What’s the difference between a provisional and non-provisional patent application?
A provisional patent application is a less expensive, simplified, and more flexible patent application. It provides the benefit of establishing an early effective filing date which does not affect the 20-year patent term. Compared to a non-provisional application, a provisional application will not be examined by the USPTO, will not be published, and does not need to have all the claims stated. Provisional applications act as placeholders, allowing the inventor to continue to fully develop the technology until it is ready to be submitted as a non-provisional application.
How long does the provisional application protect the invention?
A provisional patent application protects the invention for one year. The application will remain pending and unexamined until the applicant files a non-provisional application within that one year. If the applicant fails to do so, the invention will be unprotected after the one-year period ends.
How long does it take for a patent to be granted?
It may take from 3-5+ years for the patent to be granted after filing the non-provisional application. The length can vary based on the area of the technology and patentability issues.
How long does the granted patent protect the invention?
A granted patent will protect the invention for 20 years starting from the initial filing date of the non-provisional application.
What is an Office Action?
After filing a patent application with the USPTO, a patent examiner will review the application and respond in what is called an “office action.” This written correspondence could be in the form of a restriction requirement (see below), a non-final office action, or a final office action. In this response, the patent examiner will explain why certain claims were rejected or allowed. It is common for the majority of the claims to be initially rejected. This is then followed by a response from the applicant to every objection and rejection.
What is a Restriction Requirement?
A restriction requirement is a type of office action that rejects claims when they involve more than one invention. A patent can only be granted for ONE single invention. If the examiner believes that there are two or more inventions, the inventor will then have to make a decision and select one invention to proceed with examination. It is common for a patent application to have claims rejected for having more than one invention. Any rejected claims that were not selected can be later rejoined to this application or pursued on a separate application.
Oftentimes, two separate inventions are found when there is a method and a device within the same set of claims.
What is an Assignment and why do I need one?
An assignment is the transfer of interest, rights, and title to a patent, from an assignor to an assignee. An inventor (assignor) may have a legal or contractual obligation to assign their rights to a certain institution such as a university or place of employment (assignee). You remain the inventor of the technology even if you transfer your ownership of it.
Under the terms of your employment agreement, Boise State University requires you, as the inventor, to transfer ownership of the patent application by signing an assignment document.
What makes someone an “inventor” on a patent?
An inventor can only be an individual who participates in the conception of a subject matter claim of an invention. Anyone who has made additional contributions that do not involve the conception of the invention, such as participating in the creation of a prototype, gathering data, or supervising the project, is not considered an inventor. An individual may be a joint inventor to the patent only if they contribute to the “conception” of at least one claim. Since inventorship is based on the conception of claims, as the prosecution proceeds and claims are amended or modified, inventorship may change.