What is a patent?
A patent is a property right from the U.S. Government that essentially confers a 20-year monopoly to
the owner. A patent owner can exclude any other person or
company from the manufacture, use, sale, or import of infringing technology.
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What is the standard for obtaining a patent?
Inventors must prove that they have a new, useful, and
nonobvious invention to receive a patent. An inventor must
provide an "enabling" description of the invention, meaning
that the inventor must thoroughly describe and teach how the
invention works.
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What can be patented?
Patents can be granted for articles of manufacture, designs
on articles of manufacture, living organisms, plants,
chemical compositions, nonobvious methods of using existing
inventions, and on methods of doing business.
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What types of patents are available?
Utility
patents are available for articles of manufacture and
protect function. These patents cover processes, machines,
manufactured items, and compositions of matter. The utility
patents last 20 years from the filing date.
Design
patents protect the overall appearance of an
invention and are for "ornamental" designs for articles of
manufacture. A design patent lasts 14 years from the date it
issues. There may be overlap between design patent
protection, copyright and trade dress protections.
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What is required to be a Patent Attorney?
To practice as a U.S. Patent Attorney, a practitioner must
have a scientific educational background and pass both a
federal and a state bar exam. In addition, to be Patent
Attorney, the practitioner must have a law degree from an
accredited law school, pass a state ethics examination,
maintain state continuing legal education training, and pass
federal FBI and state background checks.
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What is the usefulness of a patent search?
A patent search and patentability
opinion can help an inventor decide whether his or her
invention is worth filing for a patent. The patent process
can be expensive, therefore, it makes sense to invest the
time to discover whether the invention has been made before
and whether the scope of protection available is worthwhile.
Many invention promotion firms suggest that they perform a
search, but beware that a true search should be objective,
not merely aimed at bolstering your ego and taking your
money. The search should provide the patents located and not
merely provide a conclusory statement that patent protection
is available. Patent searches are best performed by patent
attorneys or agents who handle the matters directly or who
contract locals at the PTO Beware of searchers who guaranty
results. There are more than 6,000,000 patents, so no search
can predict 100% accuracy, but a search should endeavor to
identify prior patents that would either prevent you from
getting a patent or unduly narrow the scope of available
protection. In addition to helping to determine whether an
invention is patentable, a good search can help your patent
attorney in crafting claims, and describing why your
invention is an improvement over the prior technologies.
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When should I file a patent? Do I have to
file a patent application before I sell or use my invention
to protect it?
In the United States, you have a 12-month grace period to
file for a patent application after the invention is made
known in a publication, used in public, or offered for sale.
Failing to file an application inside this grace period will
cause a loss of any rights to a patent. However, many
foreign countries do not have such grace periods. Therefore,
if foreign filings are expected, to preserve those rights, a
U.S. patent application should be filed prior to public use
or disclosure of the invention.
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Are patents public information while pending?
Patents are not public information, at least until 18 months
from the effective filing date, at which point the Patent
Office publishes the applications. Patent applications used
to be confidential until they issued, however, the American
Inventors Protection Act of 1999 implemented the 18-month
publication rule for most utility applications filed after
November 29, 2000. This change brought American Patent Law
in harmony with many other foreign patent laws that require
this publication. There is a way to opt out of the
publication of the invention, but only if the invention will
not be the subject of an application in a foreign country
that requires publication 18 months after filing. Because of
publication, an applicant can now assert provisional rights
to obtain a reasonable royalty from a 3rd person after
publication, provided notice is given the 3rd party, and
provided a patent actually issues from the application with
a substantially identical claim. Therefore, there is
actually a new remedy for inventors for infringement before
a patent actually issues.
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How do people earn money from patents?
If you have a marketable invention and a marketable patent,
there are a variety of ways that a patent can be used to
generate revenues. As the exclusive holder of the
technology, a patent owner can exclusively manufacture, sell
and use the technology. Some patent holders sell products
directly to the public. Some patent holders manufacture
their patented product and send to others to handle sales
and distribution. Other patent holders may choose to license
the patent for a royalty, which may be per unit, or based on
a percentage. Some patent holders may sell the patent
application outright based on the patent's fair market
value.
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How does the patent process work?
After a patent application is filed, your patent attorney
will receive an "office action" typically between 8-14
months after filing of the application. A patent examiner
assigned to your application will issue an office action.
The office action will usually have rejections and/or
objections for reasons of either form or substance and it is
the job of the patent attorney to make appropriate arguments
or make amendments to get the broadest protection available
to the inventor. If the rejections and/or objections are
overcome, the inventor will receive a "Notice of Allowance"
setting forth the scope of allowable protection on the
invention. The scope of protection for the patent is set
forth in the patent claims, which are interpreted by courts
according to how the terms and claims are described in the
patent description, or "specification."
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How long does a patent last?
A utility patent lasts 20 years from the filing date. A
design patent lasts 14 years from issuance.
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Should I file a provisional patent
application?
Maybe. There are strategic reasons for using a provisional
application. But, be careful with provisional applications.
They are surrounded by vast amounts of misinformation,
despite that they have been popular for several years. A
provisional application lets an inventor
file a disclosure of an invention, without claims. The
provisional application is not evaluated for patentability,
it does not have claims (which largely define an invention),
is not examined, and will not turn into a patent unless a
regular utility application is filed within 12 months of the
provisional filing date. The idea was originally to permit
inventors time to evaluate marketability of a patent before
dumping loads of money into a patent process. But, is it
useful for individual inventors? Not always. In fact, for
many individual inventors, some practitioners believe that
the application may inflate the cost of a patent and
unnecessarily delay the patent process. Contrary to common
myth, a provisional patent application should have a
thorough description of the invention—the same detailed
"enabling" description that is required of a regular patent
application. A common misconception is that a half-hearted
description will suffice and will still protect the
inventor's idea for a fraction of the cost. This is a major
misconception, which can harm inventors. Any description
that is not provided in the provisional application will not
have the benefit of the original provisional filing
date—meaning that you may not have disclosed a patentable
invention, leaving open the possibility that someone else
will. The truth is that a provisional application should be
just as thorough as a full utility application. Given this
fact, why not add the claims, while the invention is fresh
on the mind of the attorney or agent drafting the
disclosure? Also, adding claims should not cost much more.
On the other hand, a patent attorney who has to
re-familiarize with the technology 12 full months after
filing the original provisional application will probably
spend more time and money relearning the technology to draft
good claims. Individual inventors should be hesitant to
demand a provisional application without understanding the
costs and risks involved.
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What rights come with filing a disclosure
with the Patent Office?
The Patent Office has a document disclosure program that
helps inventor's document their dates of invention by filing
disclosure documents with the patent office. The Patent
Office will accept and retain a disclosure for two years,
after which time it is destroyed, unless it is referred to
in a related patent application filed within the two-year
period. This can be used in disputes involving the dates of
invention. However, the device does not create any patent
rights, cannot be enforced like a patent, and does not
establish any form of a grace period. An inventor would make
a big mistake in thinking this device could be used in place
of a patent application. Also, this device is useful, but
not necessary to prove a date of invention. There are other
good practices that inventors can follow to document dates
of inventions including keeping a detailed, dated notebook
with notarized dates of the concepts described.
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What if someone helps me build my invention?
Are they an Inventor?
This is a common question and a common problem for
individual inventors who have the invention complete but do
not know exactly how to build the prototype. To be an
"inventor" for the patent office, a person must materially
contribute to at least one of the claims of the patent. A
person who merely helps an inventor reduce his or her
invention to practice does not become an inventor. This is a
fact sensitive area of patent law that spawns many disputes.
When an invention is perceived as valuable, everyone
naturally wants some part of the action. The best approach
to avoiding conflicts of this nature is to avoid them
early—preempt them through clear documents. If an inventor
is going to hire an engineer or a person with technical
expertise to help build the invention—or "reduce the
invention to practice" without being an inventor, he or she
should have a qualified attorney draft a contract setting
forth confidentiality and nondisclosure clauses, as well as
a recitation that the services are merely to reduce the
invention to practice and not to invent. To the extent any
inventing should occur, precautionary assignments of
inventive rights should be considered. This is not a place
to cut costs. The best invention in the world may never get
off the ground if it's bogged down in legal proceedings
concerning ownership and inventorship. Have an attorney help
you with these important documents early.
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Are there any ways I can protect my
invention while the patent is pending?
Yes. Inventors can protect ideas while an application is
pending by using a confidentiality and nondisclosure
agreement. There are some public forms available, but the
most conservative approach would be to have an attorney make
sure a nondisclosure agreement suits your needs and your
particular invention.
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