Suiter Swantz IP Specializes in Patent Procurement

Our patent attorneys and patent agents combine their substantial backgrounds in engineering and the sciences with extensive knowledge of intellectual property law.  The depth of technological and legal knowledge possessed by our patent practitioners enhances our ability to assist clients in developing comprehensive strategies for the protection of their patent portfolios.  Our practice includes the preparation and prosecution of U.S. and foreign patent applications, patent searches and patentability analysis, freedom-to-operate analysis, portfolio management, patent litigation and litigation support and a variety of other patent-related services.  To date, our patent attorneys have obtained over 3000 patents on behalf of our clients.

What is a Patent?

An inventor who desires to obtain legal protection of his or her invention may apply to the United States Patent and Trademark Office (USPTO) for a patent. A patent is a grant by the federal government of the right to prevent others from making, using or selling the invention protected by the patent. In exchange for this limited “monopoly,” the inventor must disclose his/her invention in sufficient detail to allow others of ordinary skill in the given technological area to make, use and otherwise practice the invention once the patent expires.

A patent application is a detailed technical document that must meet a number of very specific legal and technical criteria. All of our patent practitioners possess at least a bachelor’s degree in an engineering or scientific discipline, with many on our team possessing a graduate level technical degree and/or significant industry-level experience.

We assist our clients from the conception of their invention through patent issuance. Complementary relationships which have been developed in the fields of business and technology allow us to handle complex assignments across widely varied commercial landscapes. This multi-disciplinary approach to patent prosecution allows us to effectively handle the entire scope of intellectual property matters.

Patent-Related Services

  • United States and Foreign Patent Preparation and Prosecution
  • Patent Search & Patentability Analysis
  • Non-Infringement and Invalidity Analysis
  • Patent Licensing and Agreements
  • Due Diligence
  • IP Portfolio Management and Planning
  • Analysis of Competitor’s IP Activity
  • Patent Litigation and Litigation Support
  • Post-Grant Proceedings

Types of U.S. Patents

U.S. patent law also provides for three types of patents: utility patents, design patents and plant patents.

Utility Patent: A utility patent may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof.

Design Patent: A design patent may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture.

Plant Patent: A plant patent may be issued for new and distinct, invented or discovered asexually reproduced plants including cultivated sports, mutants, hybrids, and newly found seedlings other than a tuber propagated plant or a plant found in an uncultivated state.

Bars to Patentability

There are several events that can prevent the grant of a patent. Due to recent changes in U.S. patent law, a patent application should be filed before any public use, offer of sale, sale, publication, or other public disclosure of the related subject matter. Failure to do so may result in a dedication of the invention to the public (and thus a loss of patent rights).   While changes in U.S. patent law do contemplate an exception that may disallow the use of one’s own disclosing event from being used against them by the USPTO, it is unclear how this portion of the new patent law will be applied by federal courts.   It is, therefore, critical for anyone seeking patent protection to have on file at least a provisional patent application prior to the public use, offer of sale, sale or publication or other public disclosure of the subject matter of the patent application. While this is a general preference, your specific situation should be discussed in detail with a patent practitioner.

Non-Provisional Patent Application

An inventor may file a non-provisional, or “regular,” patent application. Once the non-provisional patent application is prepared and filed, it undergoes examination by the USPTO. In the event the patent application issues as a patent, the patent may then be enforced against other parties to exclude them from practicing the invention set out in the “claims” of the patent, which serve to define the rights of exclusion held by the patent owner. The non-provisional patent application has a nominal term of 20 years from the date of filing.

Provisional Patent Application

U.S. patent law also provides for the filing of a provisional patent application. The formal requirements of a provisional patent application are relaxed relative to the non-provisional patent application, generally allowing a provisional patent application to be prepared for a fraction of the cost of a non-provisional patent application.

A provisional patent application is used to establish a priority date for your invention. A later-filed non-provisional patent application may claim priority to an earlier-filed provisional patent application and incorporate and refine the subject matter originally included in the provisional patent application. In this manner, the provisional patent application allows a company or individual to bootstrap to a full non-provisional patent application. In order to claim priority to an earlier filed provisional patent application, your non-provisional patent application must be filed within one year of the provisional patent application. The filing of a provisional patent application allows an applicant to label their products and/or services with the phrase “patent pending.”

An applicant may file multiple provisional patent applications and incorporate them into a single non-provisional patent application. This fact combined with the multitude of potential patent barring events (discussed above), often leads to a “file early and file often” strategy with respect to provisional patent applications. A “file early and file often” strategy may also serve to capture improvements made on the invention between the filing of the first provisional patent application and the filing of the non-provisional patent application. While this is a commonly practiced approach, the situation should be discussed in detail with a patent practitioner before any filing decision is made.

Patent Search

A patentability search may be performed to help determine whether or not an invention has already been disclosed by a patent, patent application or other public disclosure.

If you have any questions about the patent application process or other patent-related needs please feel free to contact our office and speak with one of our patent attorneys.