Legally, a patent gives you exclusionary rights that are defined by the claims in your issued patent or published patent application to prevent others from making, using, selling, offering to sell, or importing your product and / or process in the country that the patent is issued in.  From a business standpoint, a patent helps to safeguard your economic investment in commercializing your idea from concept to reality, by sustainably distinguishing and legitimatising your product in the marketplace. The patent also helps to reduce the chance that you are infringing someone else’s patent and acts as a deterrent to someone stealing your invention and taking it to market themselves.  Also, a patent as an income-producing asset has the ability to generate multiple streams of revenue through licensing royalties in different markets and territories.  This is because the technology that you are licensing from your patent is easily portable and can be replicated to be simultaneously used by different entities in various markets and locations, thus producing multiple revenue streams.  In addition, a patent adds value to your company by increasing your asset base.  Contrast this to a tangible income producing asset such as a building or a machine, where only one income stream can be produced at a time due to the physical limits of a tangible asset only being in one place at one time.

 

For a period of 20 years from the filing date, assuming that all of the maintenance fees or annuity fees are paid, at which time the patent expires and enters the public domain with the patent owner’s exclusionary rights terminating and the patented technology being free for anyone to use without risk of infringement.  Note that if maintenance fees or annuity fees are not paid the patent will expire when the due date for the maintenance fee or annuity fee passes without payment.  In addition, a patent can be invalidated (premature expiration) or reduced in the scope of claim coverage by patent office reexamination, public opposition, or court action.  

 

Also, an expired patent will forever act as prior art to prevent a new patent being issued on the same invention or an invention that is determined to be “obvious” to one skilled in the art in comparison to the previous patent.

 

Patents are normally only valid on a country-by-country basis, so if you are going to sell your product in other countries you will need to obtain patents in those countries.  However, remember that your United States patent exclusionary rights cover the making, using, selling, offering to sell, or importing into the United States. Thus, even if someone else was manufacturing your patented product in a foreign country, if they imported, tried to sell, or even used your product in the United States, you could bring an infringement action based on the claimed coverage for your United States patent.  But if they manufacture, sell, and use your product entirely in the foreign country where you do not have a patent, then your United States patent will not help you.

 

The most important thing to remember is that most foreign countries have an “absolute novelty” standard that means you must get your patent application on file before any public disclosure of your invention.  The good news is that for most countries under the Paris convention, you can use your United States patent application date as your foreign patent application priority date as long as your file in the foreign country within 1 year of your U.S. file date. 

There are many different ways to achieve foreign patent protection that depends upon which countries, the total number of countries, and your time schedule for commercialization in the various countries.  Thus the foreign patenting process can be optimized to some extent to accommodate your commercialization plans.  Please see the “International Issues” section of this Web Site and the question “How much does a patent cost?” of this section for more information

 

This is called the “prosecution” or patent pending period and it can vary, being anywhere from a just under a year to over 4 years from the file date depending upon a number or factors such as; the technology involved, regulatory approvals, size of the application, petitions to make special or accelerated examination (to give priority to the patent application), patent office workload, and the like.  Currently the average time for the”prosecution” period of a patent is 37 months from file date to issue date.

 

A patent application is published (disclosed to the public domain) at 18 months after the file date if not previously issued (usually not the case).  Once the patent application is published it is available prior art to be used against later filed applications.  An advantage for the patent applicant is that once their application is published they can sue for infringement instead of having to wait until the patent issues at a later date.  However, the claims in the patent application publication are subject to change at patent issue which of course would modify the infringement claims.

 

A process, product, machine, or composition of matter, or anything considered a new and useful improvement of the previous items.  This is termed the “statutory subject matter” requirement of a patent and is the first test of patentability that the Patent Office gives.  Note that an idea alone cannot be patented, the idea must be a real device or process that has a functional end result having real world usability or benefit to the public, this is termed a “reduction to practice”, which is essentially the converting of an idea into a tangible device or process.  

 

It is also allowable to have a “prophetic reduction to practice” without the need for a real functioning prototype, however the invention must be sufficiently analytically proven by generally accepted engineering standards, this is for inventions that would be difficult or extremely costly to build a real functioning prototype.

 

Yes, there are 4 types; they are “Utility”, “Provisional”, “Design”, and “Plant”.  Most patents are called “Utility Patents” which cover the items in question 7 above and provide the strongest legal rights.  A utility patent legally protects the “function” of the device and thus gives the broadest coverage of protection of any of the four patent types.

Another type of utility patent is called a “Provisional Patent” which is a 12-month patent pending period only, that allows someone with only an invention description to obtain a patent file date.  A provisional patent must be followed with a regular utility patent application within 12 months, and if not is automatically abandoned never becoming a patent. 

 

Note that a Provisional patent is not examined by the Patent Office and thus there are NO exclusionary legal rights associated with a Provisional Patent.  A provisional patent offers a lower filing fee than a utility patent, however, the drafting of a provisional patent must be done with the same care as a utility patent as you cannot add new matter to the provisional patent if you roll it into a utility patent and use the provisional as priority (normally the case).  A note of caution on provisional patents, if you roll the provisional into a utility and into possibly foreign patents the fact that you filed a provisional patent first results in much higher long run costs in fees to patent offices as compared to not filing a provisional patent and filing a utility patent application first. 

 

Also, on a provisional without any patent office action response to guide your decision making on whether to continue the patent application prosecution at one year after filing, you will still remain in the dark on continuing your commercialization expenditures, your infringement of others patents, and deciding on foreign patent filings.  Another problem with a provisional patent is that you do not receive a foreign filing license, thus if you decide to file foreign based on a provisional as priority, you must obtain a foreign filing license on your own from the patent office prior to any foreign patent application filing, wherein on a utility patent application filing the foreign filing license is automatically processed.

Still another type of patent is called a “Design Patent” that covers the ornamental and non-functional aspects of a product, basically protecting only the “appearance” of a product and NOT the “function” of a product like a Utility Patent does.  The Design Patent has a shorter exclusionary term of 14 years as opposed 20 years for a “Utility Patent”.  Note that it is entirely possible to obtain both a Utility and Design Patent on the same product to protect both the function and appearance of the product.  This would be the case if both the function and appearance of the product were commercially significant.

Another type of patent is called a “Plant Patent” which is for asexually reproduced plants (budding, grafting, etc., but not seeds) that are not a product of nature.  A plant patent has the same exclusionary term as a utility patent at 20 years from the filing date.

There are 4 requirements; they are “statutory subject matter”, “novelty”, “utility”, and “non-obviousness”.

 

First, your invention must fit into the statutory class for the type of patent you are seeking.  For a utility patent the invention must be a process, product, machine, or composition of matter.  Note that this requirement prevents the patenting of an idea alone, as the invention must be a real device or process that produces a functional result. 

 

Second, your invention must be novel or truly “new”, meaning that there cannot be anything just like your invention already invented.  The Patent Office looks at novelty by trying to find a single existing patent anywhere in the world (note that it is irrelevant if the patent is expired or not) or publication(s) (note that publications can be combined to show enablement (make and use) of the invention) anywhere in the world that directly anticipates or completely defines your claimed invention.  If this single defining patent or publication(s) are found, then your patent application fails the “novelty” test. 

 

Third, your invention must be useful to society or have what is called “Utility”.  This puts forth the requirement that your inventive idea has been converted into a real world device or process with a functional end result that has a beneficial use to the public.   

 

Fourth, the most difficult hurdle to overcome is that your invention must not be an “Obvious” improvement or change to similar inventions already made to someone skilled in the technology of your invention.  The Patent Office evaluates obviousness by combined any number of exiting patents or publications and using only selected portions of each patent or publication, and combining these portions to completely define your claimed  invention.  There needs to be a motivation, suggestion, or teaching in the patents and / or publications to combine them in a manner that completely defines your invention for your invention to be deemed “obvious” and therefore unpatentable.  In addition, combining these patents and publications cannot interfere with the function of the existing devices in the patents and / or publications, which in effect “teaches away” from combining the patents and / or publications.  However, the Patent Office can say that a motivation, suggestion, or teaching is inferred by the ordinary skill in this technology, where the motivation, suggestion, or teaching is not explicitly stated in the patents and / or publications.

 

Furthermore, in determining whether an invention is obvious, an Examiner may combine different features from several references to indicate what would be apparent to the ordinary skilled person in the inventor’s technical field.  If the skilled person would view the claimed invention either as an obvious combination of existing features disclosed in the several references or as an obvious extension of the existing technology, then the claimed invention is not patentable.  While the tests of utility and novelty are more straightforward, the test of non-obviousness requires subjective judgment regarding, for example, the actual content of the prior art, the differences between the prior art and the invention, the level of skill of the ordinary skilled person in the technical field, and the evaluation of objective evidence as having a nexus to the claimed invention (called secondary considerations) supporting non-obviousness for patentability such that the invention produces or has:

1. New and unexpected results
2. Succeeds against conventional wisdom
3. Solves a new problem
4. Commercial success stemming from the claimed invention
5. Crowded prior art
6. Achieves same result with fewer parts or steps
7. Solves a long standing problem
8. Synergistic results
9. Requires excessive prior art combinations, four or more
10. Prior art combinations are from non-analogous fields
11. Failure of others to solve a known problem
12. The new invention has been copied in the marketplace

In addition, obviousness requires that the references suggest, teach, or motivate their combination in relation to your invention or that “ordinary skill in the art” and / or legal precedent would implicitly teach the combining of the references or substitute for a functional element of the invention not directly found in a reference.  Examples of non-patentable obvious changes deemed “ordinary skill in the art” for the invention in relation to the prior art would be:

1. Size changes
2.  Material changes
3.  Making portable
4.  Making adjustable
5.  Sequence changes
6.  Making integral
7.  Making separable
8.  Making continuous
9. Automating a known manual process
10. Using a well established business practice
11.  Reversing
12.  Rearranging
13. Duplicating
14. Rearrangement of elements

Note that if any of the above changes do result in a significant change of beneficial function to the user, then these changes may be non-obvious resulting in patentability. 

 

Also, a reasonable expectation of success should be achieved in combining the references, in other words it should “make sense” to combine the references by not destroying the principal of operation of the reference to achieve the combination, given the industry or field that the invention resides in, and with the ordinary skill in the art that exists.

 

Finally, the combination of all the references must teach the entire invention as it is claimed in the patent application.

 

A patent is written from scratch and must contain certain items.  A complete description of the invention including how to make and use the invention, identification of different versions of the invention with the best version identified, drawings, and claims.  The claims are what actually define your exclusionary legal rights of a patent.  The claims are the most important part of the patent and typically number around 20 or more.  The numerous claims are written in varying scopes of exclusionary right coverage to maximize your infringement net of protection.  This is done so that if your infringer either exactly copies your invention or makes alterations on your design in some manner, you have a claim that comes as close as possible to defining the infringers product to give your patent its maximum strength for an infringement claim.   A claim conceptually is similar to a legal description for real property by defining the metes and bounds on the invention, wherein a well written claim tries to protect the “concept” of your invention and not necessarily the exact embodiment or version taught by your working prototype.   

 

The description portion of the patent is the longest part of the patent and must “support” what is in the claims.  In other words, the description must explain and give insight to what the claims mean to aid in their interpretation with everything stated in the claims being explained in the description and equivalent alternatives.  Note that the entire patent once issued is prior art preventing future patents to issue as used in the previously described novelty and obviousness tests.  Thus, the claims in your patent define your exclusionary rights against infringers for 20 years from the patent application file date (see question 2 for detail) and the entire patent works to prevent similar patents from being issued forever.

 

No, it is perfectly legal for an inventor to completely write, file, and prosecute (process) their own patent application through the U.S. Patent and Trademark Office (USPTO) on their own.  However, only about 15% of the patent applications processed by the USPTO are completely done by the inventors themselves.  The approximately remaining 85% of the patent applications are handled through either patent attorneys or patent agents.  The reasons are that an agent or attorney can usually obtain broader patent protection for the invention by having specialized knowledge of patent law, USPTO procedures, and better understand how various patents stand up in court. This broader patent protection can result in the patent having more value on a commercially successful invention and can become very important in the future.

 

Both patent agents and patent attorneys must take the same exam (Patent Bar) to be able prosecute (process) patents before the U.S. Patent and Trademark Office, and both are usually degreed engineers of various disciplines, such as chemical, electrical, and mechanical.  A patent attorney in addition has a law degree and can practice law on issues surrounding a patent such as licensing, infringement, and other legal activities that are related to an issued patent.  A patent agent is limited to patent related activities with the U.S. Patent and Trademark Office up to the point of the patent issuing and cannot do patent licensing, infringement, etc.

 

First and foremost, keep your invention confidential, don’t disclose it to the public or put it on sale until you have a patent application on file.  In the United States you have a 1-year grace period after the invention is disclosed before you have to file a patent application.  Even though you have a 1-year grace period in the United States, it is not wise to disclose your invention to the public before you have a patent application file date for several reasons.

 

First, someone could take your invention and quickly file a patent application on it before you do, putting you in the difficult position of proving a conception of your idea with diligence prior to the other person, which can be difficult to do unless you posses appropriate documentation on your conception with diligence related to your invention development activities.  In the real world, most inventors have inadequate documentation on their conception with diligence activities, thus the default would be the “first to file” in obtaining a patent on the invention, of course assuming that the other patentability tests are complied with as given in question 9. 

  

Second, you could be infringing another patent without knowing it and will have to abandon your invention after putting time, effort, and money into commercializing it.

 

Third, another individual could claim to be a joint inventor with you by making casual suggestions on your invention, thus claiming ownership of the patent that is issued to you. 

 

Fourth, you may have lost your ability file a foreign patent application, which can reduce the value of your patent to outside licensees of your technology.   

Remember that most foreign countries do not give you this 1-year grace period and if you disclose your invention to the public before you get a patent application on file, you probably cannot obtain a patent in other countries.  Please go to the “For Inventors” and “International Issues” sections of this Website for follow up information.

 

Specifically starting with a pre application filing prior art search, patentability opinion, and a preliminary literal infringement opinion.

Please see the separate budget portion of the website for detail on patent costs.