a) Patent FAQ
i) Patent Basics
- What is a patent?
- What types of patents are there?
- What is a Provisional patent application?
- How long does it take to get a patent?
- How much does it cost to get and maintain a patent from the USPTO?
- What coverage does a patent provide?
- What is the standard for patentability?
- What does “patent pending” mean?
- I have already published, disclosed, sold my invention to the public, does that mean I can’t get a patent?
- How should I document/record my invention during the invention process?
ii) Preliminary patentability searching
- What is a preliminary patentability search?
- Can I do my own patent search?
- What does a Professional Patent Search Firm provide?
b) IIP FAQ
- What is your confidentiality policy?
- Can IIP guarantee a granted patent?
- How do I get an international/foreign patent?
c) Links
a) Patent FAQ
i) Patent Basics
(a) A patent is the grant of an intellectual property right to an inventor for their invention in return for disclosing it to the public in full detail. It is issued by the United States Patent and Trademark Office (USPTO). Accordingly, a granted patent gives the patent holder “the right to exclude others from making, using, offering for sale, or selling” the invention. Generally, a newly granted U.S. patent is effective for 20 years from the date on which the application was filed and is only effective in the United States. It will also be subject to the payment of maintenance fees in order to remain enforceable.
(2) What types of patents are there?
(a) Utility Patents – a patent granted for any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof.
(b) Design Patents – a patent granted for new, original, and ornamental design for an article of manufacture.
(c) Plant Patents – a patent for any distinct and new variety of plant.
(3) What is a Provisional patent application?
(a) A Provisional patent application does NOT result in a patent and is NOT enforceable. Rather, it is an application that can provide a priority date to a regular patent application. It expires at the end of one year and CANNOT be renewed or extended. A Provisional patent is usually followed by a non-provisional or utility patent application being filed within the one year period. It is not necessary to file a provisional patent application, and often a non-provisional application is filed without ever filing a provisional patent application
(b) Patent Statistics
(i) In 2008 at the USPTO, 143,030 provisional patent applications and 496,762 non-provisional applications were filed
(ii) In 2007 at the USPTO, 132,459 provisional applications and 468,330 non-provisional applications were filed
(iii) In 2006 at the USPTO, 121,471 provisional applications and 445,613 non-provisional applications were filed
(4) How long does it take to get a patent?
(a) The period of time which the Patent Office usually requires to review and grant a patent varies However, in certain areas, such as electrical patents, the Patent Office is backlogged and the wait can exceed 2.5 years. In special circumstances, the process can be accelerated because of certain factors, such as the age of the inventor, the importance of the invention to society or by paying additional fees to make the application considered "special".
(b) Patent Statistics
(i) In 2008 at the USPTO there were
1. 485,312 patent applications filed
2. 771,529 patent applications awaiting action by an examiner
3. 1,208,076 total patent applications pending
(ii) In 2008, the average first action pendency at the USPTO was 25.6 months, with a range of 19.5 to 32.5 months depending on the technology group
(iii) In 2008, the average total pendency at the USPTO was 32.2 months, with a range of 28.2 to 43.6 months depending on the technology group
(5) How much does it cost to get and maintain a patent from the USPTO?
(a) The cost varies and may be very high for large companies and corporations. However, fees are reduced by 50 percent when the applicant is a small business or individual inventor. Overall, it will most likely cost a few thousand dollars to obtain a patent (plus any additional practitioner fees). A current list of fees from the USPTO can be found on the patent office website. For a small entity (businesses less than 500 employees) the USPTO fees are typically $500 or more at the time of filing, $1,000 or more at the time of issue and publication, and $3,700 or more for maintenance over the 20 year patent term.
(6) What coverage does a patent provide?
(a) A granted patent gives the patent holder “the right to exclude others from making, using, offering for sale, or selling” the invention. Generally, a newly granted U.S. patent is effective for 20 years from the date on which the application was filed and is only effective in the United States. It will also be subject to the payment of maintenance fees in order to remain enforceable.
(b) Design patents receive the same right to exclude, but for a term of 14 years from the date on which the application was filed.
(7) What is the standard for patentability?
(a) In the United States an invention that is novel and not obvious to one of ordinary skill in the art is patentable
(i) Novelty
1. The invention must not be known or used by others in the US prior to invention by the applicant
2. The invention must not be patented or described in a printed publication by others in the US or a foreign country prior to invention by the applicant
3. The invention must not be patented, described in a printed publication, in public use or on sale by the applicant in the US more than 1 year prior to the applicant filing an application
(ii) Non-Obviousness
1. The invention must not be based on differences in what is known or a combination of what is known in the technology which would be obvious to one of ordinary skill in the art
(8) What does “patent pending” mean?
(a) Patent pending is a term used to signify that a patent application has been filed, but a patent has not yet been granted. This term is not regulated and may be used at anytime by anyone, but usually means the technology is patent prosecution and is currently being examined at the USPTO.
(b) Patent Statistics
(i) In 2008 at the USPTO there were
1. 485,312 patent applications filed
2. 771,529 patent applications awaiting action by an examiner
3. 1,208,076 total patent applications pending
(ii) In 2008, the average first action pendency at the USPTO was 25.6 months, with a range of 19.5 to 32.5 months depending on the technology group
(iii) In 2008, the average total pendency at the USPTO was 32.2 months, with a range of 28.2 to 43.6 months depending on the technology group
(9) I have already published, disclosed, sold my invention to the public, does that mean I can’t get a patent?
(a) The United States allows inventors to file a patent application within one year of the date the invention was publicly disclosed, sold or used. If the disclosure, sale or use happened more than one year ago the inventor may be barred from applying for a patent.
(10) How should I document/record my invention during the invention process?
(a) Tips on invention documentation
(i) Use a permantently bound book with consecutively numbered pages to record the invention process and sketches
1. Use non-erasable ink to make all recording in the inventor’s log
(ii) Sign and date the pages of the invention log as you fill them in
1. Avoid back dating pages
(iii) Have a Confidential Witness sign and date the pages of your invention log
1. The Confidential Witness should sign a confidentiality agreement regarding the information you are disclosing to them
2. The Confidential Witness is preferably someone that is NOT a family member
(iv) Document test, experiments, changes, benefits, and failures throughout the process in detail
(v) Document the date and manner of any disclosure of the invention to another party in detail
(vi) Corrections to the inventor’s log
1. Text – put parenthesis around and draw a line through the text
2. Sketches – draw a circle or square around the sketch and draw big X through the area
3. Do NOT erase or use correctional fluid/White Out
(vii) While not necessary, having the pages of the invention log notarized by a notary public will strengthen the authenticity
(viii) Be sure to date and sign with a witness, if possible, all photographs and videos made of the invention, testing, and experiments
ii) Preliminary patentability searching
(1) What is a preliminary patentability search?
(a) A preliminary patentability search is a search conducted before drafting or filing an application. The purpose of the search is to determine what prior art exists, such as published patents, published patent application, or other published literature, that is relevant to the invention. Identifying some of the relevant prior art allows the inventor and practitioner to strengthen a patent application by drafting around the known prior art. A patentability search will not identify every known reference, but will provide references to submit with the application in an Information Disclosure Statement to the USPTO.
(2) Can I do my own patent search?
(a) Numerous resources are available to conduct a limited search on your own for free, such as
(i) Link to USPTO search page
(ii) Link to Google Patents
(iii) Link to esp@ce.net
(iv) Link to freepatentsonline.com
(3) What does a Professional Patent Search Firm provide?
(a) A professional patent search firm will provide a more comprehensive search than can be done on your own with free resources. A professional firm will have an expertise in searching, experience with classification systems, and access to subscription databases which with better search logic capabilities and more complete patent collections. As with most services, in patent searching quality is usually consistent with price. A quality search can typically be performed by a professional firm for $500-$1,500.
(b) We suggest the following search firm, Global Patent Solutions, LLC
b) IIP FAQ
i) What is your confidentiality policy?
(1) We are absolutely committed to maintaining confidentiality and secrecy of all information regarding our clients. We have our own Non-Disclosure Agreement (NDA) which we will complete prior to discussing your invention. This NDA will protect your ideas and assure that we will handle your information in the utmost confidentiality. Alternatively, if you have a confidentiality agreement you would like us to complete we will be happy to do so.
ii) Can IIP guarantee a granted patent?
(1) Patents are granted at the discretion of the USPTO and therefore no one can guarantee that a patent application will successfully grant as a patent. However, at IIP our experience and dedication provides our clients with the tools for success.
(2) Patent success statistics
(a) The percent of patent applications that successfully granted as patents by the USPTO in 2008 was approximately 44%
(b) The percent of patent applications that successfully granted as patents by the USPTO in 2007 was approximately 48%
(c) The percent of patent applications that successfully granted as patents by the USPTO in 2006 was approximately 53%
(d) Link to US Patent Statistics Report
iii) How do I get an international/foreign patent?
(a) While a true “international” patent does not exist, the World Intellectual Property Organization (WIPO) and the Patent Cooperation Treaty (PCT) provide a system for obtaining patents in multiple foreign countries. A patent application filed with the WIPO allows the applicant to designate countries that are members of the PCT. The application then goes through each designated countries patent examination process and may result in a patent issued by the individual country.
(b) Link to WIPO
c) Links
i) USPTO
(1) The United States Patent and Trademark Office (USPTO) has been around for over 200 years with the basic role of promoting the progress of science and the useful arts by securing for limited times to inventors the exclusive right to their respective discoveries. The USPTO is a federal agency in the Department of Commerce. The primary services the agency provides include processing patent and trademark applications and disseminating patent and trademark information.
ii) Intellectual Property Law Server
(1) The Intellectual Property Law Server provides information about intellectual property law including patent, trademark and copyright. Resources include comprehensive links, general information, space for professionals to publish articles and forums for discussing related issues.
(1) The American Bar Association is the largest voluntary professional association in the world. With more than 400,000 members, the ABA provides law school accreditation, continuing legal education, information about the law, programs to assist lawyers and judges in their work, and initiatives to improve the legal system for the public.
iv) MPEP
(1) The manual for U.S. Patent and Trademark Office (USPTO) patent examiners, applicants, attorneys, agents, and representatives of applicants providing a reference to the practices and procedures relative to the prosecution of patent applications before the USPTO.
(1) A great source for the most current patent law news and information.