A GUIDE TO PATENTS
This guide is intended to explain the “basics” of obtaining a federal patent with the United States Patent and Trademark Office. Although Miller, Turetsky, Rule & McLennan practices intellectual property law, we limit our practice to trademark, copyrights, trade secrets, confidentiality, non disclosure and non-compete agreements. Should your case truly involve registration of a patent, I will refer you to a reputable patent attorney who will assist you with obtaining a patent registration.
WHAT IS A PATENT?
A patent is a property right granted by the Government of the United States of America to an inventor “to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States” for a limited time in exchange for public disclosure of the invention when the patent is granted.
WHAT CAN BE PATENTED?
Utility patents are provided for a new, nonobvious and useful:
- Article of manufacture
- Composition of matter
- Improvement of any of the above
In addition to utility patents, encompassing one of the categories above, patent protection is available for (1) ornamental design of an article of manufacture or (2) asexually reproduced plant varieties by design and plant patents.
WHAT CANNOT BE PATENTED?
- Laws of nature
- Physical phenomena
- Abstract ideas
- Literary, dramatic, musical, and artistic works (these can be Copyright protected).
Inventions which are:
- Not useful (such as perpetual motion machines); or
- Offensive to public morality
Inventions must also be:
- Adequately described or enabled (for one of ordinary skill in the art to make and use the invention)
- Claimed by the inventor in clear and definite terms.
Now that you know the basics about patents, the process to secret a patent usually follows this process:
First: Look to see whether your invention qualifies.
Second: Learn the basics of the patenting process.
Third: Obtain a search of all previous public disclosures including, but not limited to previously patented inventions in the U.S. (prior art) should be conducted to determine if your invention has been publicly disclosed and thus is not patentable. A search of foreign patents and printed publications should also be conducted. While a search of the prior art before the filing of an application is not required, it is advisable to do so. The registered attorney I refer you to will assist you in performing this patentability search. Note: You should not assume that your invention has not been patented even if you find no evidence of it being publicly disclosed. It’s important to remember that a thorough examination at the USPTO may uncover U.S. and foreign patents as well as non‑patent literature.
THINGS TO REMEMBER DURING THE PATENT PROCESS
- Learn About the Patent Process. When you understand the basics of how to get a patent, you will know when invention marketers are making promises they, or the patent system, can’t deliver.
- Be Realistic. Not every invention is patentable. Be wary of any developer willing to promote virtually any invention.
- Protect Your Rights. DO NOT disclose your invention to a developer over the phone before first signing a confidentiality agreement. You could forfeit valuable patent rights.
- Track Your Invention’s Progress. If you decide to use an invention development organization, deal directly with the agent or patent attorney who will be handling your patent application.
- Don’t Get Discouraged! The patent process can be very complicated, so don=t give up.
THE TWO TYPES OF PATENT APPLICATIONS
A provisional application is a quick and inexpensive way for inventors to establish a filing date for their invention. A provisional application is automatically abandoned 12 months after its filing date and is not examined by a patent examiner. If you initially file a provisional application, you must file a corresponding non provisional application during the 12-month pendency period of the provisional application in order to benefit from the earlier provisional application filing.
Non Provisions Application:
A non provisional application is examined by a patent examiner and may be issued as a patent if all the requirements for patentability are met. It is interesting to note that most of the applications filed with the USPTO are non provisional applications for utility patents.
WHAT HAPPENS AFTER YOUR APPLICATION IS FILED?
After an application is filed, the USPTO will conduct a search as part of the official examination process. This is why it is important for you to conduct a thorough patent search before filing your application. This way, you know what is already out there.
TYPES OF FEES TO EXPECT
Fees vary depending on the type of patent application you submit. Fees may also vary according to the way you “claim” your invention.
There are three basic fees for utility patents:
- The filing fee, which is non‑refundable whether or not a patent is granted. (This is the cost to have your invention “examined” by the US Patent and Trademark Office ‑ remember, you may or may not get a patent!)
- The issue fee (you pay this only if your application is allowed).
- Maintenance fees (paid at 3 1/2, 7 1/2, and 11 1/2 years after your patent is granted ‑ these fees “maintain” your legal protection).
Typical fees listed below are only intended to give you a “ballpark” estimate; they do not reflect all the possible fees or variations in filing and patenting your invention. In addition, these fees are subject to change.
Typical filing fees for an Inventor when the application is filed are as follows:
- Filing a provisional application. (More information) $100
- Filing a non‑provisional application. (More information)
- Approximately $150*
- Issue fee Approximately $650
- Due at 3 1/2 years approximately $450
- Due at 7 1/2 years approximately $1150
- Due at 11 1/2 years approximately $1900
Keep in mind that these fees do not include the search fee, examination fee and attorney or design fee.
AFTER A PATENT IS OBTAINED
Invention development companies are private and public research companies that help inventors develop, patent, and promote their ideas so they can be commercially licensed or sold.
If you would like to sell your patent, the USPTO can assist you with that. Upon request and payment of a fee for this service, the U.S. Patent and Trademark Office will publish in the Official Gazette of the United States Patent and Trademark Office; Patents, a notice of the availability of a patent for license or sale.
In the event you are interested in proceeding, please contact me and let me know. I will speak with the patent attorney and have them contact you.
Should you have any questions about any of this, please feel free to contact us.