Patent Law Basics
Who issues patents?
The United States Patent and Trademark Office ("USPTO") is the governmental body that issues patent as well as trademarks.
Who can acquire a patent?
Anyone can acquire a US patent regardless of nationality. Any individual, or a patent can be assigned to a company as well for ownership purposes. However, only individuals and not companies can be an "inventor" of a patent.
What kinds of inventions can be patented?
Anything under the sun is patentable. However there are exceptions to that. For example, the problem we often encounter is inventor that want to patent mere ideas. Ideas in and of themselves are not patentable. They have to be manifested into something, specifically into an invention. For example, the idea for pressing pants, that idea, if it was new, is not patentable. But if you had a novel and unique pants presser, that is patentable.
How long does a patent last?
How long a patent lasts depends on what kind of patent you have as there's different forms. There's utility, there's design, and there's plant patents as well. They're going to vary in term, utility patents last 20 years from the filing date. Design patents last for 14 from the filing date.
Can a great idea or concept be patented?
Ideas are not generally patentable although great ideas can be used. There's plenty of ideas out there, but if you have one you want to incorporate or manifest it into an invention, that being a device or apparatus, software, something like that, then it becomes able to be patented.
Can I obtain a copy of a specific patent?
You can obtain a copy of a patent, and it is available to the public. Issued patents are available at the United States Patent and Trademark Office. Furthermore with pending applications, if they're pending for more than 18 months, they're also available. The best place to go is the United States Patent and Trademark Office website which is www.uspto.gov
Can I obtain a patent on an exisiting idea or concept?
People often come to me because they want to patent an existing product or device, but they have made some modification to it. And they often think that if they change it by a certain percentage or degree, it's good enough. There is no magic percentage or magic number for changing it. It does have to be distinguishable. New improvements thereof are patentable, but it does have to be distinguishable from the existing prior art. It's really on a case-by-case basis.
Can someone obtain copies of my pending patent application?
Your pending patent application may be available to the public. Generally, prior to 18 months from the filing date, your patent is not available to the public. Thereafter, it can be accessible at the United States Patent and Trademark Office or on their website. There is one exception, if you want to maintain the confidentiality prior to publication, you can do so by making a special request.
What can I do if someone tries to violate my patent?
If you believe your patent has been infringed, first you must have an issued patent in order sue the infringer in federal court. If you have a pending application, you may be able to send cease and desist letters to give notice to the potential infringer. But if your patent application has been infringed, you need to seek a intellectual property attorney, specifically a patent attorney, and consult with him regarding your rights and remedies against the infringer.
What is meant by the phrase 'patent pending'?
Patent Pending simply means that your patent has been filed with the United States Patent and Trademark office. Having a patent pending means that you're on your way to obtain an issued patent after it has been reviewed by the USPTO and it's great for several reasons. First, you are able defend and enforce your patent against infringers. Also, it's great for marketing purposes. It gives notice to potential infringers that you have applied for a patent, and that your patent may ultimately issue.
Can the legal rights to a patent be bought and sold?
Patents are like a bundle of rights, similar to other intellectual property. Patents can be bought and sold. The means to do that is via an “assignment.” An assignment allows you to sell or give someone else such as an individual or company, the complete right to a patent. There are other alternatives, such as licensing as well. Licensing gives another individual or company the right to make, use or sell a patent. Actually, you can determine whether or not you give them the right to make, use, and sell the patent exclusively or non-exclusively.
What is a 'provisional patent'?
A provisional patent can be thought of as a placeholder. What it does is if you file provisional application it secures your patent filing date for a period of 12 months. You have to file a regular utility application within that year in order to gain benefit of the original patent filing date.
Preparing To File A Patent
What should I do before applying for a patent?
Before applying for a patent, you have to know what exactly is your invention. The way to do this is to sit down, and write down what your invention is, how it works, what's the name of it, what industry is it for. Get this in writing, and if possible, and I highly recommend that you do this, you have an independent witness, also sign the document and date it, so that there is some proof that you have conceived of this idea, on this particular date. You should also square away who the inventors are. Anyone that gave a material contribution to the invention is deemed to be an inventor and must be listed on the patent application.
Why should I conduct a 'patent search'?
Conducting a patent such is extremely important. The number one reason is to determine whether or not your invention is already patented. Obviously, if it's already been patented then you're out and you likely will not be able to obtain a patent for it as the USPTO will issue a rejection in view of that existing patent application. However, if you conduct a patent search in advanced, you may decide to create modifications or design around the existing patent to improve your invention.
Who can conduct a patent search?
If you want to do a patent search correctly, and you want to do it properly, you should retain a competent licensed patent attorney to perform a comprehensive search and analysis. Only a patent attorney can truely interpret problematic patents.
What is a 'notice of allowance'?
A notice of allowance is something that you're going to love to see. What a note of allowance means is that your patent has been allowed and that prosecution on the merits is now closed. That means the fighting with the United States Patent and Trademark Office in order to get your patent is now over and your application will be issued, ultimately, as long as you pay the issuance fee.
What should I do after I have been granted a patent?
Once you're granted a patent, hopefully at this time you're marketing your product, whatever it is, whether software or if its a business method patent of the services. You should place on the goods or anywhere feasible the patent registration number that you've obtained to give notice to potential infringers.
Applying For A Patent
How much does it cost to obtain a patent?
The government filing fees are listed on the USPTO's website. If you hire an attorney, their fees will vary greatly depending upon who you hire. Larger law firms tend to charge very high rate, and typically bill on an hourly basis that can exceed $400 per hour. Prior clients that initially went to larger firms have told me they spent $20,000 or more just for a single utility application. Generally, solo practitioners or smaller firms will have a lower price. Because of our experience and efficiency and our lower overhead, my firm is able to draft and file your patent application for a significantly reduced price. Our design patents can be filed less than $1000 plus the filing fee. Utility patents will start at around $3000.00 and go up to $7,000.00 for highly complex technologies.
How long does it take to obtain a patent?
The time period to obtain a patent will vary significantly. In some cases you may be able to obtain design patent in less than a year. Whereas utility patents take a bit longer. On average you can expect two years until the issuance of a patent, but sometimes, however, this may be substantially shorter or longer depending upon how many rejections and amendments take place, and the backlog of the USPTO or the particular Examiner assigned to review your application.
What are some advantages of applying for a patent?
There's many advantages for applying for a patent. The number one advantage for applying for a patent is that it will give you the ability to exclude others from making or using your invention. This means it will afford you the right to sue infringers in federal court for patent infringement. Further, you know will have an intellectual property asset that will increase the value of your business. The patent can be sold outright via an assignment, or you can negotiate a license to obtain royalties to have others sell it for you while you still retain ownership over the patent.
What are some disadvantages of applying for a patent?
There are very little disadvantages other than the initial costs and time commitment involved. However, the rewards can be astronomical give potential profits that can be reaped as a result of having an issued patent and sometimes even from a pending patent application. Further, the cost should not be prohibited by using a solo practioner with lower fixed fees. Also, patent attorney fees and patent filing fees are currently deductible under Section 174 of the tax code as an research and experiement expense. However, you should always seeks the advice of a professional tax consultant.
The Patenting Process
When should I apply for a patent?
Even before finalizing your invention you should seek an intellectual property attorney and apply for a patent. But if you have finalized your invention you should file either provisional or utility and/or design patent application as soon as possible. You must file your patent application quickly because there is a Section 102 statutory bar which essentially says if you wait more than one year from the date of public disclosure of your invention, you can potentionally bar yourself from getting a valid patent. Therefore you must be very mindful of the date you first sold (even an offer to sell), advertised, discussed in an article, or displayed your invention at a trade show, as all of these examples can be deemed public disclosure. However, you have simply tested your invention under confidential settings, this is not typically deemed to be public disclosure.
What is a 'provisional patent application'?
A provisional patent application is an application filed with US patent office and it secures your filing date for a period of one year. You must file a non-provisional application, which is a regular utility patent application prior to the expiration of one year from your provisional filing date. The benefit of filing a provisional is that if you file the utility application within 1 year from the filing date of the provisional, your priority date of the utility application will refer back to the earlier provisional filing date. Provisional applications do not require claims or drawings (unless it is necessary to understand the invention), and they are never actually reviewed by the USPTO on the merits. However, there are pitfalls with provisional applications, namely that they often lack sufficient disclosure of what the invention truely is. Your provisional application must have sufficient disclosure. If not, your utility application could be invalidated in a later patent infringement litigation.
Provisional applications are not acceptable for design patents and the provisional application and later filed utility application must have at least one inventor in common. The provisional application will automatically go abandoned after the expiration of 12 months.
What is a 'utility patent'?
The scope of protection covered by a utility patent protects inventions in regards to its functionality of the invention, i.e. the way it works. For example, if you created a pants pressing maching that works in a novel way compared to all the existing pant pressing machine, you can attempt to seek patent protect via a utility patent application.
What is a 'design patent'?
A design patent protects the ornamentality or the aesthetics design of an invention, as opposed to a utility patent application which protects the functionality, i.e. the way it works. Typical design patents might cover furniture is you are simply seeking to protect the look of the furniture and not any particular functionality of what the furniture does.
If someone helps me with my invention, do I have to add them to the patent application?
If there are others that have contributed to your invention, the question is whether or not you are going to list them as a co-inventor in the patent application. If they contributed significantly and they contributed in a way that was meaningful to the actual invention, then yes, you must list them as co-inventors in the patent application. In fact, if you do not make them co-inventor, the patent application could be nullified and could be deemed as fraud in the eyes of the patent trademark office.
What is the distinction between the inventor and owner of an invention?
On a patent application you will see two listings for people associated with a patent, one is the inventors. The inventor's name, whoever thought of the idea or created the idea will always be listed on a patent application. Ownership of the actual patent may vary though, and can be changed throughout the life of the patent and that's typically deemed to be the assignee. You can assign the patent to someone else, an individual, or a company and they can retain ownership rights of the patent.
What rights do I have to an invention that is conceived while I am employed?
If you thought of an idea while you were working within the scope of an employer, the employer may own the rights to your invention. There's a series of elements to determine whether or not you're the owner, or whether the employer is the owner. Generally, if you thought of the idea while working for the employer at his premises while he's paying you and you are using his materials, the invention can be deemed belong to the employer. However, if you thought of the idea on your own at home using your own money, there's an argument to be made that it's your own idea.
The questions and answers provided above is intended to provide only general information and does not constitute legal advice. You should not act or rely upon the information without seeking the advice of an attorney and receiving counsel based on your specific facts and circumstances. Many of the legal principles referenced are subject to exceptions and qualifications, which are not discussed in the answers. Furthermore, laws are subject to change and may vary by jurisdiction.