Patent Application FAQ

Click on questions to display answers

What is a patent?

A patent is a property right from the United States Government that essentially confers a 20-year monopoly to the owner. A patent owner can exclude any other person or company from the manufacture, use, sale or import into the United States of infringing technology.

What is the standard for obtaining a patent?

Inventors must prove that they have a new, useful & nonobvious invention to receive a patent. An inventor must provide an “enabling” description of the invention, meaning that the inventor must thoroughly describe and teach how the invention works.

What can be patented?

Patents can be granted for articles of manufacture, designs on articles of manufacture, living organisms, plants, chemical compositions, nonobvious methods of using existing inventions, and on methods of doing business.

What types of patents are available?

Utility patents are available for articles of manufacture and protect function. These patents cover processes, machines, manufactured items, and compositions of matter. The utility patents last 20 years from the filing date.

Design patents protect the overall appearance of an invention and are for “ornamental” designs for articles of manufacture. A design patent lasts 14 years from the date it issues. There may be overlap between design patent protection, copyright and trade dress protections.

What is required to be a Patent Attorney?

To practice as a U.S. “Patent Attorney,” a practitioner must have a scientific educational background and pass both a federal and a state bar exam. In addition, to be Patent Attorney, the practitioner must have a law degree from an accredited law school, pass a state ethics examination, maintain state continuing legal education training, and pass federal FBI and state background checks.

What is the usefulness of a patent search?

A patent search and patentability opinion can help an inventor decide whether to file for a patent. The patent process can be expensive, therefore, it makes sense to invest the time to discover whether the invention has been made before and whether the scope of protection available is worthwhile. Many invention promotion firms suggest that they perform a search, but beware that a true search should be objective, not merely aimed at bolstering your ego and taking your money. The search should provide the patents located and not merely provide a conclusory statement that patent protection is available. Patent searches are best performed by patent attorneys or agents who handle the matters directly or who contract locals at the PTO. Beware of searchers who guaranty results. There are more than 7,000,000 patents, so no search can predict 100% accuracy, but a search should endeavor to identify prior patents that would either prevent you from getting a patent or unduly narrow the scope of available protection. In addition to helping to determine whether an invention is patentable, a good search can help your patent attorney in crafting claims, and describing why your invention is an improvement over the prior technologies.

When should I file a patent?

In the United States, you have a 12-month grace period to file for a patent application after the invention is made known in a publication, used in public, or offered for sale. Failing to file an application inside this grace period will cause a loss of any rights to a patent. However, many foreign countries do not have such grace periods. Therefore, if foreign filings are expected, to preserve those rights, a U.S. patent application should be filed prior to public use or disclosure of the invention.

Do I have to file a patent application before I sell or use my invention to protect it?

In the United States, you have a 12-month grace period to file for a patent application after the invention is made known in a publication, used in public, or offered for sale. Failing to file an application inside this grace period will cause a loss of any rights to a patent. However, many foreign countries do not have such grace periods. Therefore, if foreign filings are expected, to preserve those rights, a U.S. patent application should be filed prior to public use or disclosure of the invention.

Are patents public information while pending?

Patents are not public information, at least until 18 months from the effective filing date, at which point the Patent Office publishes the applications. Patent applications used to be confidential until they issued, however, the American Inventors Protection Act of 1999 implemented the 18-month publication rule for most utility applications filed after November 29, 2000. This change brought American Patent Law in harmony with many other foreign patent laws that require this publication. There is a way to opt out of the publication of the invention, but only if the invention will not be the subject of an application in a foreign country that requires publication 18 months after filing. Because of publication, an applicant can now assert provisional rights to obtain a reasonable royalty from a 3rd person after publication, provided notice is given the 3rd party, and provided a patent actually issues from the application with a substantially identical claim. Therefore, there is actually a new remedy for inventors for infringement before a patent actually issues.

How do people earn money from patents?

If you have a marketable invention and a marketable patent, there are a variety of ways that a patent can be used to generate revenues. As the exclusive holder of the technology, a patent owner can exclusively manufacture, sell and use the technology. Some patent holders sell products directly to the public. Some patent holders manufacture their patented product and send to others to handle sales and distribution. Other patent holders may choose to license the patent for a royalty, which may be per unit, or based on a percentage. Some patent holders may sell the patent application outright based on the patent’s fair market value.

How does the patent process work?

After a patent application is filed, your patent attorney will receive an “office action” typically between 16-24 months after filing of the application. A patent examiner assigned to your application will issue an office action. The office action may have rejections and/or objections for reasons of either form or substance and it is the job of the patent attorney to make appropriate arguments or make amendments to get the broadest protection available to the inventor. If rejections and/or objections are overcome, the inventor will receive a “Notice of Allowability” setting forth the scope of allowable protection on the invention.

How long does a patent last?

A utility patent lasts 20 years from the filing date. A design patent lasts 14 years from issuance.

Should I file a provisional patent application?

Maybe. There are strategic reasons for using a provisional application. But, be careful with provisional applications. They are surrounded by vast amounts of misinformation, despite that they have been en vogue for several years. A provisional application is a device that lets an inventor file a disclosure of an invention, without claims. The provisional application is not evaluated for patentability, it does not have claims (which largely define an invention), is not examined, and will not turn into a patent unless a regular utility application is filed within 12 months of the provisional filing date. The idea was originally to permit inventors time to evaluate marketability of a patent before dumping loads of money into a patent process. But, is it useful for inventors? Not always. In fact, for many inventors, some practitioners believe that the application may inflate the cost of a patent and unnecessarily delay the patent process. Contrary to common myth, a provisional patent application should have a thorough description of the invention—the same detailed “enabling” description that is required of a regular patent application. A common misconception is that a half-hearted description will suffice and will still protect the inventor’s idea for a fraction of the cost. This is a major misconception, which can harm inventors. Any description that is not provided in the provisional application will not have the benefit of the original provisional filing date—meaning that you may not have disclosed a patentable invention, leaving open the possibility that someone else will. The truth is that a provisional application should be just as thorough as a full utility application. Given this fact, why not add the claims, while the invention is fresh on the mind of the attorney or agent drafting the disclosure? Also, adding claims should not cost much more. On the other hand, a patent attorney who has to re-familiarize with the technology 12 full months after filing the original provisional application will probably spend more time and money relearning the technology to draft good claims. Inventors should be hesitant to demand a provisional application without understanding the costs and risks involved.

What rights come with filing a disclosure with the Patent Office?

The Patent Office has a document disclosure program that helps inventor’s document their dates of invention by filing disclosure documents with the patent office. The Patent Office will accept and retain a disclosure for two years, after which time it is destroyed, unless it is referred to in a related patent application filed within the two-year period. This can be used in disputes involving the dates of invention. However, the device does not create any patent rights, cannot be enforced like a patent, and does not establish any form of a grace period. An inventor would make a big mistake in thinking this device could be used in place of a patent application. Also, this device is useful, but not necessary to prove a date of invention. There are other good practices that inventors can follow to document dates of inventions including keeping a detailed, dated notebook with notarized dates of the concepts described.

What if someone helps me build my invention? Are they an Inventor?

This is a common question and a common problem for individual inventors who have the invention complete but do not know exactly how to build the prototype. To be an “inventor” for the patent office, a person must materially contribute to at least one of the claims of the patent. A person who merely helps an inventor reduce his or her invention to practice does not become an inventor. This is a fact sensitive area of patent law that spawns many disputes. When an invention is perceived as valuable, everyone naturally wants some part of the action. The best approach to avoiding conflicts of this nature is to avoid them early—preempt them through clear documents. If an inventor is going to hire an engineer or a person with technical expertise to help build the invention—or “reduce the invention to practice” without being an inventor, he or she should have a qualified attorney draft a contract setting forth confidentiality and nondisclosure clauses, as well as a recitation that the services are merely to reduce the invention to practice and not to invent. To the extent any inventing should occur, precautionary assignments of inventive rights should be considered. This is not a place to cut costs. The best invention in the world may never get off the ground if it’s bogged down in legal proceedings concerning ownership and inventorship. Have an attorney help you with these important documents early.

Are there any ways I can protect my invention while the patent is pending?

Yes. Inventors can protect ideas while an application is pending by using a confidentiality and nondisclosure agreement. There are some public forms available, but the most conservative approach would be to have an attorney make sure a nondisclosure agreement suits your needs and your particular invention.