Frequently Asked Questions
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1) What is a patent?
2) What is a patentable invention?
3) Can I get a patent on something simple?
4) What rights does a patent give to me?
5) Would you explain in more depth what a "gadget"
encompasses?
6) What is your minimum fee?
7) Can I get a patent for a new use of a currently
available product?
8) Do I need to get a patent in order to legally sell a
device?
9) Should I file for patent protection in foreign
countries?
10) How long will it take to obtain my patent?
11) How long will my patent protect my
invention?
12) Why should I perform a prior art (or patentability)
search?
13) Can I do a preliminary patentability search myself
and save some money?
14) Do I avoid infringing a patent if I design
something myself without looking at a patent or a commercial product?
15) What is the difference between a design patent, a
utility patent, and a provisional patent application?
16) Since patent protection in the United States may
only be granted to the first inventor, how do I prove that I am the first
inventor?
17) Why should I employ Inventor Services, LLC?
18) How do I contact Inventor Services, LLC?
In simple terms, a patent is a favor granted by the government to one or more inventors. In order to promote the development of technology, the government grants an exclusive right to the inventor(s) in exchange for a complete disclosure of the invention. In the patent document, the inventor discloses all details about the invention, and teaches a reader how to make and use the invention. The bulk of the patent document describes the invention in great detail, referring to numbered elements in Figures if required. Following the description are the claims, which are the legal description of the invention. Claims define the scope of protected material, and are the most important part of the document.
By getting a patent, the inventor gains a government-backed right to prevent others from infringing the granted patent for a specific time period. The public-at-large gains the benefit of advancing technology at a more rapid pace. The general idea is that published inventions (patents) spur development by stimulating innovation. When a patent is published, creative inventors may try to "design around" the claimed invention. For this reason, you must be sure to hire competent patent counsel and obtain a robust patent having effective claims. Of course, after the patent expires, the information it teaches is free for everyone to use.
2) What is a patentable invention?
Patentable inventions encompass a huge scope. It is actually easier to define what is not patentable than to define what is patentable. The patent statutes require an invention to be a non-obvious, novel and useful process, machine, article of manufacture, or composition of matter. Improvements to the foregoing are also patentable. As you can see, this describes a tremendous amount of patentable items.
The scope of patentable material has been limited, by statute, to prevent patenting certain matter. It seems obvious, but you may not patent something you did not invent yourself. You may not patent abstract ideas (such as math algorithms), laws of nature, natural phenomena, or even normally patentable material under certain time constraints. Examples of time constraints include: inventions that have either been kept secret but sold commercially, or disclosed to the public for over one year. If you want patent protection for your invention, you must file an application less than one year from the time you first sell an embodiment of your invention. It would not be fair to keep the invention a secret while using or selling it to gain commercial success, and then gain patent protection for an additional period. If this practice were allowed, the public would be deprived of unrestricted use of the invention for a period in excess of a normal patent life. This practice is not in the public's best interest, and would not promote development of technology. Similarly, you have a one year limit after publishing information about the invention (ie. presenting a paper at a conference). It is your responsibility to seek protection in a timely manner.
3) Can I get a patent on something
simple?
Yes, as long as you satisfy certain statutory requirements. Complexity is not one of the legal requirements for patentability. The patent statutes require that the claimed invention must be new, useful, and nonobvious to one "of ordinary skill in the art" in view of what has already been done. In addition, the patent application must enable one "of ordinary skill in the art" to make and use the claimed invention, and must set forth the "best mode of carrying out the invention" known to the inventor at the time of making the invention.
4) What rights does a patent give to me?
A patent gives you the right to prevent others from making, using, or selling your invention. This right exists for the life of your patent, (currently 20 years from the filing date of the application, plus a possible time extension to account for excessive delays by the USPTO during prosecution) as long as you pay the periodic fees required to maintain your patent. This gives an inventor incredible power, as long as she/he can finance the legal battles to enforce the patent. A patent may be the single best protection available for small inventors and entrepreneurs.
A US patent can prevent the importation to the United States of infringing devices made overseas. The US patent gives the inventor the right to prevent sale of the infringing devices in the United States.
Rights granted to an inventor may be limited in certain circumstances. For instance, patenting an improvement to an existing machine may not give the inventor the right to sell the improved machine. The original machine may still be protected by a valid patent. In this circumstance, the original patented technology may be licensed from the original inventor, or the second inventor must wait for the original patent to lapse before selling the improved invention.
5) Would you explain in more depth what a
"gadget" encompasses?
For purposes of pricing of our work, "gadgets" actually cover many patent applications. Most inventions are improvements of existing machines, articles of manufacture, or processes/methods. If you think you can explain your invention by referring to a few Figures which are not too complex, it is quite likely going to be regarded as a "gadget" invention in scope. If you have invented a complex machine, with multiple assemblies, and you know it will require a lot of detail to explain to someone in your field; you may be sure it is not likely a "gadget". One test to try might be: If you can verbally explain all the key features of your invention in about five breaths, it will almost certainly be a "gadget". If you are still talking after five minutes, it is not a "gadget".
It is difficult to set a minimum number, because so many variables are involved. That is precisely why we offer a free, firm fixed cost, estimate for each project. Inventors may minimize their costs, for example, by providing invention disclosures having concise and complete information describing their invention. Consider this: Inventor Services' estimate is based on the amount of time we will spend on each project. The "typical" fees presented elsewhere on this web site are based on more complicated projects from our work history. Patent applications and Office Actions requiring less effort will be less costly.
7) Can I get a patent for a new use of a
currently available product?
Not for the product, itself, although there may be ways to protect your invention. In general, if you have discovered a new use for an old product, you cannot be granted a utility patent on that product simply because of your newly discovered use. One exception to this might ocurr if your new use required additional structure or modifications to the old product. Any such modifications or additional structure would comprise an improvement, which would then potentially be patentable. A second exeption might ocurr in the case where you develop a new "method" or procedure for doing something. Your new method may use currently available products or technology in a novel and non-obvious approach to solving a problem. In such a case, you may be able to protect your new method with a patent. Also, a new assembly formed from old products may be patentable, although the USPTO is currently vigorously rejecting claims to the latter as being "obvious". There is important strategy that sometimes may be employed to gain patent protection, despite an initial finding on the part of the USPTO that the invention is "obvious". It would be wise to ask your patent counsel about your particular situation.
8) Do I need to get a patent in order to
legally sell a device?
The short answer is no. You do not necesarily need a patent to legally sell a device. A patent is primarily useful to give you protection from your competition. A patent gives its owner the legal right to stop others from making, using, or selling the goods or processes covered by the patent for a fixed period of time. There are many situations in which you may freely sell a product without protecting the product by a patent. For example, any patents protecting the device you desire to sell may have expired. In another situation, suppose you are denied a patent on your desired product by the USPTO. You may still sell your product as long as you do not infringe any other unexpired patents. In this case you will have to achieve commercial success on some other basis than by the exclusionary rights granted an inventor upon receiving a patent.
9) Should I file for patent protection in
foreign countries?
A US patent will only give an inventor the right to exclude others from making, using, or selling the invention in the United States. US patents are not enforceable in foreign countries; you must patent your invention in each country where protection is desired. Fortunately, many countries are members of the Patent Cooperation Treaty (PCT). The PCT enables a US applicant to file one application in the english language, and "designate" as many member countries as desired. If your invention will have commercial success in other countries, and you wish to secure your right to your invention in those countries, you must file patent applications in each respective country for that protection.
Certain foreign countries have different patent rules than in the United States. If you think you may need foreign patent protection, it is recommended that you discuss the facts of your circumstances with your patent counsel. One difference that may be encountered is that some foreign countries require absolute novelty to gain a patent. This means, among other things, that you cannot file for patent protection in that country after a commercial sale, or public disclosure, of your invention. Since the rules are complex and variable between countries, it is advisable to have your counsel compare your situation with the rules of each country in which you may desire patent protection.
The cost of foreign filing must certainly be considered. We are required to use associates in foreign countries during the National stage of PCT prosecution, and pass their fees on as straight costs to our clients. The cost to obtain a foreign patent varies widely from country to country, and can only be estimated on a case-by-case basis. Due to the variability of associate's fees, we do not offer fixed price estimates subsequent to the initial PCT filing. An inventor must be prepared to budget an additional $4,000 to perhaps $15,000 or so per country in which patent protection is desired. These amounts are the costs to prosecute a patent through issue. Even before the (potentially many) patents issue, many countries have annual maintenance fees. With an associate's fee, these can add up to a significant cash flow. Generally, both foreign and domestic patent protection should be obtained only if it is required to protect your business, and the profit from your business is commensurate with the costs.
10) How long will it take to obtain my
patent?
There is no hard and fast rule, but in general, it may take about 2 to 3 years for a utility patent. The United States Patent and Trademark Office (USPTO) has a goal to either allow a utility patent, or reject the application in a Final Action, within two years from its filing date. Additional life may be added to a utility patent that issues after expiration of the USPTO's desired 2-year maximum pendency.
The quickest allowance for a utility patent from my practice is 9 months and one week. The fastest-issuing design patent in my practice took just less than 2 months (wow! it's still shockingly fast and unexpected!). As of the middle of 2010, my longest-pending utility patent issued seven years and three weeks after its filing date in the US.
On average in my practice, it is presently taking a little over a year after filing the application before receiving the first response (Office Action) from the USPTO. Applications generally are "rejected" on some sort of grounds, requiring a response to the USPTO Office Action. The response may not resolve all issues presented by the USPTO, and an additional response may be required. Each side (the USPTO examiner and your patent counsel) requires some time to marshal the facts and organize arguments. You can expedite part of the process by promptly providing requested information to your patent counsel.
11) How long will my patent protect my
invention?
The life of a design patent is 14 years from the date it is issued by the USPTO. The life of a utility patent is currently 20 years from its filing date (and potentially more if there was "delay" on the part of the USPTO), so long as all maintenance fees are properly paid. The filing date is the date that the application for a patent is received by the Patent and Trademark Office. If priority is claimed to previously filed applications, the patent life may be shorter; perhaps 20 years from the priority date established by the priority documents. The life of a provisional patent application (PPA) is 1-year, but a PPA does not provide direct protection from copiers.
Certain circumstances can extend patent protection. Sometimes,
time that an application is pending in excess of two years may be added to its
20-year life. In such case, the extra term is noted on the face of the
published patent. Also, a provisional application may be filed, for
instance, to obtain an immediate filing date in a competitive circumstance
where inventors are racing to complete an invention. This provisional
application can be claimed for priority purposes, up to one year from its
filing date, and the patent life will run 20 years from the time of conversion
to a formal patent application. There are risks and additional expense
associated with filing a provisional application. It is recommended that
you discuss your options and best strategy with your patent counsel.
12) Why should I perform a prior art (or
patentability) search?
It is prudent to minimize your risk of increased costs without realizing any benefit. It is going to cost you a lot of money to get a patent. Let's assume for a moment that you are granted a patent, and enforce it against an infringer. If the infringer can find an obscure document that shows the invention had been made by someone else in this country, but before you, your patent will be voided. In this case, you have spent money to both get and enforce your patent, and it is all wasted. It is very much in your best interest to do a thorough search, or have one done for you.
Another reason to do a diligent search is to discover the potential patentable scope of your invention. You may be surprised to find out that there is a lot of "prior art" in the area of your invention. Your patent counsel must draft claims to avoid this prior art, but still attempt to capture the full available scope of your invention.
13) Can I do a preliminary patentability
search myself and save some money?
Yes, you easily can do a search yourself. As with all searches, the more energy you put into it, the more meaningful the results. However, there is no guarantee that you (or even professional searchers) will find all the "prior art" that may defeat your obtaining a patent. A good search will include the entire patent history of at least the United States. It would be good if you could also search through the Journals that publish articles related to your invention. Remember, an article by someone other than you that exactly describes your invention can be an absolute bar to your obtaining a United States patent, unless you can prove you are the first inventor. An enabling article (teaching how to make and use the invention) authored by you, more than one year before your application is filed, is also a bar. Articles describing material that makes your invention "obvious" may also prevent you from obtaining a patent.
Since you are looking at this page, it is a demonstrated fact that you have access to the internet. The internet is a rich searching resource. For instance, at the time this was written, you have access through the IBM online patent database to most US utility patents filed since 1971. The USPTO online database currently includes the text of most patents since 1790 when the first US patent was issued. The USPTO database also has images for most patents from 1976 and is updated weekly to include newly issued patents. A selected number of links to patent searching resources on the world wide web are provided for your use on our links page.
The Merriott Library, located on campus at the University of Utah, is one of the Patent and Trademark Deposit Libraries. The Merriott Library collection includes complete copies of U.S. patents on microfilm from 1964, and summary information for every U.S. patent from 1790. The collection is located on the first floor of the library, and a librarian may be able to assist you in your search.
14) Do I avoid infringing a patent if I design
something myself without looking at a patent or a commercial product?
Absolutely not! You can infringe a patent without ever seeing it. Reinventing the wheel does not give you the right to make, use, or sell the wheel. If an unexpired patent "reads on" your product, you may be pursued by the patent owner for damages in a court of law. Accused patent infringers are generally limited to arguing either that their activities are not within the scope of the patent, or that the patent is not valid. A patent search is often therefore advisable, even if you have no interest in patenting the product you desire to make, use, or sell.
15) What is the difference between a design
patent, a utility patent, and a provisional patent application?
A design patent protects the form, literally the ornamental design or appearance, of a device. A utility patent protects the structure of the device, and/or the method/process or software itself, and also its "equivalents". Of the two, a utility patent offers much more broad protection that is generally more difficult to avoid by a potential infringer. Also, a design patent has a 14 year life and does not require payment of maintenance fees. A utility patent has a 20 year life, and requires payment of periodic maintenance fees to remain in effect. You may sometimes obtain both types of patent protection for the same invention. It is recommended that you consult with your patent counsel to determine your most efficient and cost-effective protection.
A provisional patent application (PPA) is a document that fully enables your invention (discloses all details required for someone to practice your invention "without undue experimentation"). It is not examined by the USPTO, and does not need to meet any particular format requirements. A PPA has a 1-year life, after which it simply expires. NO actual protection from copiers will EVER accrue from a PPA - a utility or design application must be filed during the 1-year life of the PPA to claim priority to the PPA's filing date. Priority to an earlier date may be important to avoid "prior art", and to gain allowance of a patent.
16) Since patent protection in the United
States may only be granted to the first inventor, how do I prove that I am the
first inventor?
It is uncommon to have satisfactory proof of first inventorship. Mailing a disclosure to yourself is a waste of time. An unopened First Class mail envelope does not constitute adequate proof of anything, let alone a date of possession of certain information, because the contents of the envelope can so easily be replaced with false documentation. Satisfactory proof must be of a caliber suitable for entry as evidence in a court of law. Such proof includes permanently bound notebooks (NOT a 3-ring binder) containing periodic entries made in indelible ink without erasures; properly witnessed by others on a regular basis; and having no blank sections. Your best option may be to file some sort of patent application before any other inventor, and force the other party to prove first inventorship.
The USPTO has abandoned the patent disclosure program, and no longer provides a resource to document an intentor's invention for a period of two years. Perhaps receiving, filing, and maintaining the documentation was too costly for the government compared to any perceived benefit to inventors. Currently, the lowest-cost option to "stake a claim" to an invention is to file a provisional patent application (PPA), which will provide a 1-year window in which to file domestic and foreign patent aplications. An inventor may file a PPA on their own, although a professional patent representative is recommended. The PPA must fully enable the invention, or it is a waste of money.
Note: If you take a break from working on, perfecting, and patenting your invention, a second inventor may successfully defend his/her right to patent protection (for the same invention) in your place.
17) Why should I employ Inventor
Services?
We supply high quality patent protection services at an extremely low price. Our goal is to create the best, most robust, patent encompassing all available protection on your behalf. You may even be surprised by the scope of claims for variations of your invention. Considerable effort is put into writing claims that cannot be "designed around", so that any resulting patent may give you commercial protection.
We will provide a free, firm fixed price, quote for the costs in your particular case. The estimated amount received as a retainer will not be exceded, regardless of the amount of effort required to complete the task. However, we will refund any portion in excess of a reasonable fee, in the event that the scope of work is less than anticipated.
Clients are encouraged to maintain a communication channel. We can answer your questions in plain comprehensible terms, using "real" conversational english.
18) How do I contact Inventor Services?
By telephone: (801) 274-8851
Toll Free: (877) 780-7040
(Mountain Time Zone)
By FAX: (801) 272-1127
By US Postal Mail:
Inventor Services, LLC
3601 East Hermes Drive
Salt Lake City, Utah 84124 USA
By e-mail: Inventor_Info@diviti.com