Patents are a form of intellectual property protection offered to inventors by the United States government. An issued patent grants an exclusive property right to make, use or sell an invention for a period of generally 20 years in the U.S. A patent may be traded, licensed or sold at the discretion of the patent owner(s). The issuing of property rights to inventions through patents was established to promote technological and industrial innovation.
Sometimes, a single individual can revolutionize an industry, but more often, this requires a collaborative effort on behalf of many individuals working together. The granting of patents in the long run facilitates the distribution of ideas throughout the world by protecting the investment in intellectual endeavors.
Inventors may obtain patents for any new and useful process, machine, manufacture, or composition of matter that it is both novel and non-obvious. To be novel, an invention must be new to mankind, and to be non-obvious the invention must be sufficiently different from technologies that have been used or described before. Laws of nature, physical phenomena, and abstract ideas cannot be patented.
Look Before You Leap!
Preserving your Rights in the Intellectual Property Marketplace.
Obtaining protection for intellectual assets is important to individual inventors and multinational corporations alike. Yet, many inventors are unfamiliar with the different forms of intellectual property protection that are available. Knowing your rights and the ways in which these rights may be challenged is very important to the development and preservation of intellectual property assets.
Many opportunities for obtaining intellectual property protection can be lost or severely limited by your action, by your failure to act, or by events that may or may not be under your control. No case is the same; therefore, an experienced patent practitioner should be consulted in all IP matters. However, your awareness of the basic information contained in this article may greatly improve your chances of obtaining adequate protection for your ideas.
The issuing of property rights to inventions through patents was established to promote technological and industrial innovation. An issued patent in the United States grants an exclusive property right to an invention for a period of generally 20 years. Throughout the term of a United States patent, the inventor(s) may prevent others from making, using, offering for sale, or selling the invention within the United States. A patent may be traded, licensed or sold at the discretion of the patent owner. To obtain patent protection an inventor must file a patent application and successfully prosecute this application through several steps in the United States Patent and Trademark Office.
A patent application is a technical and legal description of an invention that defines the scope of the invention and distinguishes it from what has been done before. Inventors may file patent applications for any new and useful process, machine, article of manufacture, or composition of matter that is both novel and non-obvious. There are several things that maybe negatively impact an inventor’s right to file and application for patent protection.
Inventors may lose the right to patent protection in the U.S. by publicly disclosing their invention more than one year prior to filing a patent application. Inventors may lose their right to patent protection in most foreign countries by publically disclosing the invention at any time prior to filing a patent application. Several common examples of public disclosures are listed below. In some cases, the legal consequence of public disclosure is complete loss of any practical reason to file a patent application.
In some cases, where the inventor does not plan to file foreign patent applications, it may be an effective strategy for the inventor to make and document a public disclosure of the invention for the purpose of the invention quickly becoming prior art usable against later inventors. This strategy requires that the inventor follow-up with a patent application filing within less than one year from the first public disclosure.
Examples of Public Disclosures
Disclosure to someone not bound by a secrecy agreement
Prior to sharing the details of an invention with another person, each individual including designers, manufacturers, advisors, investors, friends, and family should sign a secrecy agreement. A secrecy agreement imposes upon the signing parties a duty to keep confidential any information pertaining to the subject invention.
Inventors should keep accurate, detailed and dated records of the development of their work. However, these records should only be reviewed by a witness who is restricted by a secrecy agreement.
All prototypes of the invention should be kept out of the public eye and photographs and drawings and other descriptions of the invention should be handled only by persons bound by a secrecy agreement.
Inventors seeking design, engineering, or manufacturing input from other parties, should also obtain an agreement that those parties will assign back to the inventor the rights to any potential additional or new features of the invention that they contribute
Operating the invention for profit
The use of inventions for profit in a business may constitute a public disclosure. Therefore, this business use, even if unknown by the customer, may result in a complete forfeiture of the right to file for patent protection in foreign countries, or may begin the one-year time period in which an application for patent protection must be filed in the United States
Offering to sell or performing an invention for profit
In many cases, advertising a particular invention, publicly sharing a description of an invention with investors, promoting an invention at trade shows, submitting a paper containing information material to an invention to a professional publication, or disclosing details of an invention in a lecture may constitute a public disclosure. In some cases an offer to sell or beta-test an invention even under a secrecy agreement may be construed as a public disclosure.
Perfectionism: delayed filing to work out fine points
According to law, a patent may be issued for a novel and non-obvious invention so long as a person of ordinary skill in the art can be taught to understand and make or use the subject invention. Therefore, a patent application should be filed as soon as an inventor can adequately describe the invention to another person skilled in the relevant field. In the United States, a functioning prototype is not necessary to file for patent protection.
The time that passes, as an inventor attempts to obtain equipment, trained employees, and financing to build and develop a prototype, presents a gap in time within which other inventors may make public disclosures or file patent applications for a similar or the same invention. Actions of this type by third parties may prevent a first inventor from obtaining patent protection or severely limit the broadest claims of the invention.
Marketing your invention prior to filing a patent application can be a public disclosure. Market acceptance of a particular invention is sometimes persuasive evidence for the allowance of patent claims. Therefore, after filing a patent application, a market for the invention should be quickly created and served, if possible. However, such public marketing efforts should not be made more than one year prior to filing for patent protection. Items may only be identified as “Patent pending” after filing, and only identified as “Patented” after issuance of the relevant patent.
*This list of potential challenges to obtaining patent protection is not to be construed as complete or all-encompassing. Rather, this listing is provided by way of examples to highlight some common barriers to patentability that should be considered prior to developing an intellectual property asset.
Differences in Patent Applications
A patent is a right under which the government grants the inventor a limited monopoly, in exchange for a disclosure of the invention. The limited monopoly gives the inventor the right to exclude others from making, using, offering for sale, or selling the claimed invention in the United States for twenty years from the filing date if the inventor obtains an issued utility patent, or fifteen years from the date of issuance if the inventor obtains an issued design patent. The subject matter for a utility patent can be a process, manufacture, machine, composition of matter, or any new and useful improvement thereof. The subject matter for a design patent is the ornamental features of a utilitarian device.
In order to secure a patent, an inventor must show that the claimed invention is new, useful, and non-obvious in light of the prior art. There are two types of utility patent applications: provisional utility patent applications and non-provisional utility patent applications. If you file a provisional utility application, you must file a non-provisional application within twelve months thereafter, or your application will abandon.
Provisional Utility Application
Since June 8, 1995, the USPTO has offered inventors the option of filing a provisional utility application. The provisional utility application is designed to provide a lower initial cost; however, it may be slightly more expensive in the long run than a non-provisional utility patent application, as the provisional patent is only pending for one year and then must be converted into a non-provisional patent application if the applicant wishes to continue the pursuit of patent protection. A provisional utility patent application does not require claims or an oath or declaration, and relatively informal drawings may be used.
A provisional utility application provides the means to establish an early filing date in a patent application and permits the term “Patent Pending” to be applied in connection with the invention. Provisional patent applications are often filed by inventors who wish to have patent pending status for their invention while pursuing marketing and further development of the invention.
The applicant has up to twelve months, after filing a provisional patent application, to file a non-provisional utility application claiming the benefit of the filing date of the provisional application.
The claimed subject matter in the non-provisional application is entitled to the benefit of the filing date of the provisional application if it has support in the provisional application.
Provisional patent applications are NOT examined. A provisional application will become abandoned by operation of law twelve months from its filing date. The twelve month pendency for a provisional application is not counted toward the twenty-year term of a patent granted on a subsequently filed non-provisional application that relies on the filing date of the provisional application.
An application is placed in line for examination only upon being filed as a non-provisional application. Therefore, filing a provisional application and waiting twelve months to file a non-provisional application typically adds twelve months to the time it takes to receive a first Examiner’s Action.
Non-Provisional Utility Application
We encourage inventors who are confident in their own ability and financial resources to market and further develop the invention to file a non-provisional utility patent application, unless there are other circumstances that would favor a provisional application, such as the expense of obtaining formal drawings ($500-$1200) or timing (a non-provisional application takes longer to write due to the additional requirement of claims). Non-provisional patent applications do have claims and are examined by the PTO, usually within eighteen months. The examination process, also called prosecution, typically includes one or more Examiner’s Actions citing relevant prior art and possibly containing rejections or objections in view of the prior art, followed by our Response to any objections or rejections.
If the application is allowed (approved), issue fees are due prior to the patent issuing. Maintenance fees are required at three years and six months, seven years and six months, and eleven years and six months from the issuance of the patent.
In view of the prior art we have found before or during prosecution, or different prior art the patent examiner may find, we may need to narrow claims during examination to claim a specific embodiment. Further, in view of the prior art, there is always a risk of an invention not being patentable because it is not considered new and non-obvious.
Design Patent Application
A design patent may be granted to any person who has invented a new and nonobvious ornamental design for an article of manufacture. A design’s “point of novelty” need not be one, individual, newly-developed feature, but may instead by a specific combination of elements not found in prior art. The design patent protects only the appearance of the article, not its structural or functional features. The format of a design application comprises a description of the drawings, the drawings, and one standard claim that simply refers to the drawings.
The prosecution of a design application is the same as for other patent applications. A design patent has a term of fifteen years from the date of issuance, and no fees are necessary to maintain the design patent.
No reference characters (ie. numbers or letters) are allowed on the drawings, and the drawings should clearly depict the appearance of the object, since the drawings define the scope of the patent protection.
Filing both a utility patent application and a design patent application is appropriate when the invention not only has structural and functional features, it also has ornamental features. While a utility patent application is more conceptual and would apply to more embodiments, the success rate for utility applications is typically lower compared to design patent applications. Summarily, a design application has a narrower scope, but tends to have a higher success rate in becoming an issued patent.
Patent Questions & Answers
Is my invention patentable?
The United States Patent and Trademark Office is the ultimate authority on whether an invention is patentable. The standards for patentability include novelty and non-obviousness. To be novel, an invention must be new to mankind, and to be non-obvious the invention must be sufficiently different from technologies which have been used or described before. Laws of nature, physical phenomena, and abstract ideas cannot be patented.
How will I know if my invention has been used or described previously?
A number of databases containing information on previous patents exist. Many such databases are available for public searching, or a registered patent attorney or agent may be retained to perform a preliminary search. Preliminary searching may help inventors determine whether a particular invention has been anticipated by a prior patent; however, searching is often incomplete and does not guarantee patentability.
Is there an inexpensive way to preserve my intellectual property rights?
The only way to protect your rights to an invention is to file a patent application with the United States Patent and Trademark Office. However, several different filing strategies are possible.
Can I apply for a patent online?
There is no online application available. Typically, an application for a patent should be prepared by a licensed patent attorney or agent (registered with the U.S. Patent Office) who understands both the principles of your invention and the fundamentals of the patenting process. Individuals may prepare their own patent applications, but, without a working knowledge of the patenting procedure, it may be difficult to obtain adequate protection for an invention.
Can I patent an idea?
You cannot patent an idea in the abstract. To obtain a patent, you must first reduce the idea to practice. In other words, a patentable invention must be developed to the point that someone of average skill in the relevant industry is able to make and use it. However, it is not necessary to manufacture a prototype or create engineering drawings or plans.
How long does it take to get a patent?
The patenting process typically takes 1 to 3 years depending on the particular circumstances.
How much does it cost to get a patent?
Typically the total cost for obtaining a utility patent through our office is between $5000 and $15,000, and the cost for obtaining a design patent through our office is between $2,000 and $4,000. The cost is often a function of the complexity of the invention, the field of the invention, the number of alternatives encompassed by the invention as you choose to describe it in your application, and the similarity of the invention to prior inventions.
After I file a patent, are my rights protected?
As soon as a patent application is filed for your invention you can mark your product as “Patent Pending”, but you cannot enforce your patent rights until the patent issues. Only an issued patent from the U.S. Patent and Trademark Office can be used to protect you from having your invention made, sold or used by others in the U.S.
What are my rights under an issued patent?
An issued patent confers upon an inventor the right to exclude others from manufacturing, using, offering for sale, or selling, an invention in the United States for a period of generally 20 years from the date on which an application is filed. A patent is not a license to manufacture or sell a product.
If two or more persons work together on an invention, to whom will the patent be granted?
If each individual had a share in forming the ideas for the invention, they are joint inventors and a patent will be issued to them collectively. However, if one person has provided all of the ideas for the invention, and the other has only followed instructions in making it, the person who contributed the ideas is the sole inventor and the patent will be issued as such.
Can a person or business entity other than the inventor(s) apply for a patent?
Yes, if the inventor(s) have assigned, or have an obligation to assign, the invention and application, or if the person/entity shows “sufficient proprietary interest” in the invention or is the legal representative of the inventor(s) under certain U.S. laws.
What do the terms "patent pending" and "patent applied for" mean?
These labels are commonly found on items manufactured and sold by others. These terms inform the public that a patent application for the item has been submitted to the U.S. Patent and Trademark Office. These labels may only be used after an official application has been filed, and the law imposes a fine on those who use these terms falsely to deceive the public.