Patents
One of the three main types of intellectual property (IP) is patents. They are legal instruments granted by governments to protect inventions and provide inventors with exclusive rights to their creations.
The three categories of United States (U.S.) patents are utility, design, and plant patents. Utility patents protect the functional aspects of inventions, such as innovative processes, machines, or chemical compositions. Design patents, on the other hand, safeguard the visual or ornamental aspects of a product, ensuring its unique appearance remains exclusive. Plant patents protect novel plant varieties developed through asexual reproduction, encouraging advancements in agriculture and horticulture.
The patenting process in the U.S. involves submitting an application with a detailed disclosure of an invention to the United States Patent and Trademark Office (USPTO). The USPTO then evaluates the information to ensure the invention is new, useful, non-obvious, and properly described. If granted, a U.S. patent owner is given the sole right to make, use, sell, offer for sale, import, and license its invention in the U.S.
Patents are not just about individual gain, they also promote the sharing of knowledge. After expiration, the rights enter the public domain, allowing others to build upon these concepts and further advance innovation. Overall, patents play a crucial role in fostering creativity, technological advancements, and economic growth.
Patent Services
Since patents in the U.S. are granted by national offices and not state agencies, to obtain a patent in Puerto Rico, an application must be filed before the USPTO.
As patent attorneys based in Puerto Rico, we advise clients on the filing and prosecution of patent applications in the USPTO and international patents under the Patent Cooperation Treaty (PCT). We further assist our clients in all phases of the patent prosecution process, including executing prior art searches, drafting and filing of applications, preparing amendments, and responding to office actions. We collaborate with a network of highly experienced professionals which allows us to manage electrical, mechanical, software, biology, chemistry, and medical related inventions, among others.
We also handle other patent related matters. Some of our main services include:
Provisional Patent Application
A provisional patent application is a type of United States patent application that is filed in the United States Patent and Trademark Office (USPTO) which is not examined, but serves to secure a filing date. After filing a provisional patent application, a patent applicant has one year to file a non-provisional patent application and claim the benefit of the filing date of the provisional patent application.
Find out more information about U.S. provisional patent applications on the USPTO website by clicking the following link.
Nonprovisional Patent Application
To obtain a United States patent, a nonprovisional patent application must be filed in the U.S. Patent and Trademark Office (USPTO). When properly submitted, it is placed in a queue for examination by a patent examiner.
Find out more information about U.S. nonprovisional patent applications on the USPTO website by clicking the following link.
PCT (International) Patent Application
A patent application filed under the Patent Cooperation Treaty (PCT) makes it possible to seek patent protection for an invention simultaneously in more than 150 countries by filing a single “international” patent application, instead of filing several separate national or regional patent applications. Nonetheless, the individual granting of patents remains under the control of each national or regional patent office, in what is called the “national phase”.
Find out more information about PCT (international) patent applications on the World Intellectual Property Organization (WIPO) website by clicking the following link.
Response to Office Action
An office action is a document prepared and sent by a patent examiner related to issues with a patent application.
Renewal or Maintenance Fees
If payment of patent renewal or maintenance fees are not submitted in time, patent protection lapses and all patent rights become unenforceable. The first patent maintenance fee is due between three to three and a half years after the patent issuance date, the second is due between seven to seven and a half years, and the third is due between eleven to eleven and a half years.
Prior Art Patent Search
Mainly used to identify any publicly known information, before committing the necessary resources to file a patent application.
The following is a list of free global patent search databases: Google Patents, Espacenet, USPTO Web Patent Database, PQAI, Patenscope by WIPO, WIPO’s INSPIRE, and Lens.org.
Freedom to Operate (Infringement) Search and Opinion
Serves to determine if a particular action can be executed without infringing on any third-party owned patent rights. It is usually executed before bringing a product to market.
Validity/Invalidity Search and Opinion
A search conducted after the issuance of a patent to identify the enforceability of its claims or possibility of canceling one or more claims.
Ownership Opinion
Serves to identify who owns and holds the rights to a patent.
Recording of Documents
Any document relating to interests in patents or patent applications, such as assignments and licensing agreements, can be recorded in the USPTO.
Assignment
An agreement where a patent holder transfers its right, title, and interest in a patent or patent application.
Licensing Agreement
A patent owner may grant others the exclusive or non-exclusive right to make, use, sell, offer for sale, and/or import a patented invention, under a set of pre-established conditions.
Portfolio Management
Serves to review and monitor deadlines, enter filings, and provide counsel on how to maintain patent and product strategies in harmony.
Litigation and Enforcement
Includes investigations, filing of lawsuits, litigation, and settlement negotiations.
