Most Frequently Asked Questions about Patents

1. What is a patent?

A patent is a grant of legal rights by the United States Patent and Trademark Office (USPTO) that gives an inventor exclusive rights to make, use, sell, and offer to sell the invention or design disclosed and claimed in the patent for a specified period. Patents are intended to encourage innovation by providing inventors with a temporary monopoly in exchange for public disclosure of their invention. This is quid pro quo between the inventor and the public forms the basis of the patent system.

2. What types of patents are there?

There are three main types of patents: utility patents, design patents, and plant patents. These different types of patents cover different kinds of innovations. A utility patent provides legal protection new and useful inventions or discoveries, including a new and useful process, machine, manufactured article, composition of matter, and a new and useful improvement thereof. Design patents protect ornamental designs of functional items, including the visual characteristics and aesthetic aspects of a product. Design patents do not protect the functional aspects of a product. A plant patent may be granted to inventors who discover or create a new and distinct variety of plant that can be asexually reproduced.

3. What is the difference between a utility patent and a design patent?

Utility patents protect the functional aspects of an invention, such as a new machine, article of manufacture, process, or composition of matter. Utility patents disclose how the invention works and its practical applications. Design patents, on the other hand, protect the ornamental or aesthetic aspects of a manufactured article, such as textiles, cars, lighting fixtures, toys, instruments, consumer electronics, and any other manufactured thing that has aesthetic design elements. It covers the appearance or design of an item, not how it functions. Utility and design patents also differ in their patent terms - see the next FAQ.

4. How long does a patent last?

The duration of a patent depends on the type of patent. A utility patent expires 20 years from the filing date of the patent application, if the patent owner timely pays the maintenance fees. A design patent expires 15 years from the date of grant. Plant patents last for 20 years from the filing date. Design patents and plant patents do not require any maintenance activity after the patent grant by the USPTO. However, important to note that maintenance fees must be paid periodically to keep utility patents in force.

5. What is a provisional patent application?

A provisional patent application is a type of application filed with the USPTO that allows an inventor seeking patent protection to establish an early filing date for their invention without starting the formal patent examination process. Provisional applications are only available for utility patent applications. There are no provisional design patent applications or plant patent applications. A provisional application is less formal and requires fewer patent documents and lower filing fees compared to a non-provisional patent application. It gives inventors up to 12 months to file a corresponding non-provisional application, during which they can use the term "patent pending" to indicate that they have filed for patent protection. The 12-month pendency of the provisional application does not reduce the term of 20 years from the date of date of filing the non-provisional application.

6. How do I apply for a patent?

To start the patent process, an inventor must file a patent application with the USPTO. It is highly recommended that you seek the assistance of an experienced patent lawyer to handle the patent application process. Patent law is complex and dealing with patent examiners and patent examining procedure requires skill and experience. The process involves several steps:

1. Conduct a thorough patent search for prior patents and applications that have similar subject matter to the invention. Then analyze the search results to ensure the invention is novel, non-obvious, and not already patented.

2. Prepare a detailed description of the invention, including drawings if necessary, and claims that define the scope of the patent protection sought.

3. File the application with the USPTO or relevant patent office, with the necessary filing fees.

4. Participate in the patent examination process, responding to any office actions or requests for additional information from the examiner.

5. If the application is approved, the patent will be granted and issue to the patent applicant.

7. What are the requirements for patentability?

To be patentable, an invention must meet several criteria:

1. Novelty: The invention must be new and not disclosed in any prior art, which includes previous patents, publications, public use, or other public disclosures.

2. Non-obviousness: The invention must not be obvious to someone with ordinary skill in the relevant field. It should represent a significant advancement over existing knowledge or technology that is innovative and not a simple, unimaginative change.

3. Utility: The invention must be useful and have a practical application. It should be capable of being used for a specific purpose.

4. Patentable subject matter:  The subject matter of the invention must be within the categories of patentable subject matter, which are processes, machines, articles of manufacture, compositions of matter, and certain improvements thereof, as defined by 35 USC 101.

8. How much does it cost to get a patent?

The cost of obtaining a patent can vary widely depending on the complexity of the invention, the type of patent, and whether professional assistance is used. Costs typically include:

1. Filing fees: Fees paid to the patent office for filing the application.

2. Attorney fees: Costs for hiring a patent attorney or agent to prepare and prosecute the application.

3. Search fees: Fees for conducting a patent search to ensure the invention is novel.

4. Examination fees: Fees for the patent office to examine the application.

5. Maintenance fees: Periodic fees paid to keep the patent in force.

Generally, the total cost of obtaining a utility patent in the United States can range from $5,000 to $20,000 or more. Patent costs vary with the complexity of the invention, the closeness of the related prior art, and the particular patent examiner that you draw at the USPTO. Design patents and plant patents generally cost less than utility patents.

9. What is included in a patent application?

When filing a patent application, several key parts are required to ensure the grant of the desired intellectual property rights. The patent document must include a detailed description of the invention, explaining its purpose and functionality, an abstract, drawings, and patent claims. Patent claims define the scope of patent rights sought and must be clear and precise. Drawings are usually necessary to illustrate the invention. The abstract of the application summarizes the invention. Additionally, an oath or declaration confirming the inventor's claim to the invention is needed. Proper patent filing involves submitting all these parts to the patent office. Patent applications filed without all of these elements do not establish a priority date and will not have a patent granted therefrom.

10. Can I patent my idea?

An idea alone cannot be patented. To obtain a patent, an idea must be developed into a concrete invention that meets the substantive patent law requirements, including written description, enablement, and utility. The invention must be fully described and enabled in a patent application so that someone skilled in the relevant field can read and understand how to make and use it without "undue experimentation". "Undue experimentation" means excessive effort beyond routine skill and knowledge. For example, a patent on a new chemical compound must include detailed synthesis methods and conditions. If crucial steps or materials are omitted, requiring extensive trial and error, it fails the enablement requirement. Conversely, a patent providing precise instructions for a novel engine design, allowing replication by a skilled engineer without excessive effort, meets the enablement requirement.

11. How long does it take to get a patent?

The time it takes to obtain a patent can vary depending on the type of patent and the complexity of the invention. On average, it takes about 1 to 3 years to obtain a utility patent from the USPTO. The process can be faster for design patents, which typically take about 1 year. Factors that can affect the timeline include the workload of the patent office, the thoroughness of the application, and the need for any amendments or responses to office actions.

12. What is the patent examination process?

The patent examination process involves several steps:

1. Filing: The patent application is submitted to the patent office.

2. Preliminary Examination: The application is reviewed for formalities and completeness.

3. Publication: The application is published 18 months after the filing date or priority date, making it available to the public.

4. Substantive Examination: A patent examiner reviews the application for patentability, including novelty, non-obviousness, and utility. The examiner conducts a search of prior art and assesses whether the invention meets the requirements for a patent.

5. Office Actions: The examiner may issue office actions requesting additional information, amendments, or clarifications. The applicant must respond to these actions to continue the examination process.

6. Examiner interviews: Direct conversations and interviews with the examiner can be very helpful for advancing the application process. These interviews can be conducted over the phone, virtually, or in person at the USPTO headquarters or one of its regional patent offices located in Dallas, Denver, Detroit, and San Jose.

7. Allowance or Rejection: If the examiner determines that the invention meets the requirements for a patent, the application will be allowed, and a notice of allowance will be issued. If the application is rejected, the applicant can appeal the decision or make amendments to address the examiner's concerns.

8. Grant: Once the application is allowed, the patent is granted, and the inventor must pay the necessary issue fees to obtain the patent certificate.

13. What is prior art?

Prior art refers to any evidence that an invention is already known or has been disclosed before the filing date of a patent application. Prior art includes previous patents, published applications, scientific articles, books, conference presentations, public demonstrations, and any other public disclosures. The existence of prior art can affect the patentability of an invention by showing that it is not novel or is obvious.

14. What is a patent claim?

A patent claim defines the scope of the invention and the exclusive rights granted to the patent holder. Claims are the most important part of the application, as they specify what the patent protects. They must be clear, concise, and supported by the description of the invention provided in the application. Claims can be independent, standing alone as a complete description of the invention, or dependent, referring to and adding further limitations to another claim.

15. How can a patent owner enforce their patent rights?

To enforce a patent, the patent holder must monitor for potential infringements and take legal action if necessary. This can involve:

1. Cease and Desist Letters: Sending a formal notice to the alleged infringer, requesting them to stop using the patented invention.

2. Negotiation: Attempting to reach a settlement or licensing agreement with the infringer.

3. Litigation: Filing a lawsuit in a court of law to seek damages and an injunction against the infringer. A patent lawsuit can be a complex and costly process, requiring legal representation and extensive discovery, motion, and trial practice in efforts to prove the infringement of the claimed invention and addressing various other issues in the dispute, such as the validity of the patent.

4. ITC Actions: Filing a complaint with the U.S. International Trade Commission (ITC) to block the importation of infringing products.

16. What are patent infringement and how is it determined?

Patent infringement is the making, use, selling, or offering to sell of a patented invention without the permission of the patent holder.  Any of these acts can constitute infringement. Infringement can be determined by comparing the accused product or process to the claims of the patent. If the accused product or process falls within the scope of one or more claims, it may be considered infringing. There are different types of infringement, including direct infringement, indirect infringement (inducing or contributing to infringement), and willful infringement, which can result in enhanced damages.

17. What is a patent search and why is it important?

A patent search is a thorough examination of existing patents, patent applications, and other prior art to determine if an invention is novel and non-obvious. Conducting a patent search is important for several reasons:

1. Assessing Patentability: Determining if the invention is likely to meet the requirements for a patent.

2. Avoiding Infringement: Identifying potential conflicts with existing patents to avoid infringing on others' rights.

3. Informing the Application: Providing information that can help in drafting the patent application and defining the scope of the claims.

4. Strategic Planning: Understanding the competitive landscape and identifying potential opportunities for innovation.

18. Can I file a patent application myself or do I need a patent attorney?

While it is possible to file a patent application yourself, it is generally recommended to hire a patent attorney or agent. Patent law is complex, and professional assistance can help ensure that the application is properly prepared and prosecuted. A patent lawyer can provide valuable guidance on patentability, drafting claims, responding to office actions, and navigating the legal requirements of the patent office. Hiring a professional provides the patent applicant with the best chance of obtaining a strong and enforceable patent. As a general overview, here is a exemplary list of reasons why it is important to have the assistance of an experienced patent lawyer:

1. Expert Guidance: Patent attorneys are trained to understand the nuances of patent law and the technical details of inventions. They can effectively navigate the legal landscape, ensuring that applications are accurately prepared and submitted according to the strict guidelines of the patent office.

2. Proper Drafting: Patents must be precisely drafted to adequately protect an invention. This includes detailed descriptions and claims that define the scope of the patent protection. Patent attorneys have the expertise to draft the patent documents in a way that maximizes the breadth and enforceability of the patent while avoiding common pitfalls that could leave an invention with less than optimal protection.

3. Avoiding Rejections: The patenting process often involves correspondence with a patent examiner, who may request clarifications or reject the application based on various grounds. A patent attorney can anticipate potential objections and craft the application to address these concerns proactively, significantly improving the chances of a successful outcome.

4. Strategic Advice: Beyond the application process, patent attorneys provide strategic advice on managing patent portfolios, conducting freedom-to-operate analyses, and advising on patentability and patent infringement issues. This guidance is essential for using patents to support business strategies and investments effectively.

5. Litigation and Enforcement: If a patent is infringed, a patent lawyer is essential for enforcing rights through litigation or negotiation. They understand the complexities of patent law and can protect the patent owner's interests.

19. What happens if my patent application is rejected?

If an application is rejected, the applicant has several options:

1. Amendments: The applicant can amend the claims or provide additional information to address the examiner's concerns.

2. Appeal: The applicant can appeal the rejection to the Patent Trial and Appeal Board (PTAB) and, if necessary, to federal court.

3. Continuations: The applicant can file a continuation or continuation-in-part application to pursue different claims or modifications of the original invention.

4. Reexamination: The applicant can request a reexamination of the application, providing new evidence or arguments to support patentability.

20. Can I sell or license my patent?

Yes, a patent holder can sell (assign) or license their patent to others. Patents may be sold and assigned to a buyer, who then has the exclusive rights to the invention. Licensing allows the patent holder to grant others defined rights in a patent, including one or more of the right to use, make, sell, or distribute the patented invention, typically in exchange for royalties or other compensation. Licensing agreements can be exclusive (granting rights to only one licensee) or non-exclusive (granting rights to multiple licensees). Assignments and licenses are recorded with the USPTO to provide a public record of ownership.

21. What is a patent portfolio?

Patent portfolios are collections of patents owned by a company or other entity. They can include patents covering related technologies, products, or innovations. A patent portfolio may also include both US and foreign patents. Managing a patent portfolio involves strategic decisions about filing, maintaining, licensing, and enforcing patents to maximize their value and support business objectives. A strong patent portfolio can enhance a company's competitive position, attract investment, and generate revenue through licensing or enforcement.

22. How do I maintain my patent after it is granted?

To maintain a patent after it is granted, the patent holder must pay periodic maintenance fees to the patent office. In the United States, maintenance fees are due at 3.5, 7.5, and 11.5 years after the grant date of a utility patent. Failure to pay these fees can result in the patent lapsing and the loss of exclusive rights. Additionally, the patent holder should monitor for potential infringements and take necessary enforcement actions to protect their rights.

23. What is the role of the United States Patent and Trademark Office (USPTO)?

The US Patent and Trademark Office is the national patent office responsible for examining all filed patent applications and granting patents in the United States. The USPTO handles the patenting process for all types of patents recognized by the US Patent Act: utility patents, which cover new inventions or functional improvements to existing inventions; design patents, which protect the unique appearance or aesthetic of an item; and plant patents, awarded to inventors of new plant varieties. By granting patents, the USPTO provides legal protection to inventors and restricts others from lawfully making, using, or selling the claimed invention without authorization. However, the USPTO has no role in patent infringement matters or patent lawsuits. The USPTO also handles federal trademark registrations, examining and issuing all federal trademark registrations. The USPTO's primary functions include:

1. Examination: Reviewing patent and trademark applications to ensure they meet legal requirements.

2. Granting: Issuing patents and trademarks to eligible applicants.

3. Public Records: Maintaining a searchable database of patents and trademarks.

4. Policy Development: Advising on intellectual property policy and promoting innovation.

5. Education: Providing resources and guidance to inventors, businesses, and the public on intellectual property matters.

24. What is an international patent application?

"International patent application" is a bit of a misnomer. There is no single international patent application that can directly result in patents in multiple countries. However, there is a treaty (the Patent Cooperation Treaty, "PCT") that allows inventors to seek patent protection in multiple countries through a single application process. The PCT application preserves their international rights to pursue patents in nearly every country in the world for period of 30 months (there is some variation in the deadline for filing in different countries, but 30 months is the general target). The PCT application serves as a priority application for later national applications in PCT member countries. This simplifies the process and provides a unified timeline for seeking international patent protection.

25. What is the Patent Cooperation Treaty (PCT)?

The PCT is an international treaty that simplifies the process of filing patents in multiple countries. Administered by the World Intellectual Property Organization (WIPO), the PCT allows inventors to file a single international application, which can then be used as the basis for seeking patents in PCT member countries. The PCT process includes an international search and optional preliminary examination, providing valuable information on the patentability of the invention before entering national phases in individual countries. Currently there are 155 countries of the 193 countries recognized by the United Nations. There are three economically important countries that are not members of the PCT: Argentina, Taiwan, and Venezuela.

26. How do patents work in different countries?

Patents are territorial rights, meaning they are only enforceable within the jurisdiction where they are granted. To obtain patents in different countries, inventors must file separate patent applications in each country or use international systems like the PCT. Each country has its own patent laws, procedures, and requirements, so the process and criteria for obtaining a patent can vary. International cooperation and treaties, such as the PCT and the European Patent Convention (EPC), help streamline the process of obtaining patents in multiple countries.  For example, patent rights in European countries are handled through a single examination process through the European Patent Office.

27. What is a patent family?

A patent family is a group of related patents and applications that share a common priority date and cover the same or similar inventions. For example, the original application in the family may claim a new and useful process, and a related application may cover a novel device used in the process. Patent families typically include applications filed in different countries or regions, as well as continuations, divisionals, and related filings. Tracking patent families can provide insights into the global patent strategy of an inventor or company and the geographic scope of their patent protection.

28. What are patent citations?

Patent citations are references to prior patents or other publications that are relevant to the examination of a patent application. Citations can be provided by the applicant or the patent examiner during the examination process. They are used to assess the novelty and non-obviousness of the invention by comparing it to existing prior art. Citations can also be valuable for researchers and competitors, as they indicate the technological landscape and the development history of specific innovations.

29. What is patent prosecution?

Patent prosecution refers to the process of interacting with the patent office to obtain a patent. It includes preparing and filing the patent application, responding to office actions, making amendments, and negotiating with the patent examiner. Patent prosecution can involve both pre-grant activities, such as the initial examination and amendments, and post-grant activities, such as reexaminations and appeals. Effective prosecution is crucial for securing strong and enforceable patent rights.

30. What is a patent assignment?

A patent assignment is a legal transfer of ownership of a patent from a patent owner to another party. The assignor (past patent owner) transfers their patent rights to the assignee (new patent owner), who then holds the exclusive rights to the patented invention. Assignments can occur for various reasons, such as business acquisitions, mergers, or sales of intellectual property assets. The assignment must be recorded with the United States Patent and Trademark Office to be legally effective and to provide public notice of the change in ownership.

31. Can software be patented?

Software can be patented, but it must meet certain patentability criteria. In the United States, software inventions must include subject matter that has a specific, practical application and produce a useful, tangible result. They must also meet the standard requirements for patentability, including novelty, non-obviousness, and utility. However, the patentability of software can be complex and is subject to evolving legal standards. It is often advisable to seek professional assistance to navigate the nuances of software patent applications.

32. What is the difference between a patent lawyer and a patent agent?

Patent lawyers and patent agents both assist with patent cases, but they have distinct roles in the patent system. The US Patent Act allows for non-attorney patent agents to be licensed to represent patent applicants before the United States Patent and Trademark Office (USPTO). Patent agents can prepare, file, and prosecute patent applications. However, they cannot provide legal advice on broader intellectual property rights or engage in patent litigation. A patent lawyer, on the other hand, is a licensed attorney who has passed the patent bar exam, allowing them to practice before the USPTO. Additionally, patent lawyers can offer legal counsel on various aspects of intellectual property rights, represent clients in court, and handle patent litigation. They provide a more comprehensive range of services within the patent system, including advising on enforcement, infringement issues, and broader IP strategies, beyond just obtaining patents for patent applicants.