Please keep in mind that the information on this Patent FAQs page is for general information only. There are many nuances, considerations, and exceptions in patent law. For answers for your specific situation, please contact a registered patent attorney.
How do I protect my idea? How do I patent my idea?
A mere idea cannot be protected by patents, trademarks, or copyrights. If you disclose your idea to someone else without some form of confidentiality, contract, or other operation of law, then that person (and anyone else) can use your idea without your consent.
So for what exactly are you getting protection, if not an idea? Your idea is only the beginning step in the process of protecting your proprietary information. A particular expression of your idea might be protected by copyright. A patent may be available for an invention that is new, non-obvious and useful, or for the new original ornamental design of an invention. A trademark (i.e., brand name) identifies your product or service and distinguishes it from someone else’s product or service.
I have an invention – now what?
Congratulations, inventor! One of the first things to do is to not disclose or sell the invention to anyone else until you decide on what to do. There are deadlines that must be strictly followed if you want to try to obtain patent protection either in the United States or in other countries. Many of these deadlines can be triggered by some of your own activities. You may contact a patent attorney at any step in this process for guidance about your specific situation, but it is preferable to contact a patent attorney as soon as possible.
The next thing to do is to decide what you would ideally like to accomplish with your invention. Some initial questions: Do you plan to use the invention for your own business? Do you want to sell or license the invention to someone else, and have someone else manufacture and/or sell the invention? Does your invention already have a lot of competition? Would you still sell your invention if you did not ultimately obtain patent protection for it?
You should write down a detailed description of your invention. The information should include how you make and use the invention, and the advantages of the invention that distinguishes it from what may already be disclosed or available to the public. What are the most important features of your invention? How could someone else create a knock-off or an alternative version of your invention? All of this information is important for your patent attorney to have so that she (or he) can advise you on your options.
Before filing a patent application, it is often beneficial to have your patent attorney conduct a patent search and patentability analysis to check into the patentability of your invention. If you still want to continue with the patent process, your patent attorney will prepare and file the patent application at U.S. Patent and Trademark Office.
While you are waiting for the Patent Office to complete the examination process (called “prosecution”), you may consider finding investors, manufacturers, distributors, or other vendors to assist you in commercializing your invention. Until you have a patent granted by the Patent Office, you should consider having third parties sign a non-disclosure agreement and having them maintain confidentiality about the details of the invention.
Do I need a prototype before I file a patent application?
No. Currently, a prototype is not required before you file a utility patent application. Rather than a prototype, your utility patent application must have a detailed written description on how you make and use the invention. Depending on the invention, you will also need formal patent drawings. Your applications may also include alternatives (or embodiments) describing different aspects of the invention. Your design patent application must have formal patent drawings.
Do I need formal patent drawings before I speak with my patent attorney?
Generally, no. Many inventors provide hand-drawn sketches or informal drawings to their patent attorney. Patent attorney Rashauna Norment
has worked with various patent illustrators around the United States to create formal patent drawings for submission with your patent application(s).
Does the “Poor Man’s Patent” give me any patent protection?
Does the patent system United States still follow the first-to-invent system?
No. According to the Leahy-Smith America Invents Act (the “AIA”), the patent system in the United States is now a first-inventor-to-file system.
This basically means that if Inventor A invents X in May 2013 and Inventor B invents X in August 2013, but Inventor B files a patent application first, then Inventor B would be entitled to receive patent rather than Inventor A. An inventor is encouraged to pursue patent protection as soon as possible to be “first in line” at the Patent Office for that version of the invention.
How do I know which type of patent application to file?
There are many questions your patent attorney will ask you about your invention, your activities so far, and your goals for the invention. This information will help the patent attorney advise you about which type of patent application (if any) you should file. For some inventions, more than one type of patent application can be filed to cover different aspects of the invention.
Will a provisional patent application give me patent protection for my invention?
No. A provisional patent application is an application that has a written description, but may or may not have all the formal elements needed for a nonprovisional utility patent. The filing fee is significantly less than a nonprovisional (utility or design) patent application.
A provisional patent application is not examined by a patent examiner, and by itself, will not be granted a patent. Filing a provisional patent application allows you to obtain a filing date and to state that your invention is “Patent Pending” for one year.
After the provisional application is filed, the inventor has one year to file a utility patent application that claims the benefit of the earlier filing date. A design patent application cannot claim the benefit of a provisional application’s filing date.
A provisional application expires automatically one year after it is filed.
I have filed a patent application and my invention is “Patent Pending” – do I have patent rights and patent protection right now?
No. Patent protection is only available once your claimed invention has been granted a patent by the U.S. Patent and Trademark Office. “Patent Pending” status may be used as a deterrent to competitors because most patent applications are kept confidential in the Patent Office until published or issued as a patent. Because the examination time period varies with each application, a competitor may not know when (or if) a Patent Pending invention is about to be issued, or what step the invention is in the examination process.
I have a patent issued by the USPTO – do I have patent protection in other countries?
No. Patent protection is limited to the country or geographic region governed by that government office. For example, a U.S. patent granted by the United States Patent and Trademark Office is valid and enforceable only in the United States and her territories – not in other countries, such as China. To obtain patent protection in other countries (or regions), a patent application must be timely and independently filed in those countries (or regions), or filed under special provisions in the United States.
Should I have a patent search conducted before filing a patent application?
It depends on the type of technology, but usually yes. A patent search is a search of arguably related references (called “prior art”) that might affect the patentability of your invention. The references can include patents and published patent applications from the United States or from other countries. You will provide your patent attorney with a detailed description of the invention before the search and analysis are conducted.
UTILITY PATENT APPLICATIONS AND UTILITY PATENTS
What is a utility patent?
A utility patent provides patent protection for the functional features of an invention. It protects a new, useful, and non-obvious article of manufacture, machine, process, composition or an improvement of any of these.
What kind of patent protection does a utility patent give the patent owner?
The owner of a utility patent has the right to exclude others from making, using, offering to sell, selling, or importing the patented invention into the United States. A patent owner may license the all (or part) patented invention to someone else. The patent owner may assign (or sell) all or part of the patented invention to someone else.
A patent does not, however, give the patent owner the affirmative right to exclusively use the patented invention. A patent owner would still be subject to someone else’s patent rights for certain portions of the invention, if applicable.
Is there a deadline to file a utility patent application?
In some situations, yes. For example, if the claimed invention has been shown or disclosed publicly or offered for sale anywhere in the world, then a utility patent application must be filed by the 1-year anniversary of that disclosure or sale. If this filing deadline is not met, then that claimed invention is unpatentable. If this filing deadline is not met and a utility patent is inadvertently granted, then someone else may take action to have the patent invalidated.
Sometimes, a provisional patent application is filed to prevent missing this deadline. A utility patent application would then be filed before the 1 year anniversary of the provisional application’s filing date, with the utility patent application including the same (or similar) disclosure as the provisional application.
Also, since the United States follows a first-inventor-to-file patent system, inventors are encouraged to pursue their patent options as soon as practicable.
How long does utility patent protection last?
Utility patent protection lasts 20 years from the earliest filing date of an application. In some situations, the patent term may be more or less.
Do I have to pay maintenance fees for my utility patent?
Yes. Maintenance fees are due at 3 ½ years, 7 ½ years, and 11 ½ years from the issue date. If the maintenance fees are not timely paid, then the patent protection will expire and the technology will be available for public use.
How long is the examination process once I file a utility patent application?
The examination process (also called prosecution) at the Patent Office depends on many factors, such as staffing in that particular technology office, the number of newly-filed and pending patent applications already in that technology office, the complexity of the invention, and the number of prior art references that may render the invention as unpatentable. Generally, it is taking about 18 months to over 2 years for a patent examiner to contact your patent attorney after the application is filed. After an official letter (“Office Action”) is mailed to your attorney, the process is a little more predictable because there will be actual deadlines to meet. The Office Action may include one or more initial rejections and/or objections that must be addressed and overcome before (and if) a patent is granted.
Is there a shorter or faster way to get my patent application through the Patent Office?
Yes. You may request that your application be placed on an expedited examination track. Your application will be examined and concluded (issued, rejected, or abandoned) within about twelve months. This track has shorter response deadlines and strict requirements must be followed. Additional Patent Office fees and requirements apply.
DESIGN PATENT APPLICATIONS AND DESIGN PATENTS
What is a design patent?
A design patent provides patent protection for appearance of an invention, but not the functional or structural features of the invention. The design patent protects the new, original, ornamental design of an article of manufacture (i.e., a product).
What kind of drawings are needed for design patent applications?
Formal patent drawings that satisfy the Patent Office’s requirements. An experienced patent illustrator can assist in preparing patent drawings.
How long is the examination process for design patent applications?
The examination process (also called “prosecution”) can take anywhere from 6 months to over a year before a patent examiner mails your patent attorney an official letter (“Office Action”) or a Notice of Allowance.
Is there an accelerated, expedited or fast track for examination of design patent applications?
Yes. You may request that your application be placed on an expedited examination track. Your application will be examined and concluded (issued, rejected, or abandoned) within about twelve months. This track has shorter response deadlines and strict requirements must be followed. Additional Patent Office fees and requirements may apply.
How long does patent protection last for a design patent?
For applications filed on or after May 13, 2015, design patents have a term of 15 years from the date the patent is granted. For applications filed before May 13, 2015, design patents have a term of 14 years from the date the patent is granted.
Are there maintenance fees for design patents?
Is there a deadline to file a design patent?
In some situations, yes. For example, if the design has been shown or disclosed publicly or offered for sale anywhere in the world, then a design patent application must be filed by the 1-year anniversary of that disclosure or sale. If this filing deadline is not met, then that design is unpatentable. If this filing deadline is not met and a design patent is inadvertently granted, then someone else may take action to have the patent invalidated.
If the inventor/applicant wants to obtain design patent protection in other countries, then a design patent application must be filed before any
disclosure or sale anywhere in the world. If not, then design patent protection in those countries will no longer be available.
You are uniquely you. You may have more questions about protecting and enforcing available rights in your invention. Whether you are just getting started, ready to start the patent application process, or want to grow your business, patent attorney Rashauna Norment has experience providing patent legal services to a variety of clients.
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