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Your Obligations While Your Patent Application Is Pending

February 23, 2012 | Comments: 0 | Views: 125

You've filed your patent application. Now, you have a patent pending. Do you just wait until you hear from the US Patent and Trademark Office (USPTO)? The answer is no. US Patent laws impose certain duties to you, the patent applicant, while your patent application is pending. Among your duties are:

Duty to Disclose Prior Art- Inventors and assignees have to disclose prior art that is known to them. Whether you are a solo inventor or you have assigned your patent rights to a company, you are bound with this duty. For companies that have been assigned the patent application, the duty extends to your lawyers and those who are closely involved in the patent application process. If they know of any prior art, they must be disclosed during the pendency of the application. The consequence of not fulfilling this obligation would be that the resulting patent can be invalidated.

Duty to Disclose Best Mode- When you obtain a patent, you are given exclusive rights to the invention for 20 years from the time you filed your first application. The term "exclusive rights" means you can exclude others from importing to the US or making, selling, or using in the US your patented invention. There is a reason why US laws provide you with exclusive rights. The reason is the government wants you to disclose your invention to the public so that the public can use your invention once your patent expires. Naturally, the government expects you to disclose at the time of your application the best way you think your invention should be practiced. This is referred to as the best mode. Before the America Invents Act (AIA) was signed into law in September 2011, failure to disclose the best mode used to be a basis for invalidating a patent. While it is no longer a basis for invalidating a patent, the requirement remains.

Keep Track of Deadlines- One of the deadlines is filing your foreign patent application. If you want to obtain foreign protection, you have to file your PCT application within one year from your first application filing to be able to preserve your priority date. Being able to preserve your priority date can help you avoid being barred from obtaining a patent for the invention due to certain activities, such as offers for sale, public use, or public disclosure. Another deadline to watch is the deadline to respond to office actions. An office action is a correspondence from the USPTO that includes the examiner's decisions about the patentability of your invention. In general, you only have 3 months from the time the office action is mailed to respond. You can extend this deadline up to 3 months by including a petition for extension of time and fees for the extension of time.

While not really an obligation, it is a good idea to make sure any improvements you have made to your patent pending product is included in the patent application. It is common for the product to be substantially improved after the patent application is filed either because inventors or companies have obtained more funding from investors, which have been used for research and development, or the patent pending product has been commercialized. Improvements to the patent pending product are often made after gathering consumers' feedback and experiences. The most valuable IP may very well be in the improvement, and it would be a shame if the patent does not protect the improvement. Improvements are typically protected by filing continuation applications. Continuation applications have to be filed before parent applications are either abandoned or issued into patents.

Source: EzineArticles
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