What is a Patent and how do I obtain one?

I. REASONS FOR OBTAINING A PATENT

Patents are often the best means of protecting the assets of a business. Obtaining a patent (or in some cases even applying for a patent) can be advantageous. This is especially true in a competitive industry and when a considerable investment is made to provide tooling and expertise to manufacture a product. Patents deter competitors from taking advantage of another person's efforts. For a limited time the patent owner should be able to enjoy the benefit from the invention. Patents are also useful in business for bargaining position. Like other forms of property, patents can be bought, sold, leased (licensed), and given away.

II. DEFINITION OF A PATENT

A patent is a document which fully discloses an invention and establishes the rights of an inventor. The patent gives the owner the right to exclude others from making, using, or selling the invention for a limited time, i.e., twenty (20) years. Patentable subject matter is defined as a process, a machine, an article of manufacture, or a composition of matter.

III. INVENTORSHIP

U.S. patents are granted only to the true inventor. The correct listing of inventors is very important for the patent application. Patents have been invalidated for failure to name the proper inventors. Inventorship occurs when the inventor is the first to conceive the invention. "Conception" is defined as the information in the mind(s) of the inventor(s), of a definite and permanent idea of the complete and operative invention. One cannot become an inventor by suggesting a desired end or result, without suggesting a way to accomplish that result. One also cannot become an inventor by merely following the instructions of the person or persons who conceive the solution. If two inventors independently invent the same invention, the U.S. patent will belong to the person who was the first to conceive the invention as long as the inventor is reasonably diligent in reducing the invention to practice and does not suppress, i.e., hide, the invention. This is true even if the second inventor was the first to reduce the invention to practice or file a patent application. A joint invention occurs when two or more persons, working together, each contributes to the "conception" of the solution to a problem that constitutes the invention.

IV. PROVISIONAL APPLICATION

A Provisional Patent application requires the filing of only a specification made in the name of the inventors along with a minor filing fee. The provisional application establishes a date of priority for the invention. A provisional application cannot mature into a patent, and it is not examined and cannot claim priority of an earlier application. The U.S. Patent and Trademark Office keep a provisional application in confidence. The provisional application will automatically go abandoned by law one year after filing. The filing of a provisional application provides up to twelve months to further develop the invention, determine marketability, acquire funding or capitol, seek licensing or seek manufacturing. A regular U.S. Patent Application may be filed and relate back to the priority date of the provisional application.

V. OBTAINING A PATENT

Obtaining a patent involves following an established procedure prescribed by the United States Patent and Trademark Office (PTO) that takes approximately eighteen months to two years. In order to understand this procedure, it is important to be aware of the requirements that must be satisfied. The most important requirement is that the invention must be new and nonobvious. In other words, the invention cannot have been disclosed in the prior art (issued patents, journals articles, etc.), or have been obvious to create by combining prior inventions or their disclosures.

VI. RECORDS OF INVENTION

The inventor should make careful records of the invention, including sketches, drawings, and written descriptions. At least two witnesses who understand the invention should sign and date the disclosure papers as early as possible. All records should be carefully guarded.

VII. LOSS OF RIGHTS

Patent rights may be lost by a sale, offer for sale or a public disclosure of the invention more than one year before the patent application is filed. Sometimes even a minor public use or even a "secret" use may constitute public disclosure.

VIII. PATENT SEARCH

To determine if an invention is new and non-obvious, a search should be conducted in the PTO to locate all patents and articles that are similar to the subject invention. Although not infallible, the search is a good and relatively inexpensive way to determine the prospect of obtaining a patent on the invention. If we find that the invention is old, we will recommend that a patent application not be filed because the PTO would probably reject such an application. On the other hand, if we do not find sufficiently similar references in our search, we would recommend that a patent application be filed on the invention.

Our opinion is based on a search conducted of all relevant prior art in the PTO. However, the search records may be incomplete, and as many as 20% of the patents in a particular category have been found to be missing. Thus, important references, which may anticipate the novel features of the invention, may not be found in a search of the PTO records. Such relevant references that are missing from the public records may be found when the official search is conducted. In our experience, however, this situation is uncommon, and there is usually a good likelihood of obtaining a patent if, after we have examined the prior art, we recommend filing a patent application. Patent applications are maintained as confidential documents within the PTO and therefore are not searched. Sometimes when the patent issues (i.e., Submarine Patents) it may anticipate the normal features of the invention. In this instance, the new application is defeated even though at the time of filing, no defeating references were discovered.

IX. TO GET STARTED

In order to get started, we need to have at least a general idea of the invention and the inventor's concept of its novelty. We find a written description plus drawings and/or photographs to be most helpful. It is also helpful to us if the inventor notifies us of any similar-type inventions out on the market today. Referring us to magazine articles, advertisements, etc can do this. A search can generally be completed within one month.

X. PATENT APPLICATION

A patent application is a detailed disclosure of the invention showing precisely how its structure or process produces the desired advantages over the prior art. Our fees for preparing such a utility patent application generally range from $3,500 to $8,000, or more, depending upon the intricacy of the invention. Additionally, the PTO requires formal drawings to accompany the application, showing every relevant feature of the invention. Drawings usually cost about $100.00 per page. Once the application is prepared, the inventor reviews it to see that it conforms to his/her impression of the scope and detail of the invention. When satisfied, the inventor must execute a declaration establishing that he/she is the true inventor.

Design patent applications are different from utility patent application. A design patent protects the ornamental features of the invention, not the functional aspects. Thus, with a design patent, a competitor can still use the basic concept or functional features of your idea so long as the competitor does not use features that look substantially the same as the patented design. A utility patent clearly has broader protection as the particular ornamental features of the invention are not the issue, rather the functional aspects of the invention can be protected. The cost for a design patent primarily depends upon the cost needed to prepare quality drawings. Since the drawings of the design patent are basically the entire substance of the patent, it is important to have quality drawings that accurately describe or show the features of the invention.

XI. FILING IN THE PTO

Once the application is executed, it is filed. The PTO charges a $1080 filing fee to process the application. If the inventor qualifies under "Small Entity Status", the government fees are reduced by one-half.

XII. SMALL ENTITY STATUS

To qualify for small entity status, you must be an independent inventor, a small business concern, or a non-profit organization. For filing in the United States, a small business concern is a company whose number of employees, including those of its affiliates, does not exceed 500 persons. The definition of a small business concern varies for other countries.

XIII. PROSECUTION IN THE PTO

After the application is filed, the PTO conducts its own search of the prior art and requires us to make legal arguments distinguishing the invention from the references found by the PTO. The first of these responses is usually due six months after the application is filed. A second response may be required at a later time. The cost for prosecuting the application through the PTO after the initial filing ranges from $500 to $4,000, or more, depending on the complexity of the application and the requirements or arguments of the examiner.

XIV. ISSUANCE OF PATENT

If the PTO decides that the application should be granted, another government fee (an Issue Fee) is charged. The issue fee is typically $1,440, reduced by one-half for “Small Entity Status”. Finally, to keep the patent in force after the patent has issued, maintenance fees must be paid after 3½ years, 7½ years and 11½ years. Thus, the total cost for maintenance fees is estimated to be $7,200, also reduced by one-half for "Small Entity Status". No maintenance fee is required for a design patent, which last for 14 years from the date of issuance.

XV. OTHER POINTS TO CONSIDER

If someone makes, uses, offers to sell, or sells the patented invention, within the United States or imports into the United States, without the patent owner's permission, the patent owner must bear the cost of suing the infringer of the patent in court. Infringement suits are expensive and time-consuming. Additionally, in such lawsuit the validity of the patent may be attacked and the court may declare the patent to be invalid for a variety of reasons. These risks are stated not for the purpose of discouraging anyone from applying for a patent, but to make the inventor aware that there is no guarantee that the financial investment made in applying for a patent will result in a worthy return. Despite the uncertainties, over 100,000 patent applications are filed every year.

Tips & Information

The information provided on this site and in any associated links are intended for general guidance only. Because professional legal advice must always be specific to the facts and circumstances of a particular client, the information on this site and any associated links cannot and should not be relied upon as legal advice. ©2000,2004,2008 Anthony J. Bourget. All rights reserved.