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.
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.
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.
Examples of Public Disclosures
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.
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
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
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.
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.
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.
Differences in Patent Applications
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.
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.
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.
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.
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.
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?
How will I know if my invention has been used or described previously?
Is there an inexpensive way to preserve my intellectual property rights?
Can I apply for a patent online?
Can I patent an idea?
How long does it take to get a patent?
How much does it cost to get a patent?
After I file a patent, are my rights protected?
What are my rights under an issued patent?
If two or more persons work together on an invention, to whom will the patent be granted?
Can a person or business entity other than the inventor(s) apply for a patent?
What do the terms "patent pending" and "patent applied for" mean?