Frequently Asked Questions about Patents by William H. Eilberg, Intellectual Property Attorney

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Frequently Asked Questions about Patents

by William H. Eilberg, Intellectual Property Attorney
Admitted in Pennsylvania and Nevada, USA

Disclaimer: The information on this page is not intended as legal advice. The situations of each person will differ, and what applies to one may not apply to all. I can make no assurance that this page will answer your specific questions correctly and completely. If you have a question, I urge you to contact me, or some other intellectual property professional, to determine the answer to your particular questions.

Is my invention patentable?

Your invention may be patentable if it meets certain requirements. First, the invention must fall within a category of invention that can be protected at all. Secondly it must be new, and sufficiently different from what others have done before. Thirdly, it must not have entered the public domain due to your own efforts to commercialize it.

What types of inventions can be patented?

You may patent a machine, an electronic circuit, a computer program, a process, a chemical composition, and many other useful articles or systems. You may patent a combination of known components, provided that the combination itself was not known before, and is not an obvious modification of what was known.

Are there inventions that can never be patented?

Yes. Certain kinds of ideas do not qualify. For example, the discoverer of a mathematical theorem is not entitled to a patent for the theorem. A pure mathematical algorithm, unconnected with a real-world problem, is not considered patentable.

However, sometimes an invention that might seem inherently unpatentable might turn out to be patentable anyway, if it is properly characterized in a patent application. Thus, a theorem of mathematics, while not patentable in itself, may still be protected when claimed as part of an automated method for solving a practical problem. Part of the job of the patent attorney is to characterize an invention so as to maximize the chance of securing a meaningful patent.

For many years, it was believed that methods of doing business were not patentable. But recent court decisions have held that a method of doing business may be patentable, provided that the method satisfies the requirements for patentability that apply to all other inventions. As a result of such court decisions, many patent applications relating to business methods have been filed.

How special does my invention have to be to deserve a patent?

First, to be patentable, the invention must be "new". This means that the invention must not have been described in a prior patent or patent application, or in any prior printed publication. The invention also must not have been generally known by others.

Secondly, the invention must not be "obvious". In very general terms, an invention is "obvious" if the difference between the invention and the prior art would have been apparent to a person of ordinary skill in the relevant field. The question of "obviousness" is often a difficult and subjective one.

Do I need a design patent?

The patents described above are "utility" patents. A utility patent is what most people think of when they think of patents. A utility patent covers the way an object works. A design patent covers the way an object looks. A design patent protects only the appearance of a product, not its internal structure or its function.

Sometimes, the same idea can yield both a utility and a design patent application. But the two patents cover very different things.

Because a design patent covers only the appearance of a product, a design patent is usually a very limited form of protection. But it is also usually much less expensive and relatively easy to obtain. Also, if a design patent is infringed, it can sometimes be easier to collect damages than in the case of a utility patent.

Some inventors file both utility and design applications when the likelihood of obtaining a utility patent seems small.

Unless otherwise indicated in these materials, the word "patent" is meant to refer to a utility patent.

May I disclose the invention before it is patented?

It is best to keep your invention strictly confidential, at least until you file a patent application. If your invention is placed on sale, or advertised for sale, or sold, in the U.S., and more than one year passes, the invention is no longer patentable.

Thus, U.S. law gives you a one-year grace period. You may sell or advertise the invention, and still obtain a patent, provided that you file the patent application within one year of the first sale, advertisement, or offer.

If you disclose the invention before filing a patent application, a question may later arise concerning whether and when the invention was "on sale", and you may wish you hadn't made the disclosure.

Many times, an invention has been held to be "on sale" even when the inventor did not think it was "on sale". In fact, many major patent infringement suits have been won or lost just on this point. Be very careful in what you do with the invention before a patent application is filed. An "on sale" situation may arise even if an offer is made in confidence. The best practice is to make no disclosure whatever until the application has been filed.

There are some exceptions to the one-year "on sale" rule. For example, the rule does not apply when the invention was sold only for experimental purposes. But you cannot count on the exception applying in your case.

If you are interested in foreign patents, be aware that the rules in most foreign countries are more strict. Your invention is not patentable in foreign countries if there has been any public disclosure, or any outright sale, before a patent application is filed. That is, in foreign countries, there is no one-year grace period. This is known as the rule of "absolute novelty". There are some exceptions to this rule, and you should not simply conclude that your foreign patent is barred, without first consulting a patent attorney. Also, most countries allow you to avoid the problem by filing an application in the U.S. before your first disclosure or sale, provided that you file in the foreign country within one year of your filing date in the U.S. In short, if you want foreign patent protection, be sure to file your U.S. application before you make any sale or public disclosure of the invention.

What about provisional patent applications?

A provisional patent application is a document that discloses the invention, and which stops the "clock" for purposes of the "on sale" rule. It can usually be filed for slightly less money than a regular patent application.

A provisional application is useful to obtain a priority date. This concept is especially important in view of changes in the law, fully effective in 2013, according to which a patent is awarded to the first inventor to file, and not to the first to invent. Thus, there is now more incentive to file sooner rather than later.

A provisional application must be supplemented by a regular patent application within one year of filing, if you want to obtain a patent. Thus, the cost advantage of the provisional may be more imagined than real. Also, if you want foreign patents, the foreign patent applications must be filed within one year of the filing date of the provisional application, which is the same time within which you must supplement the provisional with a regular application.

Some persons erroneously assume that "provisional" can mean "sketchy". But, in order to be effective, the provisional application must describe the invention with the same degree of specificity as is required for a regular patent application. The provisional does not need to include "claims" (described below); it is primarily for this reason that a provisional costs less than a regular application.

Isn't there some kind of paper I can file inexpensively, in the Patent Office, to preserve my rights?

The U.S. Patent & Trademark Office used to allow inventors to file a "Disclosure Document" describing their inventions. The Disclosure Document program was discontinued in 2007.

What should be my first step in obtaining a patent?

Many inventors prefer to begin with a patentability search. As explained above, if the invention was patented or described in a prior publication, it is not patentable. The purpose of a search is to determine whether such patents or publications exist. Since the cost of a search usually is far less than the cost of a patent application, a search enables an inventor to spend a relatively small amount of money before deciding whether to spend a larger amount on a patent application.

A search is not mandatory. If you prefer, you may skip the search and file a patent application immediately. Some inventors have no time to do a search, because they need to file quickly, due to an approaching deadline. Others have confidence in their knowledge of their field, especially where they have recently obtained patents in the same area.

A search also has disadvantages. The search itself costs money, and if your invention is patentable, the total cost of obtaining the patent will be slightly greater with the search than without it. Also, no search is exhaustive; most patent searches are limited to U.S. patents only. A search covering all the literature ever published in the world would cost far more than the cost of a patent application. Thus, the results of a search cannot be taken as a guarantee that the invention is patentable. A search simply enables you to increase your level of confidence in the patentability of your invention.

What does a search cost?

A search costs about $1,000, including an opinion on patentability. The search is done in a computer database of the U.S. Patent & Trademark Office. Since most computer databases do not include the full texts of patents issued before the 1970s, a "key word" search may not reveal older patents. In some cases, it will be necessary to search for older patents in a different way, such as by using the Manual of Classification, published by the Patent & Trademark Office. The nature of the search depends, in part, on the nature of the invention. If the invention does not involve high technology, and if it could have been known before the 1970s, it may be appropriate to search the older records.

How do I apply for a patent?

Assuming you have done a search, and found nothing to bar the patent, or you have decided not to do a search and file an application, the next step is for me to write the patent application itself.

A patent application is a legal document which, if approved, is printed as a patent. In the case of utility patents, the application must include a detailed and complete written description of the invention, and a set of drawings (if the invention can be illustrated by drawings). The application also includes a set of claims, which are carefully written, single-sentence paragraphs which precisely define what the proposed patent will and will not cover.

The claims of the patent application are the most important part, but they are usually the most difficult to understand. Perhaps the most important reason to hire a patent attorney is to be sure that the claims are written correctly. If the claims are too narrow, a worthless patent may issue.

I prepare a draft patent application based on information I receive from the inventor(s), usually by email or by phone. The draft may undergo multiple revisions, as the inventor makes corrections or has new ideas. When the inventor is finally satisfied with the application, I prepare the necessary papers to be signed, and the signed application is sent to the Patent & Trademark Office for filing. I file my patent applications using the electronic filing system established by the Patent & Trademark Office in 2006.

Because it is not permissible to add new material to an application that has already been filed, and because the patent law requires that the application contain a complete disclosure, sufficient to teach someone skilled in the relevant art how to practice the invention, it is important that the application be complete. That is why a patent application may require several drafts.

How much does it cost to prepare the application?

There is no definite answer to this question because the time spent in writing an application can vary considerably, depending on the complexity of the invention, and on the number of drafts required. However, in the average case, in which the application is about 15-25 pages long, the project may take about 15-20 hours of my time. Since my hourly rate is $195, the cost of preparing and filing the application could be about $4,000, possibly more and possibly less, plus government filing fees, plus the cost of drawings. So the total cost of filing, for an "average" case, could be in the area of $5,000-6,000.

How much are the government fees?

Currently, the basic application fee for a "small entity", i.e. an independent inventor or a company having 500 or fewer employees, is about $700, and can be higher, depending on the number of claims in the application. For a "large entity", the rates are doubled. Some independent inventors may qualify for "micro-entity" status, which reduces the fee by half. Note that, though you may be a "small entity" or a "micro-entity", your application might not qualify for such status if you have licensed the invention to a large company, or if a large company has any ownership interest, however small or indirect, in your invention.

How much do drawings cost?

The drawings, if prepared by my patent drafter, usually cost about $75-100 per sheet, but the per-sheet cost can be greater if the drawings are complex.

Is there a way to save on drawing costs?

Yes. Although the Patent & Trademark Office rules set strict standards for patent drawings, it is not necessary to file perfect drawings initially. It is permissible to file with informal drawings, as long as they are understandable to the Examiner. When the application is reviewed by the Examiner, it may then be necessary to submit better drawings to replace the informal ones.

However, be aware that the new drawings must not contain any "new matter" that was not in the original drawings. When the new drawings are submitted, the Patent & Trademark Office will check to be sure this requirement is met. In deciding whether or not to submit formal drawings at the time of first filing, one should consider whether the drawings themselves have significant informational content (i.e. do they illustrate a unique structure?), or whether they are more in the nature of flow charts and block diagrams, where the quality of the drawings is unrelated to the information they contain.

Also, because pending patent applications are now published, the requirements for drawings, even informal drawings, have become s more strict in recent years. The drawings filed with the application must not be so informal that they cannot be properly reproduced in a published version of the application.

What happens after the application is filed?

The application is sent to a Patent Examiner. In mechanical cases, it often takes a year or longer, before an Examiner reviews the application. In some fields, such as electronics, computer software, information technology, or biotechnology, it could be two years or more. In recent years, many cases have taken even longer. But the patent law now gives inventors a chance to recoup that part of the patent term that would be otherwise lost due to excessive delays by the Patent & Trademark Office.

The Examiner does his own search, in an attempt to locate prior patents, or non-patent references, which anticipate or suggest what is recited in the claims of the application. If the Examiner finds such prior art, he issues an Official Action rejecting the claims.

A rejection occurs in probably 95% of all cases. Some patent applications are rejected repeatedly before a patent issues. The reason is that a patent is a government-granted monopoly, and public policy dictates that no monopoly be granted unless it is truly warranted by the inventor's creativity. The Examiner's job is to narrow the scope of the patent granted; the patent attorney's job is to obtain the broadest possible patent for the client.

Indeed, if the patent application is allowed on the first action, it may mean that the inventor did not ask for enough when filing the application. An initial allowance, though gratifying, should be reason to check to be sure that the claims are broad enough to protect the invention properly.

The process by which the attorney negotiates with the Examiner concerning the breadth of the patent is called "prosecution". The latter term has nothing to do with litigation in court.

What happens if my patent application is rejected?

First, keep in mind that a rejection is normal. The Examiner fully expects that you will respond and rebut the rejection.

The Official Action sets a deadline for response, usually three months, though this deadline may be extended by up to three more months, by payment of a government fee.

If the Examiner rejects the application because of prior art, it may be possible to amend the claims to overcome the rejection. Sometimes, the Examiner makes an error in interpreting a prior patent, or misunderstands the invention. In these cases, it may be enough simply to explain the error to the Examiner in writing.

The patent attorney prepares a response, usually called an "Amendment" to the application, and makes written arguments explaining why the invention is patentable.

The business of the Patent & Trademark Office is primarily conducted in writing, but the attorney may speak to the Examiner by telephone or in person, when circumstances so require.

Sometimes, the Examiner's only objections deal with formal matters, such as the attorney's choice of language in the claims. If so, a simple Amendment is usually all that is necessary to secure allowance. Often, the Examiner combines formal rejections with substantive ones, in the same action.

Sometimes, the Examiner's rejection appears nonsensical to the inventor. The Patent & Trademark Office employs thousands of examiners, who vary considerably in ability. Also, keep in mind that the Examiner is trained to analyze the words of the claims, because it is the claims that determine the scope of the patent. If the claims are reasonably broad (as they will be if the patent attorney is doing a good job), the Examiner is more likely to find prior art which contains the features recited in the claims.

What does it cost to prepare an Amendment?

There is no definite answer, because it depends on the amount of time taken to do the work. The time depends on how many references the Examiner has applied, and how many reasons for rejection he or she has given.

In most cases, an Amendment can be prepared in 5-10 hours, but there are some cases in which the amount is less than five hours, and there are many cases which require more than 10 hours. Thus, an Amendment may cost $1,000-2,000, or more.

What happens if the Examiner refuses to grant a patent?

It does happen that an Examiner cannot be persuaded, by written or oral arguments. Then, the only option may be an appeal.

An appeal is made to a board within the Patent & Trademark Office. The appeal may be conducted entirely in writing, but an oral hearing may be requested. Although the appeal board is part of the Patent & Trademark Office, it is sufficiently separated from the Examiner that it can be expected to render a reasonably impartial decision. It happens that the appeal board reverses the Examiner's decision in about one-third of the cases heard.

If the appeal board does not reverse the Examiner's decision, you can exercise further rights of appeal, in the courts. You may choose between two different kinds of court proceedings, one of which is a streamlined appeal to a higher court, and the other including a full trial on the issue of patentability. Naturally, the latter option is more expensive.

What happens when my patent application is allowed?

The Patent & Trademark Office issues a Notice of Allowance, which sets a three-month deadline for payment of the issue fee. For small entities, the issue fee is about $500. If the application was filed with informal drawings, it may also be necessary to supply better drawings at this time. A patent usually issues about two or three months after payment of the issue fee.

How long is the patent in force?

For patent applications filed after June 7, 1995, the patent term begins on the date the patent issues, and ends on a date which is twenty years from the filing date. But the term may be extended to compensate for delays in the Patent & Trademark Office.

If the patent claims the priority of an earlier patent application, the patent term is measured from the filing date of the earlier application. Also, utility patents are subject to payment of maintenance fees (see below).

What are maintenance fees?

To keep a U.S. patent in force, a maintenance fee is due three times during the life of the patent. Such fees are due 3 1/2, 7 1/2, and 11 1/2 years after the issue date. If the maintenance fee is not paid, the patent expires. The fees become higher as the patent ages. For a limited time after a patent has lapsed for failure to pay a maintenance fee, it is possible to revive the patent, by paying a special surcharge to the government.

Maintenance fees are a relatively new phenomenon in the U.S., having been instituted in 1982. But most foreign countries have long required payment of annual maintenance fees, which are often called "annuities".

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William H. Eilberg, Attorney at Law
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