Learn About Patents

What is a patent?

A patent for an invention is the grant of a property right to the inventor, issued by the United States Patent and Trademark Office. Generally, the term of a new patent is 20 years from the date on which the application for the patent was filed in the United States. U.S. patents are effective only within the United States, U.S. territories, and U.S. possessions. Under certain circumstances, patent term extensions or adjustments may be available.

The right conferred by the patent grant is “the right 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. What is granted is not the right to make, use, offer for sale, sell or import, but the right to exclude others from making, using, offering for sale, selling or importing the invention. Once a patent is issued, the patentee must enforce the patent without aid of the USPTO. The patent owner must constantly be on the lookout for infringement of their rights.

It is generally best to maintain the secrecy of an invention until a patent application is filed and a filing date and serial number are issued. United States law generally allows for a limited grace period if the invention is shown or offered for sale before filing a patent application. Many foreign countries prohibit patent applications filed after disclosure.

Only a Registered Patent Attorney (or Registered Patent Agent) may file and prosecute a patent application for an inventor. Most attorneys are not registered with the USPTO and are therefore not permitted to file a patent application. Registered Patent Attorneys are (1) licensed attorneys; (2) required to have an engineering or scientific degree; and (3) have passed a USPTO examination.

There are three types of patents:
1) Utility patents may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof; Utility patent applications can be provisional or non-provisional.

2) Design patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture; and

3) Plant patents may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant.

What can be patented?

The patent law specifies the general field of subject matter that can be patented and the conditions under which a patent may be obtained.

In the language of the statute, any person who “invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent,” subject to the conditions and requirements of the law. The word “process” is defined by law as a process, act or method, and primarily includes industrial or technical processes. The term “machine” used in the statute needs no explanation. The term “manufacture” refers to articles that are made, and includes all manufactured articles. The term “composition of matter” relates to chemical compositions and may include mixtures of ingredients as well as new chemical compounds. These classes of subject matter taken together include practically everything that is made by man and the processes for making the products.

The patent law specifies that the subject matter must be “useful.” The term “useful” in this connection refers to the condition that the subject matter has a useful purpose and also includes operativeness, that is, a machine which will not operate to perform the intended purpose would not be called useful, and therefore would not be granted a patent. Prototypes or working models are not required. For most inventions operativeness is readily apparent.

Interpretations of the statute by the courts have defined the limits of the field of subject matter that can be patented, thus it has been held that the laws of nature, physical phenomena, and abstract ideas are not patentable subject matter.

What are the conditions for obtaining a patent?

In order for an invention to be patentable it must be new as defined in the patent law, which provides that an invention cannot be patented if: “(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent,” or “(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country more than one year prior to the application for patent in the United States . . .”

If the invention has been described in a printed publication anywhere in the world, or if it was known or used by others in this country before the date that the applicant made his/her invention, a patent cannot be obtained. If the invention has been described in a printed publication anywhere, or has been in public use or on sale in this country more than one year before the date on which an application for patent is filed in this country, a patent cannot be obtained. Generally, it is immaterial when the invention was made, or whether the printed publication or public use was by the inventor himself/herself or by someone else. If the inventor describes the invention in a printed publication or uses the invention publicly, or places it on sale, he/she must apply for a patent before one year has gone by, otherwise any right to a patent will be lost. The inventor must file on the date of public use or disclosure, however, in order to preserve patent rights in many foreign countries.

Even if the subject matter sought to be patented is not exactly shown by the prior art, and involves one or more differences over the most nearly similar thing already known, a patent may still be refused if the differences would be obvious. The subject matter sought to be patented must be sufficiently different from what has been used or described before that it may be said to be non-obvious to a person having ordinary skill in the area of technology related to the invention. For example, the substitution of one color for another, or changes in size, are ordinarily not patentable.

How long does it take to get a patent?

The process of obtaining a patent can take up to three years in many cases. Generally, the patent office will make the first substantive response (an office action) to a patent application in about 24 months after the filing date. Most applications are initially rejected and we help you convince the patent examiner that your idea is patentable during the prosecution phase of the application process. This may take several more months negotiating with the examiner.

There are ways to speed up the process depending on the specific situation. Fee based "fast track" applications can speed the first response wait time to about 6 months, as opposed to the 24 month wait noted above. In certain circumstances a no-cost fast track is available. For example, inventors over age 65 may be eligible for free fast tracking an application.

Can online companies help me market and sell my invention?

Just like other things in life: If it sounds too good to be true, then it probably is. The United States Federal Trade Commission (FTC) has issued a statement here: http://www.ftc.gov/bcp/edu/pubs/consumer/products/pro21.shtm

Be careful of businesses and people that ask for money to market your invention. Remember: You own the valuable invention and they should pay you. Have us help you file for a patent before disclosing your idea to others. This is the primary way we can help prevent others from stealing your ideas.

Are prototypes necessary in order to apply for a patent?

Not for most inventions. If you can describe how it works and how to make it with drawings and a written description then no prototype is necessary. However, if some of the details are not fully worked out then some experimentation may be helpful. For most inventions we can make some sketches in our first meeting to demonstrate the invention.

Is my patent secure in other countries?

Since the rights granted by a U.S. patent extend only throughout the territory of the United States and have no effect in a foreign country, an inventor who wishes patent protection in other countries must apply for a patent in each of the other countries or in regional patent offices. Almost every developed country has its own patent law, and a person desiring a patent in a particular country must make an application for patent in that country, in accordance with the requirements of that country.

The laws of many countries differ in various respects from the patent law of the United States. In most foreign countries, publication or sale of the invention before the date of the application will bar the right to a patent. In most foreign countries maintenance fees are required. Many foreign countries require that the patented invention must be manufactured in that country after a certain period, usually three years. If there is no manufacture within this period, the patent may be void in some countries, although in most countries the patent may be subject to the grant of compulsory licenses to any person who may apply for a license.

There is a treaty relating to patents which is adhered to by many countries, including the United States, and is known as the Paris Convention for the Protection of Industrial Property. It provides that each country guarantees to the citizens of the other countries the same rights in patent and trademark matters that it gives to its own citizens. The treaty also provides for the right of priority in the case of patents, trademarks and industrial designs (design patents). This right means that, on the basis of a regular first application filed in one of the member countries, the applicant may, within a certain period of time, apply for protection in any of the other member countries. These later applications will then be regarded as if they had been filed on the same day as the first application. Thus, these later applicants will have priority over applications for the same invention that may have been filed during the same period of time by other persons. Moreover, these later applications, being based on the first application, will not be invalidated by any acts accomplished in the interval, such as, for example, publication or exploitation of the invention, the sale of copies of the design, or use of the invention.

Another treaty, known as the Patent Cooperation Treaty (PCT), was negotiated at a diplomatic conference in Washington, D.C., in June of 1970. The treaty came into force on January 24, 1978, and is adhered to by many countries, including the United States. The treaty facilitates the filing of applications for patent on the same invention in member countries by providing, among other things, for centralized filing procedures and a standardized application format.

The timely filing of an international application affords applicants an international filing date in each country which is designated in the international application and provides (1) a search of the invention and (2) a later time period within which the national applications for patent must be filed.

Under U.S. law it is necessary, in the case of inventions made in the United States, to obtain a license from the Director of the USPTO before applying for a patent in a foreign country. Such a license is required if the foreign application is to be filed before an application is filed in the United States or before the expiration of six months from the filing of an application in the United States unless a filing receipt with a license grant issued earlier. The filing of an application for patent constitutes the request for a license and the granting or denial of such request is indicated in the filing receipt mailed to each applicant. After six months from the U.S. filing, a license is not required unless the invention has been ordered to be kept secret. If the invention has been ordered to be kept secret, the consent to the filing abroad must be obtained from the Director of the USPTO during the period the order of secrecy is in effect.

Under what circumstances is a patent infringed upon?

Infringement of a patent consists of the unauthorized making, using, offering for sale, or selling any patented invention within the United States or U.S. Territories, or importing into the United States of any patented invention during the term of the patent. If a patent is infringed, the patentee may sue for relief in the appropriate court. The patentee may ask the court for an injunction to prevent the continuation of the infringement and may also ask the court for an award of damages because of the infringement. In such an infringement suit, the defendant may raise the question of the validity of the patent, which is then decided by the court. The defendant may also argue that what is being done does not constitute infringement. Infringement is determined primarily by the language of the claims of the patent and, if what the defendant is making does not fall within the language of any of the claims of the patent, there is no literal infringement.

The Office has no jurisdiction over questions relating to infringement of patents. In examining applications for patent, no determination is made as to whether the invention sought to be patented infringes any prior patent. An improvement invention may be patentable, but it might infringe a prior unexpired patent for the invention improved upon, if there is one.

Should I file a Provisional or Non-Provisional Application

The non-provisional patent application is the regular patent application. This application will go through the examination process and potentially will turn into a patent. It covers all types of technologies, for example, machines, processes, chemical formulations, software, tools, electronics and generally improvements of pre-existing technologies. This is the application that is most suitable for the majority of applicants.

The provisional (temporary) patent application is a special purpose application. There are important limitations to this type of application. First, it will never be examined and therefore cannot turn into a patent without later filing a non-provisional (regular) application. This increases the overall costs because two applications will be filed (the provisional and later the non-provisional) and increases the time to obtain a patent because the wait for examination begins when the non-provisional application is filed, not the provisional application.

It is important to note that a provisional application is only 'alive' for one year from the filing date. Within that year another application claiming benefit to the non-provisional application must be filed or the provisional application expires. Since provisional applications are generally not published, when they go abandoned they essentially cease to exist for practical purposes.

In some cases a provisional application may be a reasonable option. For example, we may file a provisional application before public testing when we expect to have changes to the inventive concept brought out by testing. In this situation we can include the improvements in the later non-provisional application. Another time we may elect to file a provisional application is to raise money or conduct market research prior to committing to the increased costs inherent in a non-provisional application.

Design Patent vs. Utility Patent

Utility patents apply to improvements to how things work. Essentially this applies to processes, machines, a manufactured thing or a chemical compositions. Abstract ideas like mathematical formulas or other intangibles may not be patent eligible. Utility patents are what most people think of when they hear the word 'patent'. Utility patents last 20 years from the earliest filing date and require maintenance fees to remain enforceable.

Design patents are generally an ornamental configuration of a thing. Designs are aesthetic and not functional. Design patents may help consumers determine who made a product. Design patents reward creators of better looking products. Examples of design patents may be found in jewelry, clothing designs, architectural drawings, vehicles, food containers and about any other article of manufacture. Design patents last 15 years from the date of issue and do not require any maintenance fees.

International Patent Applications

We assist inventors to obtain patent rights in the USA and other countries. Since each country is sovereign and has its own laws, patents must be nationalized in specific countries or regions in which enforceability is desired.

There is no such thing as an international patent. There is an international patent application process. Under the Patent Cooperation Treaty (PCT) we have the possibility to apply for utility patents in any or all countries that are members to the PCT. There are very strict rules and time frames that must be adhered to maintain rights to your invention.

The PCT process happens in two phases. The international phase begins with filing a PCT application. This can be done as a first application or within one year of a US or foreign application. This application generally undergoes a non-binding examination. Then, within about 30 months of the earliest filing date the second national phase must be entered by filing in specific countries or regions, for example, the European Union.

Design patent applications follow a different process than utility applications described above. Generally, international protection for a design application must be sought within 6 months of a US design patent application.