Mitchell Law PLLC

Should I assign my patent to my company?

August 6, 2015adminPatents


Assignments transfer ownership from one entity to another or from an individual to a company, e.g., an inventor to a company. The decision about whether to assign an intellectual property asset such as a patent to a company is particular to your specific situation. Making a patent assignment or other intellectual property assignment to a company has advantages, such as:

  1. Providing a corporate structure for engaging in licensing/royalty agreements and ownership portions;
  2. Patent assignments give the company a clear right to exclude others from making, using and selling the patented invention; and
  3. Certain rights and liabilities exist by virtue of selling a patented product. These rights and liabilities are affected by providing notice of the patent by, for example, properly marking the product with the patent number, “patented” or abbreviation “pat” as reasonable under the circumstances. If a company is selling the product, rights may be strengthened and liabilities reduced by making the assignment and providing the appropriate patent notice.

Assignments can affect a company’s asset valuation, having tax and accounting consequences – consult your accountant and/or tax attorney for a specific evaluation of any assignment.

To transfer patent rights of an inventor, the inventor must sign an assignment agreement to a company. Upon execution, the inventor’s rights in the application transfer to the company. The company will then have the rights to the patent or patent application. This means that the company will receive all of the rights to the patent or patent application and will have the right to file subsequent applications claiming priority to the subject matter disclosed in the assigned application.

If you have any questions about patent assignments, trademark assignments or other intellectual property assignments please contact us.

Can I make my own Patent Application Drawings?

January 17, 2012adminPatents

Yes, you could, but it likely isn’t a good idea.  For provisional patent applications, generally self-drafted black and white drawings are sufficient, provided that they show each feature or aspect of your invention.  For nonprovisional utility and design patents it generally is more expensive in the long run to create your own drawings.  The patent office has specific technical rules related to shading, font size, number placement and order, page margins, and arrangement of the drawings.  If you submit an incorrect set of drawings the office will likely object to the set of figures requiring that you resubmit a compliant set.  Resubmitted drawings make then be objected to as introducing inappropriate “new matter.”  Additionally, there are legal requirements related to the interconnection of the patent drawings the specification section of the patent application and the claims.  The drawings in combination with your specification must sufficiently enable one skilled in the art to make or use your invention; if not, your patent application will not be granted by the Patent Office.  For claim purposes, the drawings must show each element included in the claims.  Elements that are excluded from the drawings may inhibit proper claiming of your invention by unduly limiting or narrowing your claims or prevent proper claiming entirely.

At Mitchell Law PLLC we work with affordable, talented draftsman with years of experience.  Please contact us if you would like more information about our services or wish to review drawing set examples.


January 8, 2012adminFeatured

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January 8, 2012adminFeatured

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January 8, 2012adminFeatured

Accelerated Patent Application Examination

August 11, 2011adminPatents

Any non-reissue utility or design application filed under 35 USC §111(a) (nonprovisional application or, i.e., a utility application) on or after August 25, 2006 is eligible for the accelerated examination program.

The USPTO has established procedures under which the examination of a patent application may be accelerated. Under one of these procedures, the USPTO will advance an application out of turn for examination if the applicant files a grantable petition to make special under the accelerated examination program.

To apply for the accelerated examination program, an applicant must conduct and provide a statement that a preexamination search was conducted, pay the fee set forth in 37 CFR §1.17(h), and provide an accelerated examination support document that includes:

  1. an information disclosure statement (IDS) citing each reference deemed most closely related to the subject matter of each of the claims
  2. an identification of all the limitations in the claims that are disclosed by the reference specifying where the limitation is disclosed in the cited reference
  3. a detailed explanation of how each of the claims are patentable over the references cited with the particularity required by 37 CFR 1.111(b) and (c)
  4. a concise statement of the utility of the invention as defined in each of the independent claims, and
  5. a showing of where each limitation of the claims finds support under the first paragraph of 35 U.S.C. 112 in the written description of the specification.

Petitions to make special based on applicant’s age or health are available to expedite examination of your patent application and are subject to different application criteria.  Note that a petition to make special based on applicant’s health or age may be filed in the application prior to the first Office action.

If you have any questions about the accelerated patenting process or would like to have a patent attorney draft and file a patent application for your invention please contact us.

Are provisional patent applications published by the U.S. Patent Office?

August 4, 2011adminPatents

No.  Provisional patent applications are not published since they are not examined and they are only pending at the U.S. Patent Office for 12-months.  After 12-months, a provisional patent application automatically becomes abandoned and therefore will is not published.  Hence, a provisional patent application will remain secret at the U.S. Patent Office with a few exceptions discussed below.

While a provisional patent application is never published by the U.S. Patent Office for the public to view or search, there are two situations when a provisional patent application will be made publicly available for inspection and only if a non-provisional patent application is subsequently filed claiming priority to the provisional patent application.

  1. The provisional application will be published if the non-provisional patent application is published; or
  2. The provisional application will be published if the non-provisional patent application is granted as a patent.

If either of the two situations occur then the public may request a copy of the provisional patent application from the U.S. Patent Office.

Provisional Patent Application

December 19, 2010adminPatents

What is a Provisional Patent Application?

A provisional patent application consists of a written description of your invention and drawings that together explain how to make and use your invention. The drawings may be informal. The provisional application is not examined by the Patent Office and functions as a placeholder for a subsequently filed utility patent application (also referred to as a regular application or a nonprovisional patent application). An inventor has one year from the filing date of the provisional application in which to file a utility patent application for the same invention, claiming the benefit of the filing date of the provisional application.

Because a provisional application requires the same level of detail as a utility application, it is typically not much quicker or less costly than a utility application. With limited time or financial resources, however, a provisional application may be better than no patent application. For example, a provisional application may be advantageous if the inventor plans to disclose the invention on short notice and lacks sufficient time to prepare a utility patent application. In that situation, the provisional application provides the inventor with an earlier filing date than might otherwise be obtained, provided that the subject matter claimed in the utility application was disclosed in the provisional application.

Provisional Patent Application Advantages

• During the year before filing the utility application, you may assess whether your invention is commercially viable before committing to the higher cost of filing and pursuing the regular patent application.

• A “Patent Pending” notice may be used on your invention or invention advertisements to deter competitors from copying your invention.

• Avoid building and testing your invention. A filed provisional application establishes a date of constructive reduction to practice. The U.S. awards patents to whomever invents first. Constructive reduction to practice (filing of the provisional application) establishes a date of invention. An earlier filing date may be established by proving a “date of conception” and showing diligence in reducing the invention to practice (e.g., filing the provisional application).

• Establish an official United States patent application filing date for the invention. Filing a provisional patent application gives you an official patent filing date. As explained above, the Patent Office awards patents to the first to invent, not the first to file a patent application. However, diligence from your date of conception to filing must be shown to retain the early invention date; complacency filing may result in forfeiture of your patent rights.

Provisional Application Disadvantages

• Inaccuracy will undo your protection. A provisional application that fails to explain how to make and use the invention cannot be relied on for establishing an early filing date, proof of invention, or constructive reduction to practice.

• Modifying your invention or adding new improvements (known as “new matter”) will force you to file a new provisional application or regular patent application. Modifying the manner of operation or adding any new technical information that was not in the provisional application inhibits reliance on the date of the provisional patent application for such new matter. A new provisional application that reflects these changes may be filed.

• You must file foreign patent applications within a year. You must file patent applications in any country in which you seek protection within one year of the provisional patent application’s filing date.

Do I Need to Build my Invention Before Applying for a Patent?

December 5, 2010adminPatents

No. It is not necessary to build a model or prototype of your invention before submitting a patent application. The filing of a patent application serves as conception and constructive reduction to practice of the subject matter described in the application. Thus the inventor need not provide evidence of either conception or actual reduction to practice when relying on the content of the patent application. However, the inventor must be able to describe the invention in such detail that a person of ordinary skill in the art could make and use the invention without undue experimentation when filing the application.

Actual reduction to practice – the physical construction of an invented object or a physical carrying out of an actual process in a method invention, can facilitate discovery of additional embodiments of your invention and best modes for practicing the invention.

If you have any questions about the patenting process or would like to have a patent attorney draft and file a patent application for your invention please contact us.

Patent Markings

December 4, 2010adminPatents

Providing notice to potential infringers is critical to recovering damages in infringement suits. Notice may be provided by affixing the words “patent” or “Patent No.” and the actual issued patent number to the article in a conspicuous manner. In the event of failure to mark, the patentee may not recover damages from an infringer unless the infringer was notified of the infringement and continued to infringe after the notice.

Products or articles sold after applying for a patent, but before the patent issues may have affixed the terms “Patent Applied For” or “Patent Pending.” These phrases give notice that an application for patent has been filed in the Patent and Trademark Office and may be subject to patent protection in the future, as patent protection does not start until the patent is granted by the Patent Office.

False use of these phrases or their equivalent is prohibited and will subject businesses and individuals to liability including lawsuits for fraud, penalties, and other fines for each fraudulent use. Current U.S. law allows for any individual to bring suit against a company or individual selling or offering for sale, articles bearing false marks.

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