Patents

Before you decide whether to pursue patenting or licensing, you should know the basics about patents, the patent process, and associated costs.

WHAT IS A PATENT?

A patent secures an individual’s intellectual property. It refers specifically to the express rights to an invention that are granted by the government to prevent other people from manufacturing, selling, offering for sale, or importing your invention without your permission.

A patent does not grant the right to make, use, sell, offer for sale, or import an invention, but rather prohibits others from doing so. To exercise these rights, it should be determined that your invention does not infringe upon another patent. Your patent attorney can conduct a clearance or right to use search to determine if your invention is likely to violate the claims of other patents.

Duration
In the United States, patents last for 20 years from their application date. After this time, other people or companies are permitted to develop and market products similar to your invention.

Purpose
The United States Patent and Trademark Office (USPTO) grants patents and rights to other intellectual property "to promote the progress of science and the useful arts by securing for limited times to inventors the exclusive right to their respective discoveries."

What is Patentable
Generally, patents are provided for that which is novel, nonobvious, and useful. To be considered novel, an invention must not be revealed or publicly available anywhere in the world before the priority date. An invention is nonobvious if someone with ordinary skill in the relevant technical art, would not have known of, made, or used the invention. Lastly, an invention is useful if it performs some useful function of positive benefit to society.

• Processes
• Machines
• Articles of manufacture
• Composition of matter
• Improvement of any of the above

What Cannot be Patented
Patents are not granted for inventions that are offensive, obvious, or are not useful. These include:

• Laws of nature
• Physical phenomena
• Abstract ideas
• Literary, dramatic, or artistic works (See discussion on Copyrights)

THE PATENT PROCESS

A good first step in the patent process is to research the invention and the industry sufficiently to determine if your idea is patentable and positioned for success in the marketplace. There are a number of free and “for fee” resources for patent information and searches. The Inventor Resources section of this site provides links to many of these services and may be helpful in your preliminary search. However, it is important to note that conducting a thorough patent search requires considerable expertise. You should consult a patent attorney or patent agent in order to determine the potential patentability of your invention. For more information on the preliminary research, read about What to Do with a Great Idea.

If you have completed your preliminary assessment and decided to apply for a patent, congratulations! You’ve reached an important milestone. You are now ready to begin the patent application process. You may want enlist the help of a patent attorney or a patent agent to assist you throughout the patent process.

1. Filing
You begin the application process by filing for a patent. If another person assisted in inventing, you will file a joint application. If you have assigned your rights to another individual or company, the patent will be granted to the assignee’s name, but you will be listed as the inventor.

A patent application consists of:
Specification—The specification must include a written description of the invention and the manner and process of making it, its claims, and must differentiate it from other patented inventions. Also, part of the specification is a brief abstract of the technical disclosure.

Oath—The oath declares that the applicant believes him/herself to be the original and first inventor of the subject matter of the application.

Drawing of the invention (If applicable)—Drawings must adhere to strict regulations including size, type of paper, margins, and other details. See USPTO standards for drawings.

Filing fee (see Patent Costs)—Filing fees are subject to change. See USPTO for current fees.

Note: This information for patent applications is specific to US procedures, and may vary in other countries. You can file your patent application in the United States with the USPTO in person, through the mail, or online.

2. Examination
After applications are filed, they are assigned for examination. The examining group is comprised of individuals who have expertise in the field pertinent to the invention in question. The group sends the application through a search for similar U.S. and international patents. They must determine that the invention is novel, useful, and nonobvious.

3. Office Action
The applicant receives a written notice of the examining group’s decision, which can be an acceptance or rejection of the patent application.

4. Applicant Reply
If the Office has rejected claims made by the applicant, he or she must submit a formal reply that addresses every objection made by the Office. The applicant generally has six months to submit a reply, but this time period can be shortened to as little as 30 days.

5. Final Rejection
If the Office determines that the applicant’s reply does not overcome the objections, the Office issues a formal final rejection. The "final rejection" does not mean that a patent cannot still be obtained.

6. Appeal
After being issued a final rejection from the examining group, the applicant has the opportunity to file an appeal with the Board of Patent Appeals and Interferences in the USPTO. The appeal can be made in the form of an oral hearing, for a specified fee. An applicant also has the option to file a continuation application, which requires a filing fee.

After these avenues are exhausted, a final appeal can be made to the Court of Appeals, or an applicant can file a civil action suit. In these cases, the courts make the final decision to grant or deny a patent.

Adapted with permission from Docie RL. The Inventor’s Bible: How to Market and License Your Brilliant Ideas. Berkeley: Ten Speed Press. 2001.

PATENT COSTS

There are costs associated with researching existing patents and filing patent applications. While research can require an investment up front, it can save you a considerable amount of time and money in the long run.

Patent or Prior Art Search
Fees associated with a patent or prior art search can vary widely depending upon the type of search and who is performing the search. For additional information relating to patent costs please visit the Inventor Resources section.

Patent Application
Patent application fees vary depending on the type of patent for which you are applying. A current listing of the application fees can be found at the USPTO website.

Maintenance Fees
If you are granted a patent, you are required to pay periodic maintenance fees. These must be paid in a timely manner, or you risk expiration of your patent.

INTERNATIONAL PATENTS

Different countries have different patent laws that you or your patent attorney will need to research if you are interested in securing a patent abroad. Most countries have comparable laws that deny a patent if information about the invention has been published prior to submitting a patent application.

More than 140 countries participate in the Paris Convention for the Protection of Industrial Property, which guarantees that citizens of other nations are protected by the same patent rights as the same laws as their own country. Filing an international application grants the applicant an international filing date that pertains to the 90 countries that signed the Patent Cooperation Treaty.

Prerequisite to Filing An International Application