The patent process can be challenging if you are not familiar with it. The Frequently Asked Questions (FAQs) below will provide useful information from the United States Patent and Trademark Office (USPTO) regarding the patent process.
Patent Basics - Part I
"WHAT IS A PATENT?"
* A patent is a property right of limited duration relating to an invention, granted by the U.S. Government through the United States Patent and Trademark Office in exchange for public disclosure of the invention when the patent is granted.
* The right conferred by the patent grant is, in the language of the statute and of the grant itself, "the right to exclude others from making, using, offering for sale, or selling" the invention in the United States or "importing" the invention into the United States. What is granted is not the right to make, use, offer for sale, sell or import, but the right to exclude others from making, using, offering for sale, selling or importing the invention.
"WHO CAN APPLY FOR A PATENT?"
* A patent may be applied for only in the name(s) of the actual inventor(s).
* If two or more persons make an invention jointly, they apply for a patent as joint inventors. A person who makes only a financial contribution is not a joint inventor and cannot be joined in the application as an inventor. It is possible to correct an innocent mistake in erroneously omitting an inventor or in erroneously naming a person as an inventor.
* According to the law, the inventor, or a person to whom the inventor has assigned or is under an obligation to assign the invention, may apply for a patent, with certain exceptions. If the inventor is deceased, the application may be made by legal representatives, that is, the administrator or executor of the estate. If the inventor is legally incapacitated, the application for patent may be made by a legal representative (e.g., guardian). If an inventor refuses to apply for a patent or cannot be found, a joint inventor may apply on behalf of the non-signing inventor.
"WHAT ARE THE DIFFERENT TYPES OF PATENTS?"
There are three basic types of patents.
* Utility patents may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof.
* Design patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture.
* Plant patents may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant.
"HOW LONG DOES PATENT PROTECTION LAST?"
* Generally, the term of a new patent is twenty (20) years from the date on which the application for the patent was filed in the United States or, in special cases, from the date an earlier related application was filed, subject to the payment of maintenance fees. U.S. patent grants are effective only within the United States, U.S. territories, and U.S. possessions. Under certain circumstances, patent term extensions or adjustments may be available.
Patent Basics - Part II
"HOW MUCH DOES IT COST TO GET A PATENT?"
* The costs of applying for and maintaining patents are established by the United States Patent and Trademark Office (USPTO). Fees vary depending on the type of patent application submitted to the USPTO. Fees may also vary according to the way you "claim" your invention. Information and fee rates for the products and services provided by the USPTO is available on the USPTO Fee Schedule webpage.
There are three basic fees for utility patents.
* The filing fee, which is non-refundable whether or not a patent is granted.
* The issue fee (you pay this only if your claimed invention is allowed).
* Maintenance fees (paid at 3*, 7*, and 11* years after your patent is granted - these fees "maintain" your legal protection).
Additional fees may be required. The USPTO website at www.uspto.gov strongly advises patent applicants to consult the current fee schedule before submitting their applications.
"WHAT CAN AND CANNOT BE PATENTED?"
What can be patented: * utility patents are provided for a new, nonobvious and useful:
* Article of manufacture
* Composition of matter
* Improvement of any of the above
NOTE: In addition to utility patents, encompassing one of the categories above, patent protection is available for (1) ornamental design of an article of manufacture or (2) asexually reproduced plant varieties.
What cannot be patented:
* Laws of nature
* Physical phenomena
* Abstract ideas
* Literary, dramatic, musical, and artistic works (these can be Copyright protected).
* Inventions which are:
* Not useful (such as perpetual motion machines); or
* Offensive to public morality
Invention must also be:
* Adequately described or enabled (for one of ordinary skill in the art to make and use the invention)
* Claimed by the inventor in clear and definite terms
Patent Basics - Part III
"HOW DO I KNOW IF MY INVENTION IS PATENTABLE?"
* First, review the list of what can and cannot be patented and determine if your invention falls into one of those categories.
* Second, learn the basics of the patenting process.
* Next, a search of all previous public disclosures (prior art) including, but not limited to previously patented inventions in the United States may be conducted to determine if your invention has been publicly disclosed and thus is not patentable. A search of foreign patents and printed publications may also be conducted. While a search of the prior art before the filing of an application is not required, it is advisable to do so. A registered attorney or agent is often a useful resource for performance of a patentability search. After an application is filed, the United States Patent and Trademark Office (USPTO) will conduct a search as part of the official examination process. Conducting a thorough patent search is difficult, particularly for the novice. Patent searching is a learned skill. The best advice for the novice is to seek out search experts to help in setting up a search strategy. If you are in the Washington, D.C. area, the USPTO provides public access to collections of patents, trademarks, and other documents at its search facilities located in Alexandria, Virginia.
"HOW DO I APPLY FOR A PATENT?"
* Inventors may apply for one of two types of patent applications: (1) A non-provisional application, which begins the examination process and may lead to a patent and (2) A provisional application, which establishes a filing date but does not begin the examination process.
* Both types of patent applications can be filed either electronically by using the Electronic Filing System (EFS) or in writing to the Commissioner for Patents. Inventors can also request that the United States Patent and Trademark Office (USPTO) send informational materials providing a broad overview of the process of obtaining a United States patent, including general requirements and a listing of the depository libraries.
"IF TWO OR MORE PERSONS WORK TOGETHER TO MAKE AN INVENTION, TO WHOM WILL THE PATENT BE GRANTED?"
* If each person had a share in the ideas forming the invention as defined in the claims (even if only as to one claim), they are joint inventors and a patent will be issued to them jointly on the basis of a proper patent application.
* If, on the other hand, one of these persons has provided all of the ideas of the invention, and the other has only followed instructions in making it, the person who contributed the ideas is the sole inventor and the patent application and patent shall be in his/her name alone.
Patent Basics - Part IV
"WHAT IS A PROVISIONAL PATENT APPLICATION?"
* A provisional application is a patent application, which establishes an official United States patent application filing date for the invention and permits the term "Patent Pending" to be applied in connection with the invention. A provisional application for patent (provisional application) has a pendency lasting 12 months from the date the provisional application is filed. The 12-month pendency period cannot be extended. A provisional application automatically becomes abandoned when its pendency expires 12 months after the provisional application filing date by operation of law. Therefore, an applicant who files a provisional application must file a corresponding nonprovisional application for patent (nonprovisional application) during the 12-month pendency period of the provisional application in order to benefit from the earlier filing of the provisional application.
* Once a provisional application is filed, an alternative to filing a corresponding nonprovisional application is to convert the provisional application to a nonprovisional application by filing a grantable petition under 37 C.F.R. 1.53(c)(3) requesting such a conversion within 12 months of the provisional application filing date.
"WHAT IS A PCT APPLICATION?"
* The Patent Cooperation Treaty (PCT) is an international agreement for filing patent applications having effect in many countries around the world. Although the PCT system does not provide for the grant of "an international patent," the system simplifies the process of filing patent applications, delays the expenses associated with applying for patent protection in foreign countries, and allows the inventor more time to assess the commercial viability of his/her invention. Under the PCT, an inventor can file a single international patent application in one language with one patent office in order to simultaneously seek protection for an invention in the PCT member countries.
"DO I NEED A PATENT ATTORNEY OR AGENT TO FILE MY PATENT APPLICATION?"
* An inventor is free to prepare his or her own patent application (or provisional patent application). However, the USPTO website strongly recommends that all prospective applicants retain the services of a registered patent attorney or patent agent to prepare and prosecute their patent applications.
Patent Basics - Part V
"HOW CAN I FIND OUT IF MY INVENTION IS ALREADY PATENTED?"
* Public users may perform preliminary searches of patent information in a variety of formats including on-line, microfilm, and print at the United States Patent and Trademark Office (USPTO) Public Search Facility located in Alexandria, VA. Computer workstations available for use at the search facility provide automated searching of patents issued from 1790 to the current week of issue. Full document text may be searched on U.S. patents issued since 1971 and OCR text from 1920 to 1970. U.S. patent images from 1790 to the present may be retrieved for viewing or printing. Some foreign patent documents are available. A complete patent backfile in numeric sequence is available on microfilm or in optical disc format. Official Gazettes, Annual Indexes (of Inventors), the Manual of Classification and its subject matter index, and other search aids are available in various formats. Patent assignment records of transactions affecting the ownership of patents, microfilmed deeds, and indexes are also available.
* Inventors can access the full-text searchable database containing patent information for all U.S. patents granted since 1976 and all patent application publications (first published in March 2001), on the USPTO website at patft.uspto.gov/.
* Inventors may retain a patent attorney or a patent agent to conduct a complete search.
* Inventors can also perform a preliminary search of patents at one of the Patent and Trademark Depository Libraries (PTDLs) established throughout the United States. PTDLs have copies of patents in microfilm and/or optical disc format arranged in numerical order. These libraries have classification search tools, automated search aids, and photocopy facilities available to the public.
"ARE PATENT APPLICATIONS REQUIRED TO CONTAIN DRAWINGS?"
* The applicant for a patent will be required by law to furnish a drawing of the invention whenever the nature of the case requires a drawing to understand the invention. However, the Director may require a drawing where the nature of the subject matter admits of it; this drawing must be filed with the application. This includes practically all inventions except compositions of matter or processes, but a drawing may also be useful in the case of many processes. The drawing must show every feature of the invention specified in the claims, and is required by the USPTO rules to be in a particular form. The USPTO specifies the size of the sheet on which the drawing is made, the type of paper, the margins, and other details relating to the making of the drawing. The reason for specifying the standards in detail is that the drawings are printed and published in a uniform style when the patent issues, and the drawings must also be such that they can be readily understood by persons using the patent descriptions.
Patent Basics - Part VI
"ARE NOVELTY AND NON-OBVIOUSNESS CONDITIONS FOR OBTAINING A PATENT?"
* In order for an invention to be patentable it must be new as defined in the patent law, which provides that an invention cannot be patented if:
"(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention" or
"(2) the claimed invention was described in a patent issued [by the U.S.] or in an application for patent published or deemed published [by the U.S.], 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."
* There are certain limited patent law exceptions to patent prohibitions (1) and (2) above. Notably, an exception may apply to a "disclosure made 1 year or less before the effective filing date of the claimed invention," but only if "the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed * from the inventor or a joint inventor."
* In patent prohibition (1), the term "otherwise available to the public" refers to other types of disclosures of the claimed invention such as, for example, an oral presentation at a scientific meeting, a demonstration at a trade show, a lecture or speech, a statement made on a radio talk show, a YouTube* video, or a website or other on-line material.
* Effective filing date of the claimed invention: This term appears in patent prohibitions (1) and (2). For a U.S. nonprovisional patent application that is the first application containing the claimed subject matter, the term "effective filing date of the claimed invention" means the actual filing date of the U.S. nonprovisional patent application. For a U.S. nonprovisional application that claims the benefit of a corresponding prior-filed U.S. provisional application, "effective filing date of the claimed invention" can be the filing date of the prior-filed provisional application provided the provisional application sufficiently describes the claimed invention. Similarly, for a U.S. nonprovisional application that is a continuation or division of a prior-filed U.S. nonprovisional application, "effective filing date of the claimed invention" can be the filing date of the prior filed nonprovisional application that sufficiently describes the claimed invention. Finally, "effective filing date of the claimed invention" may be the filing date of a prior-filed foreign patent application to which foreign priority is claimed provided the foreign patent application sufficiently describes the claimed invention.
* Even if the subject matter sought to be patented is not exactly shown by the prior art, and involves one or more differences over the most nearly similar thing already known, a patent may still be refused if the differences would be obvious. The subject matter sought to be patented must be sufficiently different from what has been used or described before that it may be said to be non-obvious to a person having ordinary skill in the area of technology related to the invention.
Patent Basics - Part VII
"WHAT DO THE TERMS 'PATENT PENDING' AND 'PATENT APPLIED FOR' MEAN?"
* These terms are used by a manufacturer or seller of an article to inform the public that an application for patent on that article is on file in the United States Patent and Trademark Office. The law imposes a fine on those who use these terms falsely to deceive the public.
"WHAT IS MEANT BY 'SMALL ENTITY STATUS' OR 'MICRO ENTITY STATUS'?"
* For patents, if the owner of the invention qualifies as a small entity or micro entity, the filing, issue, and maintenance fees are reduced by 50 percent or 75 percent, respectively.
"IS THERE ANY DANGER THAT THE USPTO WILL DIVULGE INFORMATION CONTAINED IN MY PATENT APPLICATION WHILE IT IS PENDING?"
* Most patent applications filed on or after November 29, 2000, will be published 18 months after the filing date of the application, or any earlier filing date relied upon under Title 35, United States Code. Otherwise, all patent applications are maintained in the strictest confidence until the patent is issued or the application is published. After the application has been published, however, a member of the public may request a copy of the application file.
* After the patent is issued, the United States Patent and Trademark Office (USPTO) file containing the application and all correspondence leading up to issuance of the patent is made available in the Files Information Unit for inspection by anyone, and copies of these files may be purchased from the USPTO.
"WHAT IS MEANT BY 'SMALL ENTITY STATUS' OR 'MICRO ENTITY STATUS'?"
* For patents, if the owner of the invention qualifies as a small entity or micro entity, the filing fee, issue fee, and maintenance fees are reduced by 50 percent or 75 percent, respectively.
"HOW DO I OBTAIN A COMPLETE FILE HISTORY OF A PATENT?"
* A file history of a patent or a published application for patent may also be obtained in person through the File Information Unit (FIU). The FIU is on the third floor of the Randolph Square Building, 2800 S. Randolph St., Arlington, Virginia. You may contact the FIU through their direct line at 703-756-1100.
"CAN THE USPTO ASSIST ME IN THE DEVELOPING AND MARKETING OF MY PATENT?"
* The United States Patent and Trademark Office (USPTO) cannot act or advise concerning the business transactions or arrangements that are involved in the development and marketing of an invention. The USPTO, however, will publish for a fee, at the request of a patent owner, a notice in the Official Gazette that the patent is available for licensing or sale. In addition, the Office of Independent Inventor Programs (OIIP) was established in March 1999 in order to meet the special needs of independent inventors. The OIIP establishes new mechanisms to better disseminate information about the patent and trademark processes and to foster regular communication between the USPTO and independent inventors.
Patent Basics - Part VIII
"HOW DO I OBTAIN A COPY OF A PATENT OR A PATENT APPLICATION PUBLICATION?"
* Copies of patents or patent application publications, shipped via the U.S. Postal Service, may be purchased for $3.00 each. To order a patent copy, you must provide the patent number. To order a copy of a patent application publication, you must provide the publication number.
"HOW DO I CHECK ON THE STATUS OF MY PENDING PATENT APPLICATION?"
* The United States Patent and Trademark Office (USPTO) provides PAIR - Patent Application Information Retrieval System. PAIR has a private site that provides a USPTO/Internet infrastructure capability to securely provide patent application status information to USPTO customers with a customer number associated with the correspondence address for their application and the appropriate software tools. Contact the Patent Electronic Business Center (PEBC) at 571-272-4100 to learn more about the tools necessary to access private PAIR. PAIR also has a public side to provide the same information to the public once an application has issued as a patent or published as a patent application publication. Once a patent applicant receives a patent filing receipt containing the application number of the patent application, the applicant may check on the status of a pending application once the applicant has obtained the appropriate tools.
* Information on PAIR can be found on the PEBC website at: https://www.uspto.gov/patents-application-process/applying-online/getting-started-new-users. An applicant fo patent may also call the examiner assigned to the patent application, and if this information is not known, the applicant may call the File Information Unit at 703-308-2733. For additional information, applicants may contact the USPTO Contact Center (UCC) and request to be transferred to the Inventors Assistance Center (IAC). IAC representatives are available Monday through Friday (except federal holidays) from 8:30 a.m. to 5:30 p.m. Eastern Time.
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