FAQs - Frequently Asked Questions
Invention & Patents
Note: The US Patent & Trademark Office has provided some excellent general information on its web site. Click on the "PTO Details" link near each question to see what the PTO says about a topic.
- What is a patent?
- What are the different types of patents?
- What are the different types of applications?
- What are the "claims" in a patent or patent application??
- How can I obtain a patent?
- How long does it take to obtain a patent?
- How much does it cost to obtain a patent?
- What can be patented?
- What does it mean to "license" or "assign" a patent or application?
- What does "patent pending" mean?
- Once I'm "patent pending" can I discuss my invention openly?
- How can I protect my ideas before I file for a patent?
- What is a Registered Patent Agent?
- What are the requirements for obtaining a patent?
- Are models or exhibits required to obtain a patent?
- Who can apply for a patent?
- What about drawings? Do I need "formal drawings" from day one?
- What about searching? What is an IDS? Why search and can I do it myself?
What
is and is not a patent?
A patent for an invention is the grant of a property right to the inventor, issued by the Patent and Trademark Office. The term of a new patent is 20 years from the date on which the application for the patent was filed in the United States or, in special cases, from the date an earlier related application was filed, subject to the payment of maintenance fees. US patent grants are effective only within the US, US territories, and US possessions. The right conferred by the patent grant is, in the language of the statute and of the grant itself, “the right to exclude others from making, using, offering for sale, or selling” the invention in the United States or “importing” the invention into the United States.
What is granted is not the right to make, use, offer for sale, sell or import, but the right to exclude others from making, using, offering for sale, selling or importing the invention. A patent is also not an idea. An idea is just an idea. Filing a patent application is called "constructive reduction to practice", which is legally the same as creating a working model. It is the step of filing an application that teaches how to make and use the invention that is the solidification of the idea into a form that can be patented. PTO details
What
are the different types of patents?
There are several types.
- Utility Patents are granted to persons who invent or discover "any new and useful process, machine, article of manufacture, or composition of matter". This is the type of patent that most of us think of when they hear the term "patent". When a utility patent is discussed in the law, it is referred to as a non-provisional patent. Most patents are utility patents.
- Design Patents are granted to "any person who has invented any new, original and ornamental design for an article of manufacture." This type of patent protects only the appearance of an article, not its structure or utilitarian features. In fact, it is necessary that the design has no claimed utility, other than its ornamental appearance.
- Plant Patents are granted to any person who invents or discovers a new asexually reproduced plant.
What
are the different types of applications?
- A utility (non-provisional) application requires a written specification, which includes a description and at least one claim, and an oath or declaration.
- A provisional application has the same written description requirements as a utility patent, with the exception that there are no claims.
A provisional application is not a patent and it carries no right to exclude, as does a utility application that matures into an issued patent.
The purpose of a provisional application is as a place holder for a later filed utility application. There can be no claims for priority in a provisional. There is no such thing as a design or plant provisional. There can be no examination or amendment. There is no oath or declaration, a cover sheet serves this purpose. A utility application may claim priority from a previously filed provisional, if the utility application is filed within 12 months of filing of the provisional. There are no extensions to the 12 month period. A major use of a provisional is that you beat prior art as of the provisional date, but you do not start calculating the 20 years after filing date of the utility that replaces a provisional until the utility is filed. This effectively extends your monopoly for up to an extra 12 months, allowing you to collect an extra year of license fees from licensees. Another import benefit of filing a provisional is that the applicant my claim "patent pending" status for the subject matter of the invention. The fees are also less for a provisional. PTO details
What
are the "claims" in a patent or patent application?
A patent for an invention is the grant of a property right to the inventor, issued by the Patent and Trademark Office. The term of a new patent is 20 years from the date on which the application for the patent was filed in the United States or, in special cases, from the date an earlier related application was filed, subject to the payment of maintenance fees. US patent grants are effective only within the US, US territories, and US possessions. The right conferred by the patent grant is, in the language of the statute and of the grant itself, “the right to exclude others from making, using, offering for sale, or selling” the invention in the United States or “importing” the invention into the United States. What is granted is not the right to make, use, offer for sale, sell or import, but the right to exclude others from making, using, offering for sale, selling or importing the invention. PTO details
How
can I obtain a patent?
A patent is obtained by first filing a patent application. This application is examined by the US Patent & Trademark Office's examiners. The examiners send "Office Actions" to the inventor's agent and the agent responds with amendments to the application and arguments to rebut the examiners findings. If the examiner agrees with the agent's amendments and arguments the application is allowed, and a patent will issue after payment of the issue fee. PTO details
How
long does it take to obtain a patent?
On the average, from the time an application is filed to the time a patent issues, approximately between 18 months and 3 years. This time is affected by many factors, such as the workload at the patent office, the time an inventor or agent replies to an Office Action, the number of Office Actions needed to convince the examiners of the merits of the case, etc.
How
much does it cost to obtain a patent?
The cost of obtaining a patent can be roughly broken down into two parts, the fees the PTO charges for the various stages of prosecution of an application, and the fees the attorney or agent charge for their services in preparing the application and representing the client. For a current list of PTO fees, click here. This list of PTO fees includes many costs that most applications do not require. Also, if you are a "small entity", that is, for example, an individual inventor, the many fees are cut in half. For a list of fees charged by Agent / Inventor, LLC to represent you and prosecute your application, click here to see our fee structure.
What
can be patented?
Almost anything, basically "Anything under the sun, modified by man". PTO details
What
does it mean to "license" or "assign" a patent or
application?
When an applicant or patent owner wishes to allow others to use part or all of the property right, but wishes to keep control of the application and the rights to sell other parts to other parties, the applicant offers a "non-exclusive license". This allows the licensee to practice the invention under stipulation of a contract and allows the applicant to profit from the license. The contract could be written to be a one time lump sum payment or a yearly fee. It could also be written to allow a smaller yearly fee and a percentage of each device manufactured or sold that embodies the licensed invention.
When an applicant or patent owner wishes to allow others to use part or all the property right, but wishes to retain control of the application or patent but does not want other parties than the licensee to own the particular licensed feature(s), an exclusive license is granted, again via a contract.
If an applicant or patent owner wishes to assign all right to the application or patent to another party and does not need to be in control of the application or patent, an assignment is made. The assignment of the application or patent allows the third party to control all aspects of the patent or application. For example, the assignee could remove the applicant's agent from the prosecution of an application. The assignee could also exclude the inventor from participating in an application The assignee could also terminate the prosecution of an application, or stop paying maintenance fees for a patent. The assignee has total control.
Assignments are valid if written, you may write an assignment on a napkin of a bar, if you wish. But an assignment should be recorded. Recording is done at the PTO and it will ensure the assignee has the rights they believed they had by executing the assignment. If an assignment is not recorded in the PTO within three months from its date, it is void against a subsequent purchaser for a valuable consideration, even $1, without notice, unless it is recorded prior to the subsequent purchase. PTO details
What
does "patent pending" mean?
After an application is filed, one may mark an article embodying the applied for invention as 'patent pending' or 'patent applied for'. This informs the public that protection is being sought for the invention. The fact that a device contains patent pending features does not prohibit others from creating a device that also has the same patent pending features. But the patent pending mark serves as fair warning that, if an invention is infringed, that a patent may issue and the entity infringing would be liable for further infringement. One may not use these phrases unless a patent is actually applied for. However, patent pending can mean that any type of patent has been applied for, this includes utility, provisional, design or plant patents. PTO details
Once
I'm "patent pending" can I discuss my invention openly?
One can claim "patent pending" status after a provisional, utility, design or plant application is filed. But the answer to this question is a bit complicated. Basically an applicant should show as little as possible as much as possible.
The only reason an applicant would show data about the application is when the applicant is attempting to interest a person or firm to license or assign the rights to the patent, once the application is granted. The prospective licensee might also choose to "buy the whole application" when, for example, the company or person wants the applied for invention to be kept secret.
Because the applicant has no right to exclude, at the application stage, the applicant must be wary of exposing too much of the invention. For example, an applicant should only show the written description of the invention, and not the claims. It is the claims that describes the "meets and bounds" of the property right that will be granted if the application is issued as a patent.
Withholding the claims will frustrate someone's efforts to design around the patent you might end up getting. Also, hide or black out the dates and any signatures of witnesses. If you show copies of your inventor's notebook, likewise black out the names and dates of witnesses, this prevents someone from claiming that their idea predates your idea. Be particularly careful with a provisional, as there are no claims, the person reading the provisional might be able to make something you won't claim in the utility that replaces the provisional.
Also, only show as much as is necessary to achieve your goal. For example, perhaps the claimed invention has three embodiments of a new display device: a computer monitor, an portable display for a cell phone, and a television. If the applicant were trying to license the computer monitor to a computer manufacturer, then only the parts of the specification relating to the computer monitor should be shown to prospective licensees.
How
can I protect my ideas before I file for a patent?
You need to keep a good invention notebook or disclosure document. A notebook should be bound, that is, the pages must not be removable. Most "computation notebooks" available from office supply stores will do. Next the notebook must clearly disclose the invention and must be signed and dated by the inventor and two witnesses. I suggest two witnesses, in case one witness is not available when needed. The witnesses should be someone that understands the subject matter of the invention and is not related to the inventor.
Look at Patent Cafe's inventor's resources like their "Inventor's Journal" and "Inventor's Starter Kit".
What
is a Registered Patent Agent?
The PTO registers individuals as agents or attorneys who have passed the official "Examination for Registration to Practice in Patent Cases before the US Patent & Trademark Office". An individual who passes the exam is called a patent agent. Such an individual who also provides proof of good standing in a state's bar is called a patent attorney. Both individuals may file the same papers so that you may obtain a patent. The primary difference between an agent and an attorney is that an agent is not a lawyer and as such may not engage in activities that their local jurisdictions believe is "practicing law". Such activities might include license agreements, because these are contracts, or engaging in patent litigation. PTO details
Note: Lawrence R. Brandt is a Registered Patent Agent. Notice of Mr. Brandt's registration to practice can be found on the PTO's web site, using this link.
What
are the requirements for obtaining a patent?
There are several hoops an applicant has to jump through before a patent is granted, including:
- The invention must be drawn to patentable subject matter. (See: What can be patented?)
- The application must be novel. The law says that an applicant is "... entitled to a patent, unless (a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent,” or “(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country more than one year prior to the application for patent in the United States . . .” see: PTO details
- The invention must not be obvious, that is if the invention is novel, but is an obvious variation of a prior invention, a patent can not be granted. The test for obviousness is if an artisan who is "skilled in the art" of the invention would find the invention obvious. This fictional skilled artisan is represented by the patent examiner. If the examiner, who is an expert in the particular field of the invention, believes the invention is not obvious, the patent will not be granted. See the previous PTO details , which also has a discussion of obviousness.
Are
models or exhibits required before I can obtain a patent?
This is a myth that cause many people to become disillusioned with the patent process. Models or exhibits are not usually required. This is because the filing of a patent application is the constructive reduction to practice that takes the place of an actual reduction to practice. But can a model or exhibit help you? The answer is a resounding yes, for several reasons:
- A working model of your invention can help you establish an earlier date, so your application may beat an examiner's rejection.
Here's a simple example:
- You invent a new widget on 1/1/1999.
- You exercise reasonable diligence for 6 months and on 6/1/1999 you have a working model of your widget.
- You call us on 9/1/2000 and we meet with you and begin writing an application for you.
- We file the application on 10/1/2000.
- As part of the application process, we've found several pieces of prior art and take these into account in writing the application.
- We receive an Official Action (OA) from the PTO. This OA is a rejection under 35 U.S.C. 102(a) that states that your invention is not novel, that is someone else, inventor Jones, invented the same device before the date you invented it! Jones publishes an article, completely describing the new widget in "Widget Monthly" magazine, which is published on 8/1/2000. Jones did not make public any information about the invention prior to the publication of the article.
- You invented before Jones, but the PTO doesn't think so! How can this be? This is because the PTO takes the date you file as the date of your invention.
- Jones did indeed invent the same invention, but not before you invented it, only before you filed your application.
- So you can prove you invented before Jones, by a showing, that is filing an affidavit under 37 CFR 131 that shows your invention was created before the date of the Jones document. The content of this affidavit can be signed and witnessed copies of your notebook (signed and witnessed before the Jones publication, of course!). You could also submit pictures of your working model, similarly witnessed and signed.
The above showing can overcome the rejection and allow you to obtain your patent. Now, here's a more complicated example:
- First, assume the same dates for your invention and filing as the above example
- We again receive an OA rejecting our application, this time under 35 U.S.C. 102(e), due to a patent issued to Smith on 11/1/2000
- The Smith patent was filed on 8/1/1999, which is Smith's constructive reduction to practice date (a.k.a. the 102(e) date)
- Also, Smith made a constructive reduction to practice, a model, of the invention on 7/1/1999
- During the prosecution of Smith's patent, Smith showed an invention date of 5/1/99 to overcome a piece of prior art
- How do we prove that you invented first? What we need to do is prove you exercised reasonable diligence from 5/1/1999, the Smith invention date, until 6/1/1999 your actual reduction to practice date.
So, you see that your actual reduction to practice, that is your model or exhibit, was helpful in beating the Smith 102(e) date. Because without your model, you would be stuck, as Smith has both an actual and constructive reduction to practice before you file.
- A model can also be useful during an interview with an examiner. Provided it is a non dangerous model, such as an explosive or such, a working model can help the examiner understand the novelty or unobviousness of your invention. However, the interview needs to speak to the application, showing the examiner a part of the model that is not disclosed in the application as filed will not help. All features must be in the application as filed!
- A model will also help the agent understand your invention better and will allow the agent to write a better application
- Once you file an application, you may approach companies searching for people to license your invention. Using a model at such discussions is a great way to get your idea across to the companies!
Who
can apply for a patent?
An inventor or inventors must apply for a patent. A inventor may assign his or her rights to a company, but the application must be filed in the name of at least one inventor. PTO details
What
about drawings? Do I need "formal" drawings from day one?
Formal drawings are usually only required after the patent is allowed, that is just before it is issued. At this time formal drawings can replace informal drawings that were originally filed in the application. The one caveat is that the informal drawings that are filed with the application papers must be enabling. What this means is that "one of skill in the art" must be able to build and use the invention by referring to the description and drawings. PTO details
What
about searching? What is an IDS? Why search and can I do it myself?
A patent search is performed so that all applicable prior art is found. While a search is not required before a patent is filed it is a good idea for a few reasons:
- Any prior art that comes to the attention of anyone involved with the prosecution of the application, must be disclosed to the PTO. This disclosure is called an Information Disclosure Statement (IDS). This document can be filed at various times, with various costs. Its purpose is to disclose any information that could be considered "material to patentability". Any published patent, publication or similar document can be included in an IDS. An IDS can be filed for free during the first 3 months after the filing of the application. After the 3 months passes the cost is more and/or the proof that the information was newly discovered is more rigid. If the IDS is not filed before the issue fee is paid, the application can not be issued, and a continuation would need to be filed.
- Many times a invention can be made that is the same as an existing patent or disclosed in a published document. A search can find such prior art and the inventor can then choose to not file a patent, or can also choose to add some new, novel, non-obvious improvement so that the invention "clears" the prior art.
- A patent examiner will do their own search of existing patents and other document from various sources. The results of this search will be used against an applicant, in the form of a rejection in an Office Action. Finding as much prior art as possible is necessary to see that the examiner has as little to work with as possible.
So it is in the best interests of an inventor to do a good job searching for prior art.
It is possible for an inventor to do their own search. One way is via various search engines on the Internet. However, Internet. Searches may only be able to find prior art up from about the 1980's on. Any prior art previous to this might be needed and could not be searched on the Internet. (See this list from Patent Cafe)
The next best place to search would be one of the Patent and Trademark Depository Libraries (PTDL). These libraries are set up at universities and in major cities and they have excellent search facilities. They also have staff that will help an inventor understand the search tools, but they will not perform a search for you. These libraries have all patents ever issued in bound volumes. They also have automated tools that will search for keywords or concepts and return the patent numbers of matching documents.
It can also be useful for a third party to perform a search at the PTO's office. This search will simulate the searches that the examiners would use. They will be performed at the PTO's search facility and examiners may be consulted by searchers.
But a searcher can only search to the extent they understand your invention. So the best search of all would be performed by an applicant traveling to the PTO, in Washington, DC and performing the search and talking with examiners in person. The third party search can cost about $400 - $600, depending on the firm and the subject matter. A third party search can take 3 to 6 weeks to be returned, although the actual search will take not more than 8 hours. PTO details
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