Warning: This Web page is not legal advice to anyone, including you. Your reading this information does not form an attorney-client relationship with this law firm. The following information is general and may not apply to your situation. Also, this page provides only a brief, high-level, and partial summary of an extensive body of U.S. patent law. This page could become out of date as patent law evolves. Please do not email us with questions about the content of this page. If you are interested in contacting us about possible legal representation, please call us.
More Information – Clients-Only Advisories. Beyond the content of this Web page, we have created a set of client advisories on aspects of the patent application process and patent issues generally. We make these available only to our clients. Through these advisories, we provide a level of guidance and information regarding patents that greatly exceeds what many other patent practitioners provide.
Links to Content on this Page:
- What is a Patent?
- What are the Main Steps in Obtaining a U.S. Patent?
- Tips for Deciding Whether to Apply for a Patent
- What are the Main Requirements for Patentability? What are “Prior Art” and “Statutory Bars”?
- Applying for a Patent – Application Form and Process
- What Should I Do If I Have a New Idea or Invention?
- Should I File a Provisional Application?
- Clearance Searches & Opinions
- Our Patent Experience
What is a Patent?
A U.S. Patent is a grant issued by the U.S. government, giving the owner the right to exclude others from practicing an invention. In other words, the owner has the right to sue others for making, using, selling, or offering for sale the invention in the U.S. or for importing the invention into the U.S.
U.S. Patents are granted by the U.S. Patent and Trademark Office (USPTO), which is part of the U.S. Department of Commerce. Nearly all other countries also grant patents, though the rights of a patent owner differ from country to country. In addition, there are some international authorities that grant patents, such as the European Patent Office.
U.S. law provides three types of patents – utility, design, and plant patents. Utility patents are the most common, and can be used to protect many different types of inventions. A design patent protects the ornamental design of an article of manufacture. A plant patent protects an asexually reproduced plant variety.
When the USPTO grants a U.S. Patent, it publishes a document that includes information about the scope of the owner’s exclusive rights. Other countries similarly publish documents when they grant patents. In general, such a published document is also referred to as a “patent,” and patents can be identified by numbers assigned to them. In the U.S., utility patents are currently assigned seven-digit numbers: On February 14, 2006, the USPTO granted U.S. Patent No. 7,000,000, and subsequent utility patents have numbers greater than 7,000,000, while previous utility patents have numbers smaller than 7,000,000.
A patent should not be confused with other kinds of intellectual property. For example, a patent is NOT the same thing as a copyright, a trademark, a service mark, trade dress, or a trade secret. (For a comparison between patents and other kinds of intellectual property, see below Tips for Deciding Whether to Apply for a Patent).
There are several legal requirements that must be met to obtain a utility patent. But sometimes it is helpful to have a simpler way of thinking about utility patents. In our experience, utility patents often protect structural and functional features of inventions
An example may help in understanding how structural and functional features are different than other features: Suppose a mousetrap company receives several employee suggestions. Its employees are very creative, and the suggestions are all over the map – one employee, for example, suggests a new way to use the company’s mousetrap to catch fish; another suggests a new name for the mousetrap to help distinguish it from other traps that might be displayed nearby; and another suggests a new spring mechanism that will simplify mousetrap manufacture.
The first of these ideas, about catching fish, relates to functional features of the mousetrap, and might be protectable with a utility patent. Even if the structure of the mousetrap is not changed, it may be possible to obtain a patent on a new method of using it.
The second idea, about a new name, apparently does not relate to a structural or functional feature. The mousetrap will have the same structure and will be manufactured and used in the same way. A utility patent cannot protect a new name for a product. The mousetrap company should consider another form of intellectual property protection for the name, such as trademark protection. (See Trademark Information.)
The third idea, about the new spring, relates to structural features of the mousetrap and might also relate to functional features. Therefore, it might also be protectable with a utility patent. In general, a change in how a product is manufactured is often a tipoff that patenting should be considered.
Although utility patents can protect structural and functional features, U.S. patent law includes a number of detailed requirements that must be met to obtain a utility patent. Some of the requirements are discussed below (see Applying for a Patent – Application Form and Process).
What are the Main Steps in Obtaining a U.S. Patent?
To obtain a U.S. Patent on a new idea, one must file a patent application and do what is necessary so that the USPTO issues a patent based on the application. The writing and filing of a patent application are typically referred to as “preparation,” while subsequent steps to obtain an issued patent are referred to as “prosecution.”
A patent application is typically prepared by a patent attorney familiar not only with relevant legal requirements but also with the relevant area of technology. The patent attorney typically begins by learning about the new idea from the person who thought of it, often referred to as the “inventor.” The patent attorney then prepares the application, a document that describes the new idea. A patent application’s parts are described in more detail below (See Applying for a Patent – Application Form and Process).
After preparing the patent application, the patent attorney submits it to the USPTO, a process typically called “filing.” Most patent applications are filed as non-provisional or “regular” patent applications, but it is also possible to file a provisional patent application (also called a “PPA”). The USPTO examines each regular patent application and decides whether to issue a patent, but the USPTO does not examine PPAs – it simply holds them in secrecy for a year, in which time the applicant must take additional steps to preserve patent rights, such as by filing a regular application. (In some situations, patent rights are only preserved if one takes additional steps less than one year after filing a PPA – see John Farmer’s article entitled Inventors Should Be Wary of the Cheap Patent Myth for an example.) With either type of application, a fee is due to the USPTO upon filing, but the fee for a regular application is much greater than for a PPA.
The main part of patent application prosecution is examination by the USPTO. For a new regular patent application, examination typically begins at least 18 months after filing, and can begin more than 3 years after filing in some technology areas. During examination, a USPTO examiner reviews the application and decides whether to allow it to issue as a patent. Usually, the examiner sends the applicant a communication with reasons the application is rejected, and the applicant can then respond with changes in the application, with arguments, and with evidence to overcome the rejections. Prosecution can last several years if the applicant and the examiner have difficulty reaching agreement. In such cases, prosecution may include an appeal within the USPTO and, in a few cases, to a federal appellate court.
Finally, when the examiner allows the application, the applicant is required to pay an issue fee to obtain an issued patent. After a patent issues, additional fees, called maintenance fees, are required to keep it in force; maintenance fees are currently due 3.5, 7.5, and 11.5 years after a patent issues.
Tips for Deciding Whether to Apply for a Patent
A patent is a speculative investment, and an expensive investment of time and money. Therefore, it is a good idea to take some time to determine whether patent protection for a new invention is warranted. The following are some typical questions that should be answered to help determine whether to seek patent protection for an invention. The order in which they are raised is not critical.
Some questions relate to whether patenting is appropriate and available:
- Is this invention or idea of the type that is appropriate for patent protection?
- Stated another way, would another type of intellectual property protection be more appropriate than patent protection?
- Is the subject matter sought to be protected appropriate for patent protection?
- Has the invention been publicly disclosed?
- Are there statutory bars to getting a patent?
- Other questions relate to whether the cost of patenting would be justified:
- Is there a market for the invention?
- Do you have a business plan?
- Does the invention involve a product that can be brought to market? Is there a specific plan to do so?
- Can rights to the invention be sold or licensed to third parties?
- Who are the potential competitors and what are the potentially competitive products?
- Will patent protection give a competitive advantage?
- If a patent is issued for the invention, who will potential infringers be?
- Will it be easy for you to detect infringement of the patent?
If patenting is appropriate and available and the cost would be justified, it usually makes sense to apply for a patent.
There are three main requirements for an invention to obtain a U.S. patent. The invention must be useful, new, and non-obvious. These requirements are described in more detail below
U.S. patent law requires that an invention must be useful in order to be protected by a utility patent. This is sometimes called the “utility requirement.” But the utility requirement does not mean the invention must be better than other ways of doing the same thing, or that the invention must be profitable, financially feasible, or even serious: Inventions of toys and games can often be protected by utility patents, and there are many utility patents on inventions that did not lead to successful products or services.
The utility requirement also requires that the invention, to be patentable, must fit into one of a number of categories that are sometimes referred to as “statutory subject matter.” Statutory subject matter generally includes machines, articles of manufacture (i.e., man-made products), and compositions of matter. It also includes many processes, especially those that perform a physical transformation of matter or produce a useful, concrete, and tangible result. But laws of nature, natural phenomena, and abstract ideas are not themselves statutory subject matter.
Second, in order to obtain a patent, the invention must be new. This is sometimes called the “novelty requirement.” To determine whether the invention meets these criteria, a patent examiner will search “prior art.” “Prior art” refers to any publicly available information, or a previously filed patent application, that is in existence prior to the date of invention. Examples of prior art include earlier patents or published patent applications, journal articles or other written publications, advertising information or brochures including websites, public uses or demonstrations, or sales or offers for sale.
With a few exceptions, to be novel, the invention must not have been previously “described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective [patent application] filing date of the claimed invention; or . . . described in a patent . . . or in an application for patent published or deemed published under [U.S. patent law] in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.”
Practically speaking, in light of 2012-13 changes to the patent law, and pre-patent-application-filing disclosure, sale, offer for sale, or public use of an invention creates a risk that a U.S. patent cannot be obtained for that invention. Thus, we recommend that a patent application be filed before any of those events occur.
Finally, the invention must not be obvious from prior art. This requirement is tested from the point of view of someone who is familiar with the area of technology to which the invention most closely relates.
If the examiner finds a single piece of prior art that discloses the claimed invention, he will reject the claims for failure to meet the novelty requirement. If the examiner determines that the claimed invention is merely an obvious modification of the prior art or a combination of several pieces of prior art, he will reject the claims for obviousness.
If the examiner discovers prior art that is dated more than one year prior to the patent application date, the prior art is said to be a “statutory bar” to the inventor obtaining a patent. This means that the inventor may not attempt to prove that he invented prior to that date. Further, this requirement also applies to activities by the inventor himself. For example, a patent application must be filed within one year of a publication, a public disclosure, sale, or offer for sale of the invention for which a patent is sought. Otherwise, the inventor is “statutorily barred” from obtaining a patent for the invention.
Applying for a Patent-Application Form and Process
So, what exactly is involved in preparing and filing a patent application? U.S. patent law requires that the application include a written description and drawings that would permit a person, who is skilled in the area of technology to which the invention relates, to be able to make and use the invention. Finally, an application for a utility patent must describe what the applicant seeks to protect in numbered paragraphs called “claims.” The USPTO then decides whether to grant a patent based on the claims, and may require the applicant to change the claims. To meet other requirements of patentability, the claim must include at least one patentable difference between the invention and the prior art, and the USPTO tends to prefer claims that set forth details about structure or function.
What Should I Do If I Have a New Idea or Invention?
If you have a new idea or invention, you may need to determine who else may have rights in the invention, such as a co-inventor or employer. For example, as an employee, if you develop a new idea or invention, you may need to discuss it with your employer to determine how best to proceed. If you determine that you, or you and a co-inventor, have rights in an invention, you may want to determine whether to apply for a patent.
One approach that can be used to determine how to proceed is as follows:
If you have a new idea or if you have ownership rights in a new idea, the first thing you may wish to do is to try to determine whether it would be best protected by a patent or by another type of intellectual property protection. If you believe the idea would be best protected by a patent, you should document and record any evidence of the inventive activities, as these could become important when prosecuting the patent application.
Next, you may want to determine whether your idea is sufficiently developed to pursue patent protection at this time. While it is not necessary to have made a model or prototype to obtain a patent, a patent application must include sufficient description and drawings of the invention to permit someone to make and use the invention. If you have not yet determined these details, the invention may not yet be ready for patent protection.
The next step that you may wish to take is to use the steps above to determine whether filing a patent application is warranted, and develop a business plan. Is there a market for the invention? Will I be able to sell or license the invention, or manufacture the product? Will it be easy to detect infringement? Does the investment justify the cost?
Before proceeding further, you may want to do any Internet search to determine the closest products that might affect the novelty or obviousness of the invention and also to determine who might be competitors. This can be done initially using a search engine and also on a website that includes patents, such as http://www.uspto.gov/. This search may help determine whether applying for a patent is warranted. This initial search does not substitute for a search performed by a professional search company, but it is a good start.
You should then bring any search results and a brief description, as well as any drawings or models to a meeting with a patent attorney. You should also provide any information that may be a statutory bar and any evidence of inventive activities. The attorney can help advise you further on whether to file a patent application and prepare one for you should you decide to do so.
Should I File a Provisional Application?
As noted above, a provisional patent application is not examined by the USPTO and does not provide any rights to the applicant other than evidence of the invention. A regular patent application must be filed within one year of the provisional application (or the provisional application may be converted to a non-provisional application) in order to take advantage of the filing date of the provisional application.
A provisional application can be a good idea if you believe that further development and improvement of the invention will take place during that year. It can also give you a chance to explore market possibilities for the invention, since it delays patent prosecution expenses.
In order to take advantage of the filing date of a provisional application, the provisional application must include sufficient description and drawings to permit one to make and use the invention. Thus, it will usually not be significantly cheaper to file a provisional patent application. While the USPTO filing fees are less than for a regular application, the costs for preparing the description and drawings is usually not significantly less than for a regular application.
Clearance Searches & Opinions
Once you’ve developed a new product or invention, another consideration is whether anybody else has a patent that covers the product or invention that they can enforce against you. Before undertaking significant investment in filing a patent application or in bringing the product to market, it may be prudent to perform a patent clearance search. Otherwise, it may be that you receive a cease and desist letter or are sued for infringement after these investments have already been made and could be on the hook for infringement damages and/or an injunction. At the very least, you may have to defend an expensive patent infringement lawsuit.
A patent attorney can assist you to have a search performed for a third party’s patents that may pose a risk of infringement for your product or invention. If there are patents that are close or that may pose a problem, the attorney can work with you to design around the patent or you may abandon the idea and try something else before making significant investment.
What should you do if you have received a letter from a third party that threatens you with a patent infringement suit or asks you to license a patent? Again, the advice of a patent attorney is invaluable here. Simply ignoring the letter could potentially lead to your having to pay triple damages to the patentee in an infringement suit and being faced with an injunction. The patent attorney can help you to decide an appropriate response and potentially give you a non-infringement opinion or an opinion that the patent is invalid. Non-infringement and invalidity are two exemplary defenses to a charge of patent infringement. The opinion could be used as a defense to a charge of willful infringement that may require a payment of triple damages.
Our Patent Experience
We offer a wealth of experience and resources for patent preparation and prosecution, as well as clearance searches and patent opinions. We can assist with searches to help clients decide whether to seek patent protection or whether an activity risks patent infringement. We prepare and file patent applications at the USPTO for our clients. During prosecution, we work to persuade patent examiners to grant patents for our clients. We do not do patent litigation per se, but we do assist litigation counsel by preparing opinions and other documents that may be necessary for litigation.