The First of Four Articles on the Patent Process

Fritz Klantschi

This is the first of four articles covering in general terms the process to secure patent rights both domestically and in foreign countries.  This first article discusses the preliminary phase of the process, before the patent application is filed. Each of the areas discussed is a brief overview of an aspect of the patent process.  If you and your management team wish clarification or elaboration on any of the topics, please contact our office at your convenience.  We welcome an opportunity to discuss the patent process and answer any questions you may have.

A company’s intellectual property (IP) program should parallel the company’s product development cycle.  At various stages of the product development process, various IP activities are suggested.  Early in the process, the IP activities are designed for information gathering and decision-making.

The following paragraphs highlight various types of searches and analyses that may be conducted prior to starting the formal process of drafting a patent application.  The described searches/analyses are not the only types available.  Rather, they are some of the more frequent searches/analyses conducted.  Results from these searches/analyses give a company necessary information to make decisions on proceeding with development and/or seeking patent protection for their product.   Not all companies, however, conduct all of these searches/analyses.

At the outset, it is incumbent for companies to regularly evaluate product development and research progress in the applicable technology areas.  For a company contemplating entering a particular technology area, a State of the Art Patent Search may be conducted.  A State of the Art Patent Search is the most general of all the patent searches and provides a broad review of what exists in a given field.  This type of search provides up-to-date information about progress in a specific technical field.  Even for companies currently active in a particular field, State of the Art Search results can lay out a path to design around the current art.

A Patent Landscape Report is a deeper analysis of the results of a State of the Art Search.   By examining large sets of patent data, a company gains a better understanding of the “big picture” to help them make informed decisions.  A Patent Landscape Search can identify potential patent portfolios for acquisition, existing or potential infringers to be pursued, and potential technology to be exploited.

To obtain U.S. patent protection, a potential invention must be new (novel), useful, and non-obvious (There is sufficient difference in the invention from what is known such that one of ordinary skill in the technology area would not find the difference(s) obvious to make the change(s).)   A Patentability Search is used to determine what scope of protection, if any, may be available for a particular embodiment (an embodiment is a version of the invention (i.e., the manner in which an invention is made or used)) of an invention. Patentability searches are typically conducted after the conceptual engineering stage.  A Patentability Search will strengthen a patent application by better defining the inventive contribution of the new product over the prior art.

Many companies understand the value of seeking patent protection before launching a product.  Equally important is obtaining product clearance is a “freedom to operate” (FTO) opinion.  A FTO opinion determines whether there are claims in any unexpired patents that might be construed to cover a commercial embodiment of an invention (i.e., whether the company’s new product may infringe one or more claims of an unexpired patent.). By performing FTO analysis before developing and launching a new product, a company can limit the risk of future litigation and avoid unnecessary expense.  FTO analysis done early in the cycle of product development affords companies the opportunity either to modify the design and avoid infringement or to seek a license.  FTO searches are often conducted simultaneously with a patentability search.

If after review of any commissioned searches/analyses, a company decides to proceed with patenting their innovation, the process enters the Drafting Stage.