Some have criticized the Patent Office for admitting the horrible state the patent system is in.  I think, however, that this Dashboard represents another progressive step.  The PTO recently created the Inventor’s Eye, a newsletter for the inventor community.  A number of months ago, it developed and then expanded the Green Tech Accelerated Pilot Program.  Under the significant budgetary burdens that the PTO faces, these are real gains.

If you”ve done some reading about patents, you may have seen references to an “effective filing date.” For instance, while patent attorneys will often shorthand an explanation of patents by saying they offer protection for twenty years from filing date, they really mean that patents last twenty years from their effective filing date.

Typically, for most patent applications, the effective filing date is the day the application was filed. However, not all patent applications are typical; they can be continuations, continuations-in-part, or divisionals. While these can all issue as patents, they have special significance (a divisional, for instance, is an application that splits off from an original patent application, because the original claimed two or more inventions when it can only legally claim one) and they don’t always use their own filing date as the effective filing dates.

Instead, effective filing dates adopt the filing date of the application from which they sprung. So if the original – or parent – application was filed on January 1, 2009, and a divisional was filed on May 1, 2010, that was originated from the parent application, the divisional’s effective filing date will be January 1, 2009.

If you first file a provisional application and then later file a non-provisional, that non-provisional application can claim the provisional’s filing date as its own. The provisional’s filing date becomes the effective filing date for the non-provisional application and the patent that eventually issues.

These domestic examples are not the only situations in which a filing date is significant.  If your US application claims the benefit of an earlier foreign filing, the foreign filing date is not applied to your US application, but it can be relied upon for some prior art rejections.

What are the ramifications of effective filing dates? There are many. First, most patent applications are published 18 months after their effective filing date. Thus, in the example above, the parent and its divisional child will both be published on June 1, 2010. That means the divisional will be published just one month after it was actually filed. Publication day can be a starting point for obtaining damages in the event of infringement. Also, an earlier filing date can be an obstacle for other patents. Because the filing date is the presumptive invention date, an earlier effective filing date can mean that patent applications filed later by others can be refused because they were presumably invented later than yours.  And lastly, the filing date is the date on which an invention is deemed to have been invented for prior art purposes.  Thus, references that post-date the effective filing date cannot be used against the application.

I want to keep it secret!

• I want to make sure that no one knows about my invention until the last minute – the moment the patent issues.
• My patent application description discloses a trade secret that I want to preserve as long as possible.
• I want to prevent big companies from learning about my invention and doing some serious R&D to discover a workaround.  They might file patents that surround my invention and thus keep me from practicing and profiting from my invention.
• I don’t care about ever obtaining patent protection internationally.

I think publishing the application is a good idea!

• If someone copies my invention while it is in prosecution, I can try to get damages for the infringement that occurs between publication and issuance.
• I can use the publication as prior art and prevent others who file after my publication date from getting a patent.
• I want to file internationally.
• Everyone else is doing it.

Procedural Pointers:

• The request must be filed with the application.  Federal statute requires that the non-publication request be made contemporaneously with the filing of the application.
• You can file a non-publication request and then rescind it later if you change your mind.
• If you made a non-publication request and then filed a patent application for the same invention in another country, you only have 45 days to notify the Patent Office.  If you inform the PTO more than 45 days later the foreign filing, your US application will be abandoned.

Appropriately bringing this series of explanatory posts to an end, the claims conclude a patent.  A patent can have one claim or many; generally, though, they’ve got 20 or less because the Patent Office will let you write up to 20 claims without paying extra fees for additional ones.  If the invention necessitates a more complete claiming profile, going beyond the 20 may be a good idea.

Patent claims are written in independent and dependent form.  Independent claims stand on their own.  Dependent claims – get this – depend from independent claims.  They include all the subject matter of the independent claims from which they depend and then add additional subject matter, making the dependent claim more specific (narrower) than the independent claim.  Again, the Patent Office will let you have 3 independent claims “for free.”

The claims are what count when it gets down to litigation.  They define the scope of the invention or how far the protection of the patent extends.  Therefore, whether the defendant’s product infringes the patent depends on the breadth of the claims.  However, the claims aren’t considered in isolation.  Their relationship to the drawings, the detailed description, and the patent’s disclosure as a whole is important, because those parts affect how the claims are construed in court.  So while the claims are a crucial component of the patent’s protection, they aren’t the whole story.

The description of the drawings is just that.  It refers to each drawing by number and explains what the drawing is.  The description is brief – it isn’t intended to go into great detail, but it does provide a general explanation of what the drawing is, the direction or orientation of the drawing, perhaps what the drawing features.  The description helps create some continuity between the drawings and the more detailed description of the invention.  The description is also useful for connecting one or more drawings – perhaps where it isn’t clear that two drawings represent opposed front and back views of the invention, or that one drawing is a sectional view of the invention taken from a sectional line of another drawing.

The summary should describe the nature and subject matter of the invention.  The summary should be comparable in scope to the disclosure and the claims of the patent – both when initially filed and before issuance.

Some patent drafters include the objects or purpose of the invention in the summary.  Others feel that doing so could limit the patent, if it is ever the subject of litigation, to covering only what was disclosed as an object.  They believe that avoiding disclosure of any objects will prevent the patent from be artificially limited to those narrow explanations.