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Inventor Resource

Patents Generally

  1. What is a Patent?
  2. What is patentable subject matter?
  3. What are the different types of patents?
  4. How long does a patent last?
  5. What is the process for filing a patent?
  6. How long will it take to get a patent?
  7. Who can file a patent for me?
  8. Who is a patent attorney?
  9. Do I need a patent search first?
  10. Do I need a prototype first before I file for a provisional or utility patent?
  11. When should I file for a patent?

 

Provisional Patent Applications

  1. What is a provisional patent?
  2. How long does a provisional patent last?
  3. What is required for a provisional patent?
  4. Should I file a provisional or utility patent application?
  5. What does "patent pending" mean and when can I mark that on my product?

 

Utility Patent Applications

  1. What is a utility patent application?
  2. How long does a utility patent last?
  3. What is required for a utility patent application?
  4. What type of drawings are required for a utility patent?
  5. How much is the filing fee for a utility patent?
  6. Should I file a provisional or utility patent application?
  7. What is the difference between a utility patent and design patent?
  8. What is an office action?
  9. Are there any other fees I need to pay?
  10. Who is an inventor?
  11. What about foreign patents?

 

Patents Generally

1. What is a Patent?

A patent is a form of intellectual property that can protect an invention. Once issued by the United States Patent and Trademark Office, a patent grants a right to the owner to "exclude others from making, using, offering for sale, or selling” the invention in the United States or “importing” the invention into the United States. There are different types of patents, namely, utility patents, design patents, and plant patents. There are also provisional patent applications which are discussed below.

2. What is patentable subject matter?

One of the requirements to get a patent is that the invention must be of patentable subject matter. The US Patent statute provides that patents may be obtained for "any new and useful process, machine, manufacture or composition of matter or any new useful improvement thereof". However, mere ideas or abstract concepts, laws of nature, and mathematical algorithms are not patentable.

3. What are the different types of patents?

There are (1) utility patents: generally should be considered to protect the functionality of an invention, or the way the invention works; (2) design patents: should be considered to protect the ornamental design of an invention, but not cannot capture any functional aspect of the invention; and (3) plant patents: can be granted for asexually reproduced plants.

4. How long does a patent last?

Utility patents last for 20 years from the priority filing date. Design Patents last for a term of 14 years from the filing date. A provisional application lasts 12 months from the filing date.

5. What is the process for filing a patent?

Ideally, the first step would be to determine what type of patent application is appropriate for your invention. In some cases, you only be entitled to utility or design. Or in other cases, you may be able to obtain both as they cover different scopes of protection of the invention. Further, you should consider if it is wise to first file a provisional patent application or to first file the utility patent. Consider the advantages of each and any necessary deadlines as part of your decision. Once the provisional patent application is filed, you must file a nonprovisional (utility) patent application within 12 months from the filing date of the provisional. After the utility application is filed, it will undergo a review process with the United States Patent and Trademark Office (USPTO). A patent examiner at the USPTO will review your application to determine if an objection or rejection is required as to the formality or substance of your application. If so, they will issue an office action rejecting the application. The office action can be responded to by your patent attorney. Overcoming an office action will typically lead to a Notice of Allowance. After the Notice of Allowance is received, a government Issuance fee must be paid. After the Issuance fee is paid, the application will mature into a federally registered patent.

6. How long will it take to get a patent?

It depends on several factors and the type of patent. Generally, for a utility patent application, it will take at least 6 months to over 1 year before the first office action is received. Depending upon the number of Office Actions and the timing of the response will effect how long it will take the application to issue. In general, expect at least 2 years or more for the entire process. In some cases, it may be under two years. However, the review process for design patents tends to be quicker. In some cases, design patents have issued in less than 1 year, but generally will take one and half years. As discussed above, many things can affect the timing of issuance, such as the number of office actions received, and the backlog of the USPTO.

7. Who can file a patent for me?

Only a patent attorney, patent agent, or the applicant himself can file a patent application for an applicant. However, it should be noted that patent process is complex from both a procedural and substantive standpoint. Further, only patent attorneys, and not patent agents can give substantive legal advice regarding litigation or matters of law.

8. Who is a patent attorney?

A patent attorney is an attorney that is licensed to practice law in their state AND has also qualified and pass the federal Patent Bar Exam. For example, a patent attorney may have passed the California Bar exam and is duly licensed to practice law in California, further, he has pass the federal Patent Bar Exam which allows him to transact with the United States Patent and Trademark Office. All patent attorneys must have a technical background in order to qualify for the Patent Bar Exam. They type have either a bachelors, masters or PhD in an area of the hard sciences, in addition to their law degree.

9. Do I need a patent search first?

There is no requirement to conduct a patent search prior to filing a patent application. However, conducting a patent search first is has several advantages. Namely, it is wise to know if your invention has already been patented. If so, it may change your decision to pursue patent protection, or it will give you insight to make alterations to the invention so that it does not conflict with the prior patents.

10. Do I need a prototype first before I file for a provisional or utility patent?

No. There is no requirement that a prototype of your invention must exist first. The patent application needs to only meet the statutory requirements, namely, that there is sufficient disclosure so that one of ordinary skill in the art can make and use the invention. Although, in many cases, having a prototype will help the patent attorney to draft the application better, there is no requirement to obtain a prototype. Additionally, there are statutory time limits that require an inventor to file an application prior to one year for the date of public disclosure. Therefore, delays in filing your application can invalid your patent. Remember, by filing a provisional patent with PatentLock, you can obtain “patent pending” status at a reasonable price for a 12 month period. However, it will be necessary to file a utility application within the 12 month period to gain benefit of the provisional application filing date.

11. When should I file for a patent?

If you intend to pitch to a potential buyer without a patent, you are not protected, unless you can persuade them to sign a non-disclosure agreement (“NDA”). Even then, NDAs are only as good as the people that sign them. Further, most companies are not willing to sign your NDA. So it is important to be diligent and move quickly to file a patent application as soon as possible, otherwise you must rely upon an NDA if you can get the buyer to sign one.

Provisional Patent Applications

1. What is a provisional patent?

A provisional application for patent an application filed with USPTO that provides a filing date of your invention that will last for a period of twelve (12) months. It will allow you to use the term "Patent Pending" on the marking of your invention. In order to gain benefit of the provisional application filing date, a nonprovisional (utility) patent application must be filed prior to the end of the 12 month period. If the utility is filed within 12 months, the utility will gain benefit of the earlier filed provisional date. If the utility application is not filed within 12 months, then the provisional patent application will lapse. The 12 month period is nonextendable, so the utility patent application must be filed prior to the expiration of the 12 month period.

 2. How long does a provisional patent last?

As discussed above, a provisional application lasts for twelve (12) months for the filing date. If a nonprovisional utility patent application is not filed prior to the expiration of the 12 month term, then the provisional application will die and no benefit of the provisional filing date will be given. If a provisional application is filed first, and a later utility application is filed within the 12 month period claiming benefit of the provisional application, the typical 20 year patent term for the utility application may be extended by as much as 12 months.

3. What is required for a provisional patent?

A thorough written description of the invention that complies with the requirements of 35 United States Code Section 112. Claims, drawings, oath, declaration or information disclosure statement are not required, but drawings are required if it is necessary to understand the invention.

4. Should I file a provisional or utility patent application?

The decision to file one versus the other depends upon many factors. In most cases, if your budget permits it is usually better to start with the utility patent application, as it will prevent any delays that would be accompanied with a provisional filings. However, many inventors choice to first file a provisional application first, and determine the marketability of the invention during that year prior to filing the utility patent application. There is no right answer of all situations as every case is unique.

5. What does "patent pending" mean and when can I mark that on my product?

" Patent pending" simply means that the owner of the invention has filed with the USPTO a patent application. The "patent pending" can be used in connection after the filing of a provisional, utility, design, or plant application. The patent pending mark should be marked on the product or on the service. Patent pending will be notice to potential infringers that your inventions is pending before the USPTO. Patent pending does not mean you have an issued patent however. Further, your patent pending status does not grant you access to federal courts to sue infringers for patent infringement of your product. Only once your application has issued will you have access to the federal courts.

Utility Patent Applications

1. What is a utility patent application?

A utility patent protects a new invention or functional improvements of existing inventions. A utility patent application can cover a product, device, apparatus, machine, software, process, and in some cases even business methods.

2. How long does a utility patent last?

Utility patents last for 20 years from the priority filing date. Design Patents last for a term of 14 years from the filing date. A provisional application lasts 12 months from the filing date.

3. What is required for a utility patent application?

One of the requirements to get a patent is that the invention must be of patentable subject matter. The US Patent statute provides that patents may be obtained for "any new and useful process, machine, manufacture or composition of matter or any new useful improvement thereof". However, mere ideas or abstract concepts, laws of nature, and mathematical algorithms are not patentable. Further, the invention must be novel, useful, and nonobvious.

4. What type of drawings are required for a utility patent?

Very specific draftsmen drawings are required for a properly filed patent application. Patent drawings are typically in black and white with no claim to color. The drawings include figure numbers that correspond to the elements of the invention that are discussed within the specification of the patent application. The drawings must conform to the USPTO standards, otherwise the examiner will issue a rejection of the application.

5. How much is the filing fee for a utility patent?

The filing fee for a utility patent application currently starts at $463 but can be more depending upon other factors such as the number of claims used in the application.

6. Should I file a provisional or utility patent application?

The decision to file one versus the other depends upon many factors. In most cases, if your budget permits it is usually better to start with the utility patent application, as it will prevent any delays that would be accompanied with a provisional filings. However, many inventors choose to file a provisional application first, and determine the marketability of the invention during that year prior to filing the utility patent application. There is no right answer of all situations as every case is unique.

7. What is the difference between a utility patent and design patent?

The scope of protection of utility patent covers the functional aspects of the invention, i.e. the way the invention works and what it does. In contrast, a design patent cannot protect any functional aspect of an invention, rather, it can only protect the ornamentally or the design of the invention.

8. What is an office action?

An office action is an objection or rejection, issued by the patent examiner, of the application. The patent examiner has reviewed your application and has found a reason to reject it either for formality reasons or substantive reasons. Office action are very common, and the majority of utility patent applications receive at least one office action. Office actions can be responded with arguments against the examiner's rejections, a response to the office action can be in the form of an amendment to overcome the rejection.

9. Are there any other fees I need to pay?

After a Notice of Allowance is received, an issuance fee must be paid to the USPTO. Further, for utility patents, maintenance fees must be paid to keep the application from expiring. Maintenance fees are due at 3½, 7½, and 11½ years after the date of issuance of the patent application.

10. Who is an inventor?

An inventor is one who has made a material contribution to the conception of the invention. Simply assisting in its reduction to practice does not make one an inventor. In some cases there may be "joint inventors", or "co-inventors." When a patentable invention is the result of the contribution of more than one inventor, there may be multiple joint inventors. There is no percentage rule as to joint inventors. Even if one inventor contributed a majority of the work, the other inventor must be name as a co-inventor as long as he has made a material contribution to the invention. Inventors can only be human beings and not business entities such as corporations or LLCs. However, the invention can be assigned to an assignee which will have ownership of the invention. The assignee can be a human being or an entity.

11. What about foreign patents?

A US patent application only grants rights within the United States. To enforce your patent in foreign countries, foreign patent application must be filed separately in the country in which you seek protection.