What is a Patent?A patent is a right, granted by the United States government to an inventor, to exclude others from making, using, selling or importing an invention throughout the United States without the inventor’s consent. The inventor may license or sell the patent rights defined by the claims of the patent. There are currently over 7 million United States patents. Without a patent, anyone can make and sell your invention without your permission and without paying you. It is important to note that a patent application only provides patent pending and does not provide any enforceable patent rights. Only a granted patent provides enforceable patent rights to an inventor or business.
There are two main types of patents issued by the United States Patent Trademark Office: utility patents and design patents. Regardless of the patent ownership rights you seek patent protection on, you should establish patent ownership prior to filing the patent application if possible.
Utility PatentsA utility patent protects the function of an invention. Utility patents are granted for any new, useful and non-obvious process, machine, manufactured article, composition of matter, or any new and useful improvements to any of these types of inventions. The term of a utility patent is 20 years from the date of filing. Utility patents are usually more desirable than design patents. We have a chart that illustrates the Typical Utility Patent Application Process.
Design PatentsA design patent protects the overall appearance of an invention and is granted for any new, original and ornamental design for an article of manufacture. The term of a design patent is 14 years from the date of issuance for design applications filed before May 13, 2015 and 15 years from the date of issuance for design applications filed on or after May 13, 2015. A design patent should only be chosen if the appearance of the invention is important, otherwise utility patent protection should be sought.
Should You Patent?Before seeking patent protection, you should first determine whether your invention is potentially marketable. If your invention is not marketable you do not need patent protection. When determining whether your invention is marketable, you should determine if another company would be able to profit from your invention not only today, but also in the future. If so, patent protection should be sought so that the company would have to license the invention from you.
What is Not PatentableAn inventor cannot receive a patent for perpetual motion devices, abstract ideas, laws of nature, or naturally occurring substances. An inventor cannot receive a United States patent for an invention publicly disclosed more than 12 months ago.
Public disclosure includes any sale, exhibit at trade show, or printed in a publication, with a few exceptions. You should seek a Patent Attorney’s opinion if you have any questions whether your invention is patentable. It should also be noted that you do not need a prototype when seeking patent protection – you only need to be able to describe the invention in sufficient detail so that one skilled in the art could construct your invention.
Benefits of PatentingPatenting your invention also allows you to prevent others from making, using or selling your invention throughout the United States without your consent. A patent is also one of the few assets that can increase in value over time. A patent also increases the value of your business because it is considered a valuable asset by banks and potential purchasers of your business.
There are many ways to financially benefit from a patent. Your patent may be sold outright to another for monetary remuneration. You may also license your patent to one or more parties for a percentage of the sale price. You may also be the exclusive manufacturer of your invention. Whether you are a business or an independent inventor, a patent is a valuable asset and is needed to protect you from unscrupulous individuals who could benefit from your hard work.
U.S. Patent SearchThe first step in the patenting process is usually to have a patentability search completed to determine the patentability of your invention. Our patent searches are performed in-house using the latest patent search technology. However, outside patent searchers may be used on selected projects.
Patentability OpinionAfter the patent search is completed, Michael S. Neustel (U.S. Registered Patent Attorney) will compare the relevant located patents to your invention. A professional patentability opinion by a Registered Patent Attorney along with copies of the relevant patents will be sent to you upon receiving and reviewing the patent search results.
Patent ApplicationAfter the patentability opinion is received and you have adequately reviewed everything, you will want to consider filing a patent application. A patent application includes an abstract, a specification, at least one claim, a Declaration, a filing fee and usually at least one drawing. A patent application is held “confidentially” by the USPTO subject to the 18-month publication rule recently enacted (see below).
A very important part of the patent application is the “Claims”, which describe the scope of coverage that the inventor is attempting to receive from the United States government. A competent Patent Attorney is typically required to receive the most favorable patent coverage for your invention. Adequate patent coverage ensures that potential infringers will be prevented from making, using or selling your invention even if they make a modification.
A utility patent application may be filed as a regular patent application or as a provisional patent application. A provisional application for patent is a U.S. national application for patent filed in the PTO under 35 U.S.C. §111(b). A provisional application allows filing without a formal patent claim, oath or declaration, or any information or prior art disclosure. It provides the means to establish an early effective filing date in a patent application and allows the term “Patent Pending” to be applied for a period of one year. After one year, the provisional application automatically becomes abandoned. Patentees need to file a regular patent application during this one year period to claim priority to the provisional application filing date. While a provisional application provides a means for reducing the application filing fees, the total end cost is typically approximately $1,000 higher than simply filing a regular application.
Patent ProsecutionAfter filing the patent application with the USPTO, an Office Action from the USPTO will usually be received within 8 to 14 months. Typically, the USPTO will reject some or all of the Claims of the patent application depending upon whether the USPTO Examiner believes it would have been obvious to create your invention in view of the prior art located by the Examiner.
It is then necessary to argue that your invention is patentable based upon the differences between the invention and the art cited by the USPTO Examiner. Legal arguments and decided case law may be used to refute the Examiner’s position. A telephone interview with the Examiner may also be arranged to find agreement on any issues of dispute.