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PATENTS

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US Patents provide patent owners with the exclusive right to prevent others from making, using, offering, or selling their patented products and ideas. Fasth Law Offices has expertise in a variety of areas relating to patent and trademark law. We are authorized to practice before the US Patent and Trademark Office (USPTO) and Swedish Patent Office (PRV). Our patent-related services include:

  • Initial analysis of potential patentability of inventions;
  • Preparation of patent applications;
  • Filing and prosecution of provisional, utility, design, and PCT patent applications;
  • Preparation of opinions regarding the infringement and validity of patents; and
  • Litigation involving patent infringement, validity, licensing, and related matters.

We have extensive experience in filing patent applications for a variety of technologies including the mechanical, electrical, optical and chemical arts; computer hardware and software; drugs and pharmaceuticals. Information technology (IT) related inventions are a significant part of our patent practice. There are many requirements for an invention to be patentable some of which are outlined below:

A. Patentability

a. In general, an invention is anything new to the inventor.
b. A patentable invention is a product/idea that is:

i. Novel (35 USC 102) -- something that is new including a new improvement of an existing product/concept; and
ii. Unobvious (35 USC 103) --something that is not obvious to one of ordinary skill in the field of the technology such as obvious combinations of existing technology.

B. Patents and patent applications

Patents may cover a process, machine, manufacture or composition of matter. There are several types of patent applications including:

a. Provisional patent applications may be filed before filing a regular patent application. A provisional application must be followed by a regular patent application or an international PCT application (within one year) in order to have the patent authorities examine and to determine patentability of the application. Provisional patent applications are useful to defer costs until after the commercial opportunities of the invention are better known.

b. Regular utility patent application may be obtained by filing a conventional patent application with the U.S. Patent and Trademark Office (USPTO). The U.S. patent application must describe how to make and use the invention and must include claims clearly defining what is to be protected.

C. Patent duration and infringement

a. The duration of a utility patent is twenty years from the filing date of the patent application. The protection starts when the application issues as a U.S. Patent.
b. Patent owners have the right to bring suit against an infringer of the claimed invention. It should be noted that patents do not cover features that are disclosed but not claimed.

D. Design patents

Design patents cover any new original and ornamental design for an article of manufacture. The duration of a design patent is fourteen years from the issue date. A design patent covers what is shown in the design patent drawings.

E. Loss of rights

a. Publications destroy patent rights unless:

i. The publication is made less than a year before the application filing date and the inventor can demonstrate to the USPTO that he/she invented the subject matter before the publication date.
ii. The publication is by the inventor and is made less than one year prior to the U.S. filing date. The US patent law has a one-year grace period before the inventor's publication is considered prior art.

b. Most non-US countries are absolute novelty countries. Any publication disclosing the invention will bar an inventor from obtaining patent rights in most European and Asian countries. It is therefore important to file the application before the invention is made public in order to protect the invention outside the US.

F. Conventions and treaties

Many countries including the United States belong to the Paris Convention and the Patent Cooperation Treaty (PCT). These agreements allow an individual to file initially in one country and then have a period of time to file in other countries. By filing in the first country, an initial filing date is provided which is effective for all subsequent filings, provided certain rules are followed.

a. Paris Convention

The Paris convention provides the right of priority with regard to applications filed in foreign countries after an application is initially filed in a home country (such as Sweden or the United States). If a patent applicant files in the foreign countries within the one-year of the original patent application filing date, the patent applicant receives the original patent application filing date as the effective filing date in the various foreign countries. For example, by filing a patent application in Sweden less than one year after the initial patent application is filed in the United States, the effective filing date in Sweden will be the United States patent application filing date. The Paris convention requires that the initial application be the first application made on the invention. The Paris convention also requires that a certified copy of the original priority application be filed in each country in which a claim of priority is made.

b. Patent Cooperation Treaty (PCT)

The patent cooperation treaty provides for an international application that must be filed within one-year of the filing date of the original patent application. For example, a PCT application must be filed within one year of the filing date of the Swedish or United States application. At the time the international application is filed, it is necessary to designate one or more countries. After 20 months has expired from the initial application (PCT chapter I) or after 30 months has expired from the initial application (PCT chapter II), the applicant may enter the national phase in one or all of the countries initially designated. The PCT procedure provides for an International Search Report (chapter I) and an International Examination Report (chapter II). Additionally, the PCT procedure is a good way to defer the expensive translation and filing fees in many foreign countries. If the International Search Report is quite negative, the application may be abandoned without incurring the costs associated with the various foreign countries. If the invention is important and the International Search Report is negative, it may be possible to amend the claims to get around the cited patent references.

c. European Patent Office (EPO)

A European patent application may be filed which designates one or several European countries. With the event of the European Union, many European requires that all patent applications be filed at EPO. After completing the European examination process successfully, and after the opposition time has passed with no successful opposition to the European patent application, the procedure moves to the designated countries. The designated countries issue the actual patents.

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