Monday, December 28, 2009

Getting a New Patent - A New Hot Water Demand System Patent – In Real Time.

We recently filed a provisional patent application for our new hot water demand system. A year prior to that we had done what our patent attorney called a “document dump”. As I understand it, that gave us a year’s worth of protections in so far as establishing a date of invention. Once the year expired we decided to pursue a provisional patent.

Provisional Patent

A provisional patent allows you to establish a filing date for your patent, but you can still modify the patent later. However, making later modifications does not extend the protection period… which lasts 20 years.

We filed the new patent application a couple of weeks ago. I just received a letter from our patent attorney.

The letter informs us that our patent has been filed and the USPTO has assigned us a U.S. patent application with our application number and further tells us our official filing date is November 18, 2009.

She also enclosed a copy of a “Notice To File Missing Parts of Application” received from the USPTO. She enclosed a copy of the missing document, the “inventor’s declaration, which she asked me to sign and return. It has to be received by the patent office on or before Feb. 4th.

Another interesting item in the letter is this quote:
“We want to remind you that there is a strict and continuing duty to disclose to the USPTO prior art and other information that is material to the patentability of your invention. There is no obligation to perform a prior art search, but if you already know or become aware of any material information while the application is pending, it must be submitted to the USPTO. We will file an Information Disclosure Statement with the USPTO for the search that was done prior to filing of this application.
If you or anyone associated with the prosecution of this application knows or becomes aware of any information that may be material to the patentability of the invention, please contact me so that I may arrange to have the information submitted to the USPTO. If I do not hear from you, I will assume that there is no additional information to submit at this time. “
So in other words, if I surf the internet tomorrow, and I stumble across something that might impact my patent application, I am obligated to inform the patent office.
The letter also states that the USPTO typically publishes an application at about 18 months from the original priority date.
One more quote that could interest some viewers:
“The American Inventors Protection Act of 1999 makes available to patent applicants extensions of the patent term where the USPTO causes delays during examination. The USPTO defines the types of delays giving rise to such extensions of time. However, any potential term extensions caused by USPTO delay are offset or reduced by any delays caused by an applicants' "failure to engage in reasonable efforts to conclude prosecution." Consequently, filing any papers (Information Disclosure Statements, Responses to USPTO Office Actions, etc.) is best done promptly
The next step, if my memory serves me, is that we will receive something from the patent examiner telling disallowing some of or all of our claims. I’ve never had a patent application that was just simply accepted by the patent examiner. It’s like they have to put up some kind of objection. So I expect that to happen this time as well.

We will argue and usually we will loose a claim or two but keep most of the claims intact or only slightly modified. At least that is my hope.

When I get a reply from the patent office or something from my patent attorney I will be publishing it. Patent reporting in real time... still a snails pace though.