Why should I obtain a patent? [back to top]
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A patent gives you a limited monopoly on your invention. Through your patent rights, you can enforce that monopoly and exclude others who may attempt to compete with you unfairly or steal your invention outright. This limited monopoly may give you substantial market control or allow you to at least get a head-start on your competition. And if your competition does not respect the monopoly obtained through your patent rights, through a lawsuit or negotiation you may be able to collect substantial monetary damages from them or force them to stop making, using or selling your invention.
Beyond these advantages, oftentimes a patent provides the necessary leverage or bargaining position for an independent inventor or small company to sell or license the patented invention. If that is you, a patent may be just what you need to take your invention to a larger manufacturing company or venture capitalist in order to get it to market. As explained above, a patent represents the United States government’s finding that you are the true inventor of a new and useful product or process. Thus, there is also a great deal of pride and sense of accomplishment that comes with the issuance of a patent on your invention, which alone may make the patent process a worthwhile endeavor for you.
In the end, a United States patent potentially has tremendous financial and personal value that you can exploit in numerous ways, all while being protected against would be thieves and imitators. If your invention has any commercial promise, then, it would be foolish to not at least explore the patent options available to you before it is too late.
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How long is a patent good for? [back to top]
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The current term for a United States utility or plant patent is twenty years from the date on which the patent application was filed. The term for a design patent is fourteen years from the date on which the patent is granted. For the utility and plant patents, maintenance fees are required at 3-1/2, 7-1/2 and 11-1/2 years from the date of the patent grant. No maintenance fees are required for a design patent.
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What is required to obtain a patent? [back to top]
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Generally, the patent statutes set forth three requirements for patentability, each of which must be met to obtain a patent. These three criteria are sometimes referred to as the "three U's" of patentability: (1) usefulness; (2) uniqueness; and (3) unobviousness. The usefulness, or utility, requirement asks whether the invention does what it is supposed to do and whether what the invention does benefits society. The uniqueness requirement, also referred to as the novelty requirement, is at the heart of the patentability issue and essentially asks whether the invention is truly new. Based on this novelty requirement, for example, the patent laws prevent an inventor from obtaining a patent if the invention was known or used by others in the United States before the date of invention. The unobviousness requirement asks whether the differences between the invention and what has gone before would have been obvious at the time of invention to a person having ordinary skill in the art.
Regarding the uniqueness and unobviousness requirements, then, it is necessary to know what has gone before in order to better assess whether a particular invention is patentable. In patent circles, "what has gone before" is known as "prior art." Prior art is the collection of patents, models, publications and other information that is publicly available at the time of invention. Because the extent of this prior art is critical to understanding the likely patentability of an invention and to preparing and filing the most effective patent application on the invention, most inventors opt for a patent search.
A patent search, as the name implies, is a search of patent documents relating to the invention on which a patent may be sought. For an additional cost, the patent search can be expanded to include non-patent literature such as articles, trade publications, and even Internet sources. As one would imagine, no search can guarantee the discovery of all pertinent prior art, but a thorough search can often turn up the most important prior art. Armed with this information, the inventor can decide whether to proceed at all, which may save the inventor lots of time and money in the long run. And if the inventor does choose to proceed, the results of the patent search will enable his or her patent attorney or agent to write a patent application that attempts to capture as much of the market as possible without “reading on” the prior art. In other words, having a good idea about the prior art can help an inventor get the most patent protection possible.
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Can my invention be an improvement on someone else's? [back to top]
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In a nutshell, yes, you can patent an improvement on someone else’s invention. It has been said that every invention is an improvement on something else. And that is really the goal of the patent system, which was designed to promote the progress of science and the useful arts by encouraging inventors to fully disclose their inventions through a patent and thereby educate others. In exchange, or to entice such disclosure, these inventors are granted a limited monopoly from the government. However, while an inventor of an improvement, call her Inventor #2, may be able to obtain a patent over the earlier invention of another, call her Inventor #1, Inventor #2 would not be able to practice her own invention because to do so would be to infringe Inventor #1’s patent. Remember, the patent grant is a right to exclude others, and Inventor #1 hasn’t lost that right just because Inventor #2 has made some improvement to her already-patented invention. By the same token, Inventor #1 cannot practice the improvement without infringing Inventor #2’s patent. This, then, is the classic case for cross-licensing, where each inventor would need the other’s permission to practice the other’s patented invention.
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Can I patent an idea? [back to top]
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Ideas alone are not patentable, nor are scientific principles or mathematical algorithms. However, an inventor need not have actually built a working prototype of the invention and presented it to the Patent Office to obtain a patent, either. The bottom line is that any idea must be applied to a physical context to achieve a useful result in order to be patentable. Again, while this can be achieved through a prototype or model, it does not have to be. The “reduction to practice” requirement found in the patent laws is one of due diligence and allows conceptual reduction to practice of the invention, such as through engineering drawings or a computer simulation. So long as the patent itself contains a description of the invention sufficient to enable any person skilled in the art to which the invention pertains to make and use the invention, a patent may be granted. Once the inventor has so provided at least one credible assertion of specific utility, the burden is then on the Patent Office to show that a claimed invention has no utility.
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What is the difference between a provisional and a non-provisional application? [back to top]
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A provisional patent application is the filing of essentially the written description portion of your utility patent application in order to establish a priority date. The filing of a provisional application buys you an additional year to get your full utility patent application on file and, in the meantime, allows you to mark your product with "Patent Pending" during that year. Because it is cheaper to file a provisional patent application, as no claims, oath or formal drawings are required, some inventors choose to go this route as a way of protecting their interests while deferring costs until they have better formulated how they would like to proceed with the commercialization of their invention.
Only a non-provisional patent application that leads to an issued patent will give you enforceable patent rights. Critically, a non-provisional application includes patent claims, through which the inventor defines the metes and bounds of his or her invention. It is the examination of the claims of the non-provisional application that can result in a patentable and protectable invention. Because such examination has not taken place with a provisional patent application, it follows that the filing of such an application does not in any way guarantee that you will be able to ultimately obtain a patent. Again, the provisional patent application merely establishes an earlier priority date.
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Can I test the market by telling others about my invention or actually selling a small number before I seek a patent? [back to top]
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Under the United States patent laws, an inventor has one year from the date of initial public disclosure to file his or her patent application or all patent rights may be forfeited. This provision is known as the “one-year bar” or “statutory bar” and is absolute. According to the statute, public disclosure entails the publication of a patent or other literature on the invention in any country, or public use or sale in this country.
Due to the harshness of the statutory bar, it is highly recommended that you tell no one about your invention, other than your patent attorney or agent, until after you have filed a patent application. As explained above regarding the requirements for patentability, patents are awarded only for inventions that are not already publicly known. Thus, the better course of action is to maintain the secrecy of the invention until after you have actually obtained your patent. If it is necessary to disclose the invention to any other person, such as to obtain help in manufacturing the invention or to seek outside investors, you should at least consult an attorney regarding use of a confidentiality or non-disclosure agreement prior to having any such meetings with others.
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What can I be doing now to establish proof of my date of invention? [back to top]
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Your date of invention, or conception date, is the date on which you first conceived of the invention, or the date on which the performance of the mental part of the inventive act was completed such that the invention is made sufficiently plain to enable those skilled in the art to understand it. Often, conception is demonstrated by a simple sketch or narrative description of how the invention will work. To establish the date of conception, any such sketches or descriptions should be recorded in a bound notebook. The entries in the notebook should be as detailed as possible so that anyone reading the notebook would understand the invention. The notebook pages should not be removable, should be numbered and, preferably, should be witnessed regularly.
The United States Patent Office provides an invention submission and recording system known as its Disclosure Document Program. In this system, you may simply send in a Patent Office Disclosure Document form, a roughly $10 submission fee, and whatever written description you have of your invention, including drawings. The Patent Office will then register the invention and retain your submission for two years. This is a fairly simple and inexpensive means for establishing good proof of your date of conception, though it is not so convenient to add to or in any way amend your submission as the invention evolves. For this reason, the bound and witnessed notebook is a much less cumbersome and more living record of your invention in all of its embodiments and iterations.
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Why should I trust my patent attorney or agent with my invention? [back to top]
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Any patent attorney or agent that you may go to has a legal and ethical duty to hold everything that you tell them regarding your invention strictly confidential. It is the patent attorney’s job to take the proprietary information that you provide them with and use it to your advantage, not their own. Beyond your patent attorney or agent, there are actually a handful of other people who will see your invention before a patent is ever obtained. For example, the patent attorney or agent may have a secretary or other support staff who must see your invention disclosure in carrying out their duties. A registered search agent may be involved in conducting any patent search directed to the invention. A draftsman may be hired to prepare the drawings that will accompany the patent application. And once the application is prepared and filed, several employees of the United States Patent and Trademark Office will see your application during the normal course of events, from mailroom personnel to file clerks to the patent examiner who will review the application. All of these peoples' professional livelihoods depend on their integrity and abiding by the applicable rules of conduct, first and foremost of which is the duty of confidentiality. Any attorney who breaches this duty may be disbarred and held civilly liable. Thus, there are many disincentives to doing anything with your invention disclosure other than holding it strictly confidential. Ultimately, you must trust the process and those you are dealing with, particularly your patent attorney or agent.
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Will my application remain secret until the patent issues? [back to top]
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For applications filed prior to November 29, 2000, they do remain secret until they are issued as patents. But for applications filed on or after November 29, 2000, the new default rule is that the application will be published eighteen months after the filing date, or the earliest date for which priority is claimed. This rule was adopted in order for U.S. patent law to better align with the patent laws of other countries. However, if you do not plan on seeking foreign patent protection, you can “opt out” of publication by requesting non-publication at the time the U.S. application is filed. Because publication requires a fee of $300 and necessitates the submission of formal patent drawings at possibly an earlier stage of the proceedings, the non-publication request may eliminate some costs and defer others, but, again, should only be made if you have no intention of patenting your invention outside the United States.
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Once I obtain a U.S. patent, is my invention protected worldwide? [back to top]
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The short answer is no. A United States patent only grants rights to the inventor or owner to exclude others from making, using, selling, offering for sale or importing the patented invention in the United States. Generally, a patent issued any nation of the world only grants rights in that nation. With the adoption of the Patent Cooperation Treaty, however, many nations of the world, including the United States, agreed to in some ways recognize patent rights already secured in another country through the filing of what is known as a "PCT application." If such an application were first filed in the United States, for example, then an international priority date would be established for all other national stage patent applications that are subsequently filed essentially within the ensuing thirty months. In the final analysis, though, patent rights must be more or less acquired in each country into which a patent holder would like to introduce his or her product with protection, though the PCT system does enable an inventor to streamline this process somewhat.
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If my invention pertains to my field of work, does my employer automatically own it? [back to top]
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The question of who owns your invention – you or your employer – is a complicated one that is highly dependent on the facts of your case. Oftentimes, employees are required to sign a contract as a condition of their employment by which they agree to assign to their employers all right, title and interest in their inventions. When such an employment agreement is entered into, it can be said that the employee was employed to invent and, therefore, any such inventions belong to his or her employer. Some cases stand for the proposition that even absent a written agreement, if it is clear from the employee’s job description or the department to which the employee is assigned that his or her purpose or function is to improve old and discover new processes and devices, then that employee’s inventions would also belong to the employer.
Beyond these considerations of all-out ownership of a patented invention, there is also a rule of law known as the "shop rights doctrine" that comes into play in these situations. A shop right is a right that your employer has, short of ownership of your invention, to make and use your invention, even without your permission or paying you a royalty. A shop right in your employer arises if you made your invention during your hours of employment working with your employer’s tools and materials. Your employer may also acquire a shop right where you have induced or allowed the employer to make or use the invention for an extended period of time before attempting to assert any rights in the invention.
Essentially, only if you have not signed an employment agreement that requires you to assign your inventions to your employer and have invented something on your own time that is basically unrelated to your job and your employer’s products or services would you likely have full patent rights free and clear of your employer. If, on the other hand, you have invented a device or process that at all relates to your employer’s business and are now interested in seeking patent protection on the invention, you should consult a patent attorney as soon as possible.
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How long will it take to get a patent? [back to top]
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It is hard to predict with any certainty how long it will take to receive a patent. For a utility patent, the whole process, from the time your patent application is filed to the time the patent issues or receives a final rejection, typically takes at least eighteen months, and usually more like two to two-and-a-half years. It really just depends on numerous factors, including the area of technology, the extent of the prior art, and the degree to which the claims are contested by the Examiner.
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When can I mark my product with "Patent Pending"? [back to top]
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To begin marking your product with "Patent Pending," you do not have to wait until your patent claims are allowed or the patent has issued, or even until receipt of the application is acknowledged or a first Office Action is taken in the case. As soon as your provisional or non-provisional patent application has been filed with the Patent Office, you may mark your products with "Patent Pending." This phrase can continue to be used during the entire period that your application is pending - for two years or more. During that period, or at least until your patent application is published eighteen months after it is filed (see above), competitors are put on notice that you are asserting that something about your product is proprietary, but they do not know what. Only when your patent or patent application is published will your competitors know, through your claims, what you have asserted to be the metes and bounds of your invention. Until that time, your competitors do not know how close they can come to your product without infringing your potential patent rights, so they must keep far from your product or risk a major redesign later. This "Patent Pending" period then can give you a tremendous advantage and a jump-start on your competition.
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