What do I need to have in order to apply for a patent?
A patent application must include a description of the invention enabling a person in the inventor’s field of invention to make and use the invention. That means the patent application, through textual descriptions and drawings, needs to be detailed enough that someone who works in the field of invention can figure out how to make and use the invention without a great deal of “undue experimentation.” Inventors do not need to build or produce a prototype to apply for or receive a patent. However, in building a prototype, the inventor is almost certainly going to learn a lot of valuable information that should be included in the patent application.
How do I protect my invention from being stolen by someone that I have disclosed it to?
There are two specific things that you can do to try to prevent someone to whom you are disclosing your invention from copying your invention. The first is to execute a non-disclosure agreement, i.e., a contract between you and the party to whom you are disclosing your invention that the intellectual property rights to the information or material being disclosed belong to the inventor. In addition, an inventor can draft and file a patent application fully describing the invention prior to disclosing it to a third party.
Do I need to conduct a prior art search before I file my patent application?
No, you are not required to conduct a prior art search prior to filing a patent application and you will not be penalized if you fail to do so. However, if you are serious about actually obtaining an issued patent, then performing a prior art search is crucial to drafting an effective patent application. It is often the case that even a free patent search will reveal valuable information and inventions that are already prior art, but are not representative of products that are available on the open market. Often, such information will educate as to what is and is not truly novel about the invention. However, there is no substitute for a professionally performed prior art search as in this practitioner’s experience, it takes experience reading, drafting and prosecuting patent applications before one can anticipate and understand the reasoning that patent examiner’s use to analyze patent applications.
What are the different types of patent searches I can perform?
Patentability searches focus on the disclosures made in prior art references to determine what parts, if any, of the current invention are not patentable. These searches are performed prior to drafting patent applications to help narrow the claims in the patent application to avoid known prior art.
Operability searches focus on the claims of issued patents that are currently in force to determine if those claims read on the invention. Patents confer the right to stop others from making, using, selling and importing the patented product or a product made using a patented method. They do not give the inventor the right to practice their invention and it is possible for different inventors with similar inventions to own patents they cannot practice without infringing another patent. Careful analysis of the currently enforceable patents can be as important as searching the prior art before filing an application.
Can you explain the various types of patent applications? How is each type of patent application used?
Provisional patent applications are meant to provide an inventor with “patent pending” status for up to a year. During that year an inventor can use patent pending status to investigate manufacturing options, marketing and regulatory issues as well as partnerships to facilitate monetizing the invention. Provisional patent applications are not substantively examined and do not issue into patents. However, a non-provisional or international PCT application can “claim priority” to the filing date of a provisional application. That means that the later filed application is treated as if it were filed on the date the provisional application was filed.
Non-provisional patent applications are full patent applications that are substantively examined by the United States Patent and Trademark Office (USPTO) and can issue into patents. It contains a full description of the invention as well as claims that described exactly what the inventor claims they have invented.
International PCT applications can be thought of as international provisional patent applications. Similar to provisional patent applications, international PCT applications do not issue into patents. However, they are examined and the applicant can opt for additional examination to help them amend and refine their claims. Filing an international PCT application allows the applicant to file patent applications called “National Stage” applications in any country that has signed the Paris Convention Treaty (PCT) within 30 months of the application’s earliest filing or priority date. Those national stage applications are analogous to non-provisional patent applications filed in the United States and will be examined by that country’s patent authority. International PCT applications allow inventors considering filing an application for patent outside of the United States to investigate the need and feasibility of international patent protection for up to 30 months while protecting their right to file those applications in over 100 member countries.
Utility applications can be any of the above type of patent application that describes and claims a physical or tangible article and/or a useful method. The term utility application refers to the subject matter of the application or patent, not the type of application that was filed. Similarly, the term design application refers to an application that describes and claims an ornamental, non-functional design.
What is prior art? How does the USPTO analyze prior art?
In simple terms, prior art is the term used in patent law to described the body of knowledge that is accessible to inventors prior to the filing of their application for patent. It consists of published patent applications and patents, journal articles, public disclosures, or information that is otherwise been made available to the public. When analyzing patent applications, patent examiners are supposed to give the terms in a patent’s claims their “broadest reasonable interpretation” and compare that interpretation of the claim elements to what they find in the prior art. If the examiner determines that the application’s claims “read on” or are described in a prior art reference, then they will reject the claims and invite the applicant to amend.
What does obtaining a patent cost?
There are three different schedules of fees charged by the USPTO depending on what type of applicant applies for the patent, how many prior applications they have filed and even how much money they made the prior year. In addition, the fees charged by patent practitioners vary quite a bit depending on the size of the firm. However, if the inventor is not willing to spend several thousand dollars on the process, then they should rethink whether or not patent protection is worth investing in at all.
Do I need to apply for a patent?
A lot of inventors are interested in using “patent pending” status to discourage competitors, attract investors and impress potential consumers. Some inventors report that without some form of intellectual property protection in place, they have trouble with one or more of these issues. It is important to keep in mind that patents are business tools that allow you the right to prevent others from making, using, selling and importing your patented invention. Patents are also a piece of a much larger puzzle that begins with the conception of a new product or service and ends with monetizing that product or service.
Before investing substantial sums of money in searching, drafting and filing an application, an inventor should consider discussing their goals and strategy with a registered patent attorney. Feel free to contact the firm to schedule a meeting to discuss your individual needs.