Patents 101

Protecting your Inventions - All you ever wanted to know and more . . .

For more detailed information about intellectual property protection please see:

Below are highlights that you should be aware of in order to enable us to effectively protect your inventions:

What is an Invention?

An invention is a new and useful process, device, article of manufacture, or composition of matter, or a new and useful improvement upon one of these.

What makes an invention patentable?

An invention is potentially patentable if it satisfies all three of the following:

  • Novelty: The invention must be novel, i.e., new and original. An invention cannot be considered novel if it has been known, used, published or patented by others anywhere in the world before the date the invention was made by the applicant.
  • Non-Obviousness: The invention must not, at the time it was made, be considered obvious to a person of "ordinary skill" in the field of the invention.
  • Utility: The invention must be useful, i.e., it must have a practical application.

What is a patent?

A patent is a grant from the Federal government that allows the patent owner to prevent others from practicing an invention for a limited period of time, in the case of U.S utility patents, 20 years from the date of the patent application. In return for the granting of the patent, the law stipulates that the invention be made public. Thus, by reading the patent, others are able to practice the invention if given a license by the patent owner. The owner has the right to prevent others from practicing the invention covered by a patent, but they may be inhibited from practicing it themselves if it infringes a dominating patent owned by another party. In that event they would need themselves to obtain a license from the other owner. To be patentable, an invention must meet three criteria – it must be novel, useful and not obvious, that is, non-obvious to someone of ordinary skill in the art.

What rights do an issued patent give you?

A patent gives the owner the right to exclude others from making, using or selling an invention, covered by the patent, throughout the country which issued the patent for a limited period of time. In the USA this is 20 years from the date of the patent application. A patent does not automatically give the owner the right to practice the invention, since such action may infringe the claims of an earlier and still current patent.

What kinds of patents are there?

There are three kinds of patents. “Utility” patents are granted to the inventor(s) of any new and useful process, machine, article of manufacture, composition of matter, or any new and useful improvement thereof. “Design” patents are granted on any new, original and ornamental design for an article of manufacture. “Plant” patents are granted on any distinct and new variety of asexually reproduced plant.

What is included in a patent?

A patent has two parts: the specification, which is a narrative presentation of the invention, including the prior art which preceded it, and must include the best mode of practicing the invention known by the inventor and the claims, which describe the essential elements of the invention. The specification starts by briefly describing the field of the invention. Then there is a background section which describes the work done in the past (prior art) and its shortcomings. All known prior art must be disclosed. If needed to aid in understanding the inventions, drawings are included. This is followed by a disclosure of the invention, setting forth in general terms what the inventor considers to be the invention and its advantages. Then the summary of the invention details the theory on which the invention rests and full details of the way the invention can be implemented. Each implementation is called an embodiment and the best one is the preferred embodiment of the invention. Next the industrial applicability section describes the applications in which the invention will be used. The claims circumscribe the legal bounds of the invention. They describe the essential elements of the invention, firstly as broadly as possible, and then more narrowly. Although it is generally easier to obtain a patent with narrow claims, if they are too narrow then others can possibly work around the patented invention.

How is a patent obtained?

The filing and prosecution of patent applications with the USPTO is undertaken by outside patent attorney firms. Past experience in previous cases, technical competence, and possible inventor preferences, are considered by the licensing associate when making his or her selection of the appropriate patent attorney. The inventor(s) cooperation is essential in patent filing and prosecution. The patent attorney will be knowledgeable in the general field of the invention, but they are unlikely to have the specific expertise of the inventor(s). The inventor(s) interaction with the attorney is essential to obtain meaningful patent protection.

Does South Dakota Mines file patent applications on all disclosures it receives?

South Dakota Mines does not file patent applications on all invention disclosures it receives due to the high cost of filing and prosecuting ($8,000 - $15,000). If we already have a commitment from a licensee or potential licensee to meet patent costs, we will proceed immediately with an application. If significant commercial viability for the technology has been proven, we may also proceed. In many cases, if the invention appears to have apparent commercial viability but this has not yet been confirmed, we will file a provisional patent application. This establishes a priority date and gives us a 12 month window in which to confirm the potential of the technology, during which time we can, if appropriate, seek market interest in the invention. In that case any potential licensee will be required to sign a confidentiality agreement before detailed information on the technology is disclosed to them. Any utility application must be filed within twelve months of the date of the provisional filing to preserve the priority date.

How long does it take to get a patent?

Typically, there is a 24-36 month prosecution before allowance, with costs ranging from $8,000 - $15,000.

What is a provisional patent application?

A provisional application is a faster, less expensive application used to establish a priority date with the Patent Office. It is a way of postponing the cost and effort of preparing and filing a full or utility application, while the invention is being evaluated to determine whether to proceed with filing a full application. After filing a provisional patent, the applicant has one year to file a complete application and any foreign applications. It should be remembered that the provisional application will only establish a valid priority date if the claims of the later full application are supported by the earlier filed provisional application. If a full application is not filed within 12 months from the date of filing of the provisional application, the provisional application will lapse. In that case, the provisional application is not published or made available to the public by the Patent Office.

How long is a patent valid?

For new patents the term is 20 years from the date of filing.

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