PATENT BASICS

 

What is a patent?

A patent for an invention is the grant of a property right to the inventor, issued by the United States Patent and Trademark Office (USPTO).

 

What do patents protect?

Patents protect new, useful and non-obvious inventions for a limited time (currently 20 years from the filing date) in exchange for the inventor’s agreement to publicly disclose the invention.

 

What rights do I have in my patent grant?

A patent owner has the right to exclude others from making, using, selling or importing the invention during the patent term. U.S. patent rights are effective only within the United States, U.S. territories, and U.S. possessions. Once the patent is issued, the patentee must enforce the patent without the aid of the USPTO.

 

What rights are not granted in a patent?

A patent owner is granted the right to exclude others from making, using, selling or importing the patented invention. This means that a patent is not a right or guarantee that the patent owner will be able to practice or use the invention. The ability to practice and use the invention is the responsibility of the patent owner.

 

How do I get patent rights?

Unlike trademark and copyright (where basic rights of protection can be established without formal registration), patent rights are only granted after an application is approved by the USPTO.

 

How much does it cost to get a patent?

The costs associated with getting a U.S. patent are made of several components. First, the applicant must pay the required government filing fees for the application to be examined. Second, if assistance is hired the applicant will pay those fees associated with drafting, preparing and filing the application. Third, after the patent is issued, the USPTO requires maintenance fees paid every few years.

 

Getting a patent can be an expensive endeavor. Depending on the complexity of the invention, and the billing rates of your patent attorney or agent, it is not uncommon for a patent application to cost $5,000-$7,000 on the low end, and up to $10,000-$15,000+ for a more complex application.

 

These costs seem quite high!

If you are pursuing a patent the intention should be that the patent will protect a commercially useful invention, and the costs of the patent application will be small compared to the gain received from marketing, selling or licensing the invention. If you do not have good reason to believe that the profit from the invention will exceed the costs of getting the patent, you may want to reconsider patenting the invention. Remember, a patent is not required to bring an invention to market! 

 

Can I file my patent application by myself, without the help of an attorney?

Filing a patent application on your own behalf is called “pro se” filing. This is typically done by inventors in order to save money. If you apply pro se the largest expenditure becomes the filing fees required by the USPTO, rather than patent attorney or patent agent fees. If you are filing pro se, the USPTO website provides helpful information which should be read and considered. 

 

SHOULD I patent my invention?

In general this is a business question rather than a legal question. While a patent attorney can help answer the question “CAN I patent my invention?” (See below), whether you “SHOULD” patent your invention is a business decision. Here are some questions to consider when deciding this:

 

  1. Is there a patent that already exists for the idea? 

  2. How much time and money are you willing to invest in the patent process?  

  3. Do you expect that your commercially useful invention will make money exceeding the costs of the patent application?

  4. Will you sell the invention yourself, license it, or sell it to a distributor?

  5. Have you researched your idea and do you see room for success? What does the market look like?

  6. Do you have a business plan?

  7. Are you willing to defend your patent rights from infringers (meaning take someone to court)?

 

Applying for a patent is expensive and the commercial advantages should be greater than the costs of obtaining and maintaining your patent rights. Only you can decide whether you should pursue a patent. If patenting is not right for you, there may be other less expensive ways to protect your invention such as trade secret.

 

CAN I patent my invention? Can you tell me if my invention is patentable?

An attorney can help guide you as to whether you CAN get a patent. This question relates to whether the invention meets the minimum needs for patentability required by the patent laws, namely is the invention new, useful and non-obvious.

 

To determine whether an invention is patentable, a patentability search can be conducted to help make sure that there are no patented inventions that can be found that are too closely similar to your own invention.  

 

How do you enforce patent rights once you get a patent? What about infringers? 

A patent is a right granted by the government to an inventor to exclude others from making, using, selling or offering for sale the invention throughout the United States.

The USPTO does not help patent holders enforce these patent rights. This means that each inventor must police and enforce their own rights with their own dollar. As an inventor, if you are not interested in policing your invention, defending it, or pursuing infringers you may want to reconsider getting a patent.  

 

What are the requirements for patentability?

To be patented, the invention in question must satisfy five hurdles:

  1. The invention must be a patentable subject matter;

  2. The invention must be new – meaning it is different when compared to prior inventions;

  3. The invention must be useful;

  4. The invention must be non-obvious to a person of ordinary skill in the related art; and

  5. The invention must be described adequately in the application.

 

What types of patent applications are there?

There are seven types of patent applications that can be filed in the U.S.: a provisional patent application, a regular patent application, a divisional patent application, a continuation patent application, a continuation-in-part patent application, an ornamental design patent application, and a plant patent application. In the U.S., like most other countries, an inventor must choose one type of patent application per invention. 

 

Some steps to consider that may help you save money, spend wisely, and protect yourself. Not intended as legal advice.

  1. Keep your invention confidential.

  2. Document your inventive process – keep this confidential.

  3. Create a business plan.

  4. Research the market and research other patents and similar inventions online.

  5. Consider getting an uninterested third-party market feasibility study which will analyze factors such as investment costs, production and profitability.

  6. Beware of invention submission companies which are often scams.

  7. Get your ducks in a row. Meet with a patent attorney to make sure your timing is right. You may not file right away for a patent, but you don’t want to miss the opportunity by waiting too long. An attorney can help you establish a safe timeline to follow.

  8. Check out this website, it provides some great information on the patent process – http://www.ipwatchdog.com/2012/08/04/27128/id=27128/

 

More information?

Please visit THE USPTO WEBSITE for more information.

 

© 2015 by Katherine Sullivan, PLLC