Answers to Common Questions

Table of Contents

What is a patent?

A patent is government granted right to exclude others from practicing your invention, particularly the right to exclude others from making, using or selling an invention for a limited period of time.

As it is an exclusionary right, it is a right to stop others from making, using or selling. It is important to note that someone else may have a patent which would prevent you from using your invention, even though your invention is patentable. Thus, even if an infringer were to make the invention in a foreign country, he could not sell it in the USA. Similarly, it is still an infringement if the invention is made in this country but exported immediately, or if a person buys the invention overseas and uses it in the USA for their own use – there is no “personal use” exception for patent infringement.

How long is a patent in effect?

Utility Patents and Plant Patents are valid for a period commencing on the issue date of the patent by the Patent and Trademark Office, and ending, at the latest, 20 years after the US filing date of the earliest non-provisional application upon which the patent is based. There are maintenance fees to be paid during the life of a utility patent, and if they are not paid on time the patent will expire earlier than the maximum 20 year term. Once a patent expires the invention is in the public domain. The patent term can not be extended.

Design Patents are valid for a period of 14 years from the date of issue. No maintenance fees are due on design patents.

What can be patented?

Utility Patents cover:

Design Patents cover the appearance of useful objects. They do not cover the function or construction of the object.

Plant Patents cover newly developed varieties of plants.

Concerning business method patents- In 1998 the State Street Bank case was decided, in which the Court stated that not only were methods of doing business patentable, but that they always had been. The effect of this decision was a flood of patent applications dealing with implementation of business methods, from methods of writing patents to methods of selling products and services. The Patent Office department in charge of these patents (Technology Center 3600 (formerly part of TC2100)) has its own website.

What makes an invention patentable?

There are three major requirements for patentability: The invention must be novel, useful and not obvious.

Novel
means the invention was never patented before you invented it, never described in a publication, never in public use or on sale, by others before your invention.

Important note: all of these also apply to your own actions more than one year before you apply for a patent. In other words, you have one year from the date you first described your invention in a publication, or first sold it or publicly used it, within which you must apply for a patent if you ever want patent protection.

You should also be aware that most other countries do not give this one-year grace period, so if you intend to apply for patents outside the USA, you should have your US application on file before your first publication, sale or public use.

Useful
generally means that the invention does something, most anything at all.

Very few applications are rejected on the grounds of “not useful” – mostly “perpetual motion” inventions and chemical compounds and gene sequences with no known utility. “Useful” does not require commercial marketability – getting a patent does not mean that the USPTO has passed judgment on whether or not anyone really wants or would benefit from the product.

Not obvious
means the invention must not be an obvious development of what has gone before, in the judgment of an ordinary person skilled in the applicable field. Every invention seems obvious to the inventor. “Obviousness” here is usually the examiner’s opinion of what a combination of references would have taught to a hypothetical “Person Having Ordinary Skill In The Art” before the invention was created.

How can I tell if my invention is patentable?

Usually a novelty search is required. There are two parts to such a search: a literature search (catalogs, web sites, magazines, etc.), which the inventor or patent agent or attorney can perform, and a search of issued patents and published applications, which you should have a patent agent or attorney perform.

You can do a preliminary search of your invention on the U.S. Patent and Trademark Office’s web site, among others, which can supplement, if not replace, a conventional search. Our website provides several links which you may use to conduct a fairly respectable preliminary search on your own.

Can a competitor make small changes to my invention and avoid my patent?

It depends. The value of a patent depends on how “broad” the coverage is, as defined by the patent’s claims. If the invention claimed in a patent represents only a small advance over what went before it, the range of products the patent may cover is also small. On the other hand, if your invention is wholly new, then the range of equivalents is equally large. Most inventions fall somewhere between these extremes.

The determination of the breadth of a potential patent is a matter of analyzing the extent of the “prior art” and the range of things which might be covered under the patent. You should consult a patent professional for advice on the breadth of your invention.

Does my U.S. patent cover foreign countries?

No, it does not. You may stop others from making something overseas and selling it here, or making it here and selling it overseas, but you cannot stop them from making and selling it entirely in foreign countries. If you want patent coverage in other countries, you will have to file your US patent application each of the countries, and the application will be examined and issued as a patent separately in each country.

It is important to do such filing within a year of your US filing date if you are planning to do any foreign filing, so that you can claim the benefit of your US filing date in those countries. Note that most countries other than the US do not have any “grace period” for publication before filing the patent application, so if you had described your invention before you filed your US application you would not be able to get a patent in those countries.

There is no such thing as an “international patent” (although there are “regional patents” in Europe, the former Soviet Union, and certain African countries), and the Patent Cooperation Treaty allows you to file an “International Application”.

The Patent Cooperation Treaty or “PCT” allows you to file in the US Patent Office and reserve your right to file in a number of foreign countries, but you must eventually file separately in each country in which you want protection.

Note that the rules on what is patentable and what actions will bar patenting vary from country to country. For example, “business methods” which are routinely patented in the US are not patentable in most countries in Europe or through the European Patent Office.

We can provide an estimate of foreign costs once you have decided in which countries you are interested. As is the case for most US patent attorneys and agents, we are only licensed to practice in the US. When you are ready to begin filing foreign applications, we can make arrangements through correspondent patent attorneys in each country. We have developed relationships in a major emerging Asian country, as well as a strategic relationship with a European intellectual property law firm, both which you may find to be particularly cost effective.

What is the process of getting a patent?

1. The inventor completes an Invention Disclosure Form which provides the patent attorney with a description of the invention and other important information.

2. The patent agent or attorney conducts a novelty search at the Patent and Trademark Office. This search will reveal US patents (if any) that cover inventions similar to yours. (You might want to do your own preliminary search before ordering a professional search).

3. If, after reviewing the results of the novelty search, you decide to proceed further, the patent agent or attorney will prepare and file an application for you. You may now mark the product “patent pending”. The patent application will be held in confidence by the Patent Office, so only you and your attorney will know what it contains or be able to view the file, for 18 months from your earliest filing date. The American Inventor’s Protection Act of 1999 (AIPA) required publication of all non-provisional patent applications filed after November 29, 2000, and allowed publication of earlier-filed pending applications on request. An application is published eighteen months after the earliest filing date in the application’s chain of parentage (“priority date”). That means that if you file a Provisional Application, and wait the full year before filing your utility application, the utility application will be published six months after the utility filing.

4. A Patent Examiner at the Patent Office will then review the application and do his or her own search.

5. The examiner will issue an “office action,” usually rejecting the application. The rejections are most often based on format or wording (sometimes called “112 rejections”, after the section of the Patent Law which applies), novelty (“102 rejections”) or obviousness (“103 rejections”).

6. Your patent agent or attorney can reply to the action by amending the application, drafting convincing arguments to the examiner, etc. The one thing you cannot do is add any new matter to the application – which is why the application must be as complete as possible when it is filed. If you must add new material, then you’ll need to file a new “Continuation In Part” patent application, and start the process all over again.

7. If the Examiner is satisfied with the responses to the Office Actions and amendments of the application, then the application will be allowed and will be issued upon payment of an issue fee.

Why would I want to have my application published?

In the past, patents only had effect on infringement which occurred after the date the patent was issued. With the publication of applications, this too has changed. A “reasonable royalty” may be obtained for infringing use between the publication and the issuance of the patent, if (a) the infringer had actual knowledge of the publication, and (b) the claims in the issued patent are “essentially identical” to the published claims. Note that you still have to wait until the patent issues before you sue for damages, but at least you can get some royalty for the intervening time between publication and issue. This means that it is now more important than ever to present a range of claims in your original application, so that some, at least, will remain from publication to form a basis of a claim for pre-issue royalty.

I am not a U.S. Citizen or Resident. Can I get a U.S. Patent?

Yes, if your home country extends the same privilege to U.S. citizens, and most countries do.

In many (if not most) cases, inventors file a patent application in their home country first, and then file a United States patent application based on this earlier foreign filing. In fact, many countries require their citizens to file in their country before filing elsewhere, or at least to apply for permission before filing elsewhere. This is to allow the government the chance to decide that the invention should not be filed in foreign countries for national security reasons. Most of the time, the permission is routinely granted. The US has the same requirement for US citizens or residents who want to file in foreign countries – it’s called a “foreign filing license”. If you are considering making your US patent application the first patent filing on your invention, you should check with a patent agent or attorney in your country to make sure that will not cause any problems under your country’s laws.