The following is the experience of applying for and managing patents in the United States:
1. Actively use the strategy modified by the preliminary or supplementary claims.
The direct way to protect your invention is to file a patent application. In addition, the application of some other claims strategies can also make you both offensive and defensive. You can write a claim, covering inventions aimed at the development trend or future demand of the industry. These trends or needs usually become clear in the process of patent application and initial approval of USPTO. At the same time, you can also write a statement covering other ways that competitors may take to meet these development trends or needs. These claims are then submitted to the United States Patent Office in the form of preliminary or supplementary claims. In order to obtain the maximum protection scope, such claims should be actively adopted in the whole patent application process.
2. Continue to provide patent applications or divide them into cases.
In the process of patent application, you may face the choice of which way to take: continue to apply, appeal, or withdraw your application. If you decide to continue the application, you can submit a continuation application, a divisional application or a request for continued review (RCE). The choice of such channels should be consistent with your company's overall strategy. Therefore, such applications must be handled with caution.
3. Divide technology into multiple inventions.
Once you decide that you want to apply for a patent for a technology, you should decide how to divide the technology into one or more inventions. Although it is often written as a technical document, a patent application should be a legal document containing technical information. Each patent application should first describe the invention in a concentrated, clear and concise way. This description can avoid possible ambiguity when determining the definition of the claim.
4. Improve or expand the patent-pending technology and weigh the cost.
It is very common to improve or expand an invention after filing a patent application. In this case, we should consider filing a new independent patent application or continuation part (CIP). CIP is closely related to the original application, but it can contain "new content" not included in the original application. You should consider whether this kind of application is suitable for your company's overall patent asset strategy. Cost is also a factor, especially if you plan to submit your application outside the United States.
Using overseas strategies to reduce US federal taxes is often ignored by early start-ups and entrepreneurs. This international tax strategy is especially important when your business plan includes foreign intellectual property licensors. In fact, in many cases, it is more beneficial to set up one or more overseas institutions as soon as possible than to act after determining the permitted projects.
5. Consider other low-cost options
In the case of limited funds or time, low-cost project selection such as temporary application can be considered. The requirements and application fee of a temporary application are less than that of a formal patent application. Then you can submit a formal patent application within one year after submitting the temporary application. In addition, if your company is small (that is, there are less than 500 employees), you can submit your application electronically to get a discount on the application fee.
6. Complaints, teleconferences and oaths in the process of patent examination and approval.
If it is difficult for you and USPTO examiners to reach a * * * understanding on the patentability of some claims, you should meet with the examiners as required to further state your opinions. Such talks can be face-to-face or teleconference. These talks usually facilitate the review process and speed up the approval of claims. If other evidence will help, submit an affidavit stating the relevant facts and clarifying your point of view. If we still can't get the knowledge of * * *, we should consider appealing to the Patent Appeal and Conflict Committee and request the examiner to reject it. And may request an oral presentation to the Committee.
7. Fulfill the obligation to know the background technology published by USPTO.
USPTO stipulates that every applicant and his agent have the obligation to disclose the known background technology. This means that you should submit an information disclosure statement (IDS) to USPTO in time to disclose the reference materials related to the invention. Even if the reference materials are different from your invention, you still have the obligation to disclose them. During the whole application process, you have a continuous obligation to disclose the background technology you have learned at any time. Therefore, once you notice the relevant information after filing a patent application, you must submit IDS to attract the attention of USPTO. Ignoring this responsibility will endanger the legitimacy of your patent.
You are not obliged to check the background technology when filing a patent application or during the examination. However, if you conduct a search, you must disclose any relevant documents to USPTO as soon as possible. In addition, you should know that if you file a patent application for this invention abroad, the search results of foreign examination institutions may also be required to be disclosed to USPTO.
8. Learn to give up when necessary and find another way.
When some rights in a patent are difficult to obtain, or later proved to be of no value to your company, you should consider withdrawing these rights. If all the power requirements are the same, then give up the whole application. If the application has not been published, you can still keep the invention as a trade secret under appropriate circumstances. You can also choose to voluntarily publish the description of the invention and put it into the public domain to prevent others from preventing you from using the invention.
9. Identify opportunities for authorization and litigation possibilities
Providing patent authorization or expanding patent portfolio should be part of your strategy. In some cases, such as when a direct competitor may infringe your patent, it is the best way to protect your patent rights through litigation. However, tort litigation is expensive and may be quite time-consuming. A more practical approach may be to analyze your technical field to identify potential licensees and formulate authorization strategies. The licensing fee is lower than the litigation fee, and the royalties collected from patent licensing can also be your company's source of income.
10. Use republishing, re-examination and conflicting procedures.
Even after obtaining a patent, you can still obtain a wider range of claims by applying for a new patent. Errors in the process of obtaining patents can also be corrected through this procedure. If you find the background technical document after the patent right is granted, and you think it may have a negative impact on your patent, you should review the document for your patent request. Re-examination may result in different claims, but the possibility that your patent will be declared invalid because of this document will be greatly reduced.
If you realize that someone else has filed a patent application for the technology that you think was invented first, you can file a patent application that contains claims that may cause conflicting procedures. When two applicants file patent applications for the same invention respectively, USPTO will announce the conflict procedure. A small court will decide who is the first inventor in the future. The first inventor will be entitled to a patent.
Authors: Michelle Liu, Dennis Fernandez,
Fernandez & LLP United company
Here's one:
Usa David Levin patent agency-Shanghai representative office
Specializing in China people or companies applying for patents in the United States.