Attorney, is that an Attorney/Client relationship should be built on mutual trust. It’s much easier and more reliable to take a person’s measure in person, rather than over the phone.

For these reasons it is highly recommended the initial consultation take place in person, sitting side-by-side at a conference table, such as occurs at Paul S. Rooy P.A.

Statistically, around 60 – 70 % of patent applications mature into patents. While this means that 30 – 40 % of patents are ultimately rejected or abandoned, on the bright side, just looking at the numbers, our statistical chances of getting a patent are better than 50%. An issued patent grants the patentee the exclusive rights of manufacture, use, and sale of the invention within the United States.

Types of U.S. Patents.

Three types of patents are available in the United States: Utility Patents (the most numerous variety, with close to seven million issued), Design Patents, and Plant Patents. The so-called “Provisional Patent Application” only provides a priority date for twelve months upon which a subsequently filed separate patent application may be based, and never leads to a patent unless another, separate application is filed within the twelve month period.

Paul S. Rooy P.A. is happy to provide full credit for the cost of any Provisional Patent Application prepared by Paul against the cost of a Utility Patent Application he subsequently prepares, granted the invention doesn’t change in the interim. Don’t pay twice for the same work!

Utility Patents.

Utility Patents, the most numerous variety of patent available within the United States, number close to seven million issued to date. Utility patents protect the utilitarian, or useful, features of an invention. Utility patents afford the patentee the exclusive rights to make, use, and sell the invention within the United States. Government fees include an application fee, issue fee, and periodic maintenance fees. See www.uspto.gov for current fee information.

Granted the maintenance fees are timely paid, U. S. Utility Patents remain in effect for twenty years from date of application, but do not come into full force until issuance, which is currently taking approximately one and a half to two years from the date of application. Thus, utility patents have a potential effective life span of around eighteen years.

Utility Patent requirements for patentability include usefulness, novelty, and non-obviousness. U.S. Utility Patents protect the useful features of an invention; thus the invention must incorporate some usefulness or utility. Under U.S. law, only the “first and true” inventor of an invention is entitled to its patent(s).

The invention must also be novel. Some of the novelty limitations include: the invention cannot have been made public or offered for sale within the United States more than one year prior to the application date, the invention cannot have been patented or described in a printed publication in a foreign country more than one year prior to the application date, and the invention cannot have been known or used by others in the United States, or patented or described in a printed publication in the United States or a foreign country, before the invention was made by the applicant. This requirement is described in 35 U.S.C. § 102 (Title 35 of the United States Code, section number 102).

The invention must also be non-obvious. See 35 U.S.C. § 103. If a patent application claim is rejected based on obviousness, the Examiner isn't trying to be insulting by using the term "obvious". Rather, this word is a specific term of art which means the Examiner is suggesting that the transition from a hypothetical composite invention to the applicant’s invention could be accomplished via mere mechanical manipulation not requiring the "inventive spark" or “inventive leap” which characterizes "non-obviousness".

In making an obviousness rejection, the Examiner is allowed to draw individual features from a number of different references. For example, if we’ve applied for a patent of an elephant, the Examiner is allowed to take a tail from a donkey patent, the floppy ears from a basset hound patent, the trunk from an elephant seal patent, the stocky legs from a rhinoceros patent, the tusks from a javelin patent, and the rough dark skin from a hippopotamus patent, duct-tape them all together, and thus assemble them into a hypothetical animal based on these six references, and use this hypothetical animal to reject our elephant patent application.

The above example is presented for illustration only – of course we couldn’t actually patent the elephant because it isn’t novel (new) anymore, plus it’s doubtful the “first and true” inventor would feel inclined to sign the application…

There are a number of ways to overcome obviousness rejections. If the hypothetical combination suggested does not incorporate all the features in the patent claim, then rejection of that claim is improper. For example, we could argue that basset hound ears are different than our elephant’s ears, thus the hypothetical animal duct-taped together by the Examiner doesn’t include our claimed elephant’s ears, and therefore the obviousness rejection is improper for claimed features lacking.

Other arguments against obviousness rejections include the references cited teach away from our invention, a large number of references could in itself indicate non-obviousness, and the references cited originate from separate, far-removed fields. Circumstantial proof of non-obviousness can also be made by affidavit where there has been a long-felt, unmet commercial demand for the invention, where there has been good commercial success for the invention, and where failure by others to discover the invention can be shown.

Granted we ultimately receive a Notice of Allowance, an issue fee must be paid, and maintenance fees must be periodically paid thereafter to maintain the patent in effect.

Design Patents.

Design Patents protect the ornamental external features of an invention. Design patents also afford the patentee the exclusive rights to make, use, and sell the invention within the United States. Government fees include an application fee and an issue fee. See www.uspto.gov for current fee information.

U. S. Design Patents remain in effect for fourteen years from date of issuance. No maintenance fees are required.

Design Patent requirements for patentability include ornamentality, novelty, and non-obviousness. U.S. Design Patents protect the ornamental external features of an invention; thus the invention must incorporate some ornamentality. Under U.S. law, only the “first and true” inventor of an invention is entitled to its patent(s).

Plant Patents.

The inventor or discoverer of a new variety of plant may obtain a Plant Patent for it. The plant must be asexually reproduced. Plant patents last seventeen years, and no maintenance fees are required. Plant Patent-like protection for sexually reproduced plants may be obtained under the Plant Variety Protection Act, a separate statute.

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