Patent FAQs

 

What is a patent?

A patent is a type of intellectual property right that gives the patent owner the exclusive right to prevent others from making, using or selling the invention described and claimed in the patent. It is a common misconception that a patent protects its owner from infringing a patent belonging to someone else, but that is not the case. A patent is often called an “exclusionary right” because it gives its owner the right to exclude others from taking some action (i.e., making, using, or selling the patented invention). However, it does not give the patent owner the right or permission to make or use his or her invention.

For example, if Patent Owner A has obtained a patent related to a particular aspect of her product, some other aspect of that same product might be protected by Patent Owner B. In that instance, Patent Owner A would need to obtain permission from Patent Owner B before she could make and sell her product. Otherwise, without the necessary permission, Patent Owner A risks being held liable for patent infringement.

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Who owns an invention?

Under U.S. law, the individual inventors are the owners of any patent application filed in the U.S. However, ownership of a granted patent (or a pending application) can be, and commonly is, transferred or assigned to another individual or business entity. Most commonly, inventions are assigned from an employee/inventor to the inventor’s employer, as a condition of his or her employment. We commonly assist clients in sorting through ownership issues relating to their inventions and in preparing any necessary assignments to properly transfer ownership of a patent or patent application.

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Are there different types of patents?

Yes, the U.S. Patent Office grants three different categories of patents.

The first category of patent granted by the U.S. Patent Office is the utility patent. It is the most common form of patent granted. Utility patents protect useful products (devices, articles of manufacture, chemical compositions) and methods or processes. A single product may be covered by several utility patents that each protect different aspects of that same product. For example, a simple device having no moving parts, such as a threaded fastener or a screwdriver, may be protected by several patents. A complex device, such as a computer, may be protected by tens or hundreds of patents.

The second category of patent is the design patent. Design patents protect the ornamental and aesthetic features of a product. One limitation of design patents is that they do not protect the underlying functional features of the product. In other words, if the shape or appearance of a product is dictated by its function, that portion of the product may not be protectable under a design patent.

As with utility patents, a single product may be covered by several design patents. Furthermore, a single product may be protected under both utility and design patents at the same time. In fact, there are a number of strategic advantages that are offered by protecting a product under both utility and design patents. Determining whether to pursue utility patent protection, design patent protection, or both depends on the nature of the product and the client’s business objectives.

Lastly, plant patents are the third category of patents granted by the U.S. Patent Office. Plant patents protect new and distinct varieties asexually reproduced of plants. These are the most rare form of patents granted.

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What is a provisional patent application?

Countries throughout the World, including the U.S., award patents to the first inventor to file a patent application in that country. For this reason, filing a patent application covering an invention and receiving a filing date that pre-dates all other inventors’ filing dates for the same or a similar invention may be critical for securing patent protection on the invention. One primary advantage of a “provisional patent application” is that it can provide this all-important filing date.

A provisional patent application is typically an abbreviated form of a regular (or “non-provisional”) utility patent application. A provisional patent application is not examined by the Patent Office and, therefore, never results in the issuance of a patent. A provisional patent application is usually shorter and more informal than a regular patent application, and the filing costs are significantly less. For these reasons, clients often find filing provisional patent applications to be an attractive first step towards obtaining patent protection in the U.S.

Importantly, to take advantage of the early filing date afforded by their provisional patent application, patentees must file a corresponding regular (non-provisional) patent application claiming priority to the provisional patent application within 12 months of filing their provisional patent application.

Provisional patent applications can be useful where research relating to an invention is ongoing and improvements are expected within one year. They are also useful when additional time is needed to evaluate the potential marketability of the invention, to obtain financing, or to arrange manufacturing or licensing.

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How does a non-provisional patent application differ from a provisional patent application?

A regular patent application must provide a full written disclosure of at least the most critical (i.e., potentially patentable) aspects of an invention. A set of drawings illustrating various aspects of the invention, including every feature that is claimed, typically accompanies the written description. A set of claims is provided at the end of the written description which sets forth the scope of protection sought by the application for the invention.

A provisional patent application is typically an abbreviated, less formal form of a regular patent application. A provisional patent application is never examined and never results in the issuance of an issued patent. Since a provisional patent application is not examined, there are no requirements regarding what a provisional patent application must contain. However, at a minimum, and like a non-provisional patent application, a provisional patent application should include a detailed disclosure of the invention. Another common distinction is that provisional patent applications typically do not contain “claims,” whereas a non-provisional patent application must contain one or more claims.

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What is prior art?

Generally, “prior art” is a legal term that refers to information that was made publicly available before a given date and that may relate to the novelty of claims contained in a patent application. For more information on this topic, see “What is an effective filing date?

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What is an effective filing date?

The “effective filing date” for a claimed invention in an application for a patent is the cut off point for prior art that may be cited in the examination of that application. Only prior art that was publicly available prior to the effective filing date of a given application may be cited by an examiner in rejecting that application. For that reason, it is advantageous to have the earliest possible effective filing date.

The effective filing date is defined as the earlier of: (1) the actual filing date of the patent or the application containing a claim to the invention; or (2) the filing date of the earliest priority document to which the patent or applications claims priority. A priority document may be a provisional, non-provisional, international, or foreign patent application. For that reason, many patentees file provisional patent applications in order to obtain a early effective filing date to cut off prior art even though they may not be prepared to file a regular non-provisional patent application.

If a patent application (Application #1) is the first to be filed in a series of related patent applications, its actual filing date and effective filing date are the same. If a second application (Application #2) is filed later and claims priority to Application #1, its effective filing date would pre-date its actual filing date. In that case, even though Application #2 was actually filed after Application #1, the prior art cutoff date for Application #2 would be the filing date of Application #1. In effect, when determining citable prior art, both applications are treated as if they had been filed on the same day, namely the day Application #1 was filed.

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What are patent claims?

In addition to the written description, a non-provisional patent application includes a set of “claims” that define the limits of the invention protected by the patent. A regular patent application must include at least one claim and typically includes around 20 claims. Each claim is a single sentence that describes some aspect of the invention. To be found allowable by the patent office, a claim must meet the standards for patentability. In general, claims must include some new patentable feature that is not disclosed by the prior art. (See “What is prior art?”) Additionally, any differences between the feature claimed in the patent application and the prior art must not be obvious. For more information on this topic, see “What are the standards for obtaining a patent?”.

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What are the costs for preparing and filing a patent application?

The cost for preparing and filing a non-provisional patent application in the U.S. can vary widely depending on a number of factors. One factor that impacts the cost is the complexity of the technology involved. For example, the cost of preparing an application for a simple device having no movable parts will likely be significantly less than a more complex device. Inventors frequently believe that their device is simple and the costs for preparing an application, therefore, should reflect that simplicity. However, that generally is not true. In our experience, the majority of technologies fall in the minimally complex to moderately complex range and the costs to prepare a quality application are between $7,000 and $12,000, plus drawing and filing fees.

Other factors that can impact this cost are the quality and depth of the disclosure provided to the patent attorney by the inventor. Inventors that initially provide only minimal information to their patent attorney can expect to spend much more on their patent application than those inventors who have spent the necessary time and effort to put together a quality, comprehensive disclosure of their idea. The reason for this is that the patent attorney will spend less time requesting and organizing information regarding the invention if that information has already been provided by the inventor.

Another factor that can impact cost relates to the number of new and alternative versions of the same invention that that inventor asks the patent attorney to include in the patent application. Patent applications that are more focused and have 3-4 variations will cost significantly less than patent applications that are less tightly focused and have 8-10 different variations.

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What happens after a patent application is filed?

Once a regular (non-provisional) patent application is filed with the U.S. Patent Office, it is sent to a patent examiner for consideration. The examination process does not begin immediately. Due to backlogs of earlier-filed applications, there is typically an initial waiting period before the examination process starts. The length of this waiting period varies based on the technology involved. However, one to two years or more is common. There are a number of options for accelerating the examination process. If you are interested in these options, please discuss them with one of our patent attorneys.

Once the examination process begins, the examiner searches issued U.S. and foreign patents, and sometimes searches other literature as well. The examiner studies the application to determine whether, in light of the prior art located in her search, a patentable invention is claimed.

In most cases, the examiner initially rejects the claims submitted in the patent application, and states his reasons for doing so in a document called an “office action.” The patent attorney will provide a copy of the office action to you. Typically, the attorney will review the office action and will consider the reasons for rejection, which may include a review of one or more prior art references cited by the examiner. This initial review is important because it allows the attorney to provide you with thoughts and guidance regarding the office action, including whether and how to respond. Our typical practice is to review the office action and to prepare a written summary and recommendations for a response prior to contacting the client.

Most applications are rejected based on one or more prior art references. In those cases, the examiner asserts that the application contains claims that are so broad that they encompass the prior art. This type of refusal is very common and is not an indication that the patent application was prepared improperly. In fact, quite the opposite is often true. A skilled patent attorney aims to secure the broadest patent protection possible. Initially drafting the claims broadly so that they cover the prior art helps to ensure that broader coverage could not have been obtained. Also, a prior art refusal is not an indication that the invention is not patentable. Many times, all that is required to secure a patent is amending the application to narrow the scope of the claims, and providing legal arguments to the examiner to distinguish the claimed invention from the prior art, or both.

Next, clients must decide whether to continue the prosecution of the application by filing a response to the office action or to allow the application to become abandoned. The back-and-forth process of receiving an office action and then filing a response is called the “prosecution” of the application. Prosecution continues until the examiner allows the claims or makes his rejection of the claims final.

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What are the standards for obtaining a patent?

To be found allowable by the patent office, a claim must meet the standards for patentability.
First, the patent application must include one or more claims that each include some feature or aspect that is new and has not been previously disclosed in the prior art. This is often called the “novelty” requirement. The novelty requirement is codified at 35 U.S.C. §102. Under Section 102, the claimed invention must not have been previously patented, described in a printed publication, or in public use, or on sale, or otherwise available to the public before the effective filing date of the claimed invention.

There are a number of exceptions to this general rule. One such exception is that disclosures made by the inventor herself or derived from the inventor less than one year after the effective filing date of a patent application are not considered prior art as to the invention claimed in that application. This is just one exception and there are many others that may apply to your particular case. You should contact a knowledgeable patent attorney regarding the specific facts of your case.

Next, the claimed invention must not be “obvious” when considering the prior art. This is often called the “nonobviousness” requirement, which is codified at 35 U.S.C. §103. Under Section 103, a patent application may be rejected if the invention claimed is an obvious combination of two or more prior art references. It may also be rejected if it is an obvious modification of a single prior art reference. To overcome an obviousness refusal, a skilled patent attorney can often disqualify a cited prior art reference or can demonstrate that the combination of references or the modification proposed by a patent examiner is not obvious.

Lastly, the invention must be adequately disclosed and claimed in the patent application. These requirements are codified at 35 U.S.C. § 112. In exchange for the protections granted by a patent, a patentee must provide a sufficient enough disclosure to teach the public how to make and how to use the invention. Additionally, the claims of the patent application must be precise, clear, correct, and unambiguous.

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What if my application is finally rejected? Can I appeal?

Under certain circumstances, the examiner can make the rejection of the application “final.” One key difference between a final and a non-final rejection is that, once a rejection is made “final,” the examiner is not required to accept further amendments to the claims.

The term “final” is somewhat misdescriptive because there are options for continuing the examination process even after a final rejection. After a final office action, the applicant can respond by (1) appealing the examiner’s decision, or (2) request a new round of examination by filing a “Request for Continued Examination” (RCE). In either case, a fee is required.

When an appeal is filed, the case is first considered by the Patent Trial and Appeal Board (PTAB or “Board”). If the decision of the Board is not favorable, then the Board’s decision can be further appealed to the Court of Appeals for the Federal Circuit in Washington or a civil action may be filed against the USPTO’s Director in the U.S. District Court for the Eastern District of Virginia.

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What happens after a patent is granted?

After the U.S. Patent Office grants a patent, three “maintenance fees” must be paid to keep the patent active and enforceable. Maintenance fees are due at 3.5 years, 7.5 years, and 11.5 years after the issue date of the patent. If a maintenance fee is not paid, the patent lapses. Similarly, most foreign countries require the payment of similar fees to keep a patent in force. Some countries, for example, require the payment of “annuities” each year to keep a patent active and in force.

Tracking these deadlines and ensuring the timely payment of these fees can be cumbersome and difficult for the client. This is especially true for clients having a large portfolio of domestic and international patents. An advantage of working with a law firm, such as Luedeka Neely, is that we track these deadlines and maintain a docket of maintenance and annuity fees so that they are paid on a timely basis.

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How long does a patent last?

Different types of patents have different terms.

The statutory term of a utility patent is 20 years from the filing date of its earliest priority application. However, periodic “maintenance fees” must be paid to the U.S. Patent Office in order to keep an issued patent active and to receive the full 20-year term of the patent. Three maintenance fee payments are required and they must be paid at 3.5 years, 7.5 years, and 11.5 years after the date the patent is granted. If patent maintenance fees are not paid, the patent will expire.

The term of a design patent is 15 years from the date the patent is granted. The term of a plant patent is 20 years from the filing date of the patent application. No maintenance fees are required for design or plant patents.

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What is patent marking?

Once a patent is granted, articles that embody the patented invention should be “marked” with a reference to the patent. The purpose of this marking is to provide notice to the public that the article is patented. Failure to appropriately mark an article can preclude the recovery of damages for infringement until effective notice is given.

Traditionally, patented articles were required to be physically marked by placing the word “patent” or the abbreviation “pat.,” along with the patent number, on the article itself or its packaging. Now, as an alternative method, patent owners can use “virtual marking,” which is placing onto the article or its packaging the word “patent” or the abbreviation “pat.” followed by a web address of an Internet posting that associates the patented article with the number of the patent.

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Does a U.S. Patent protect my invention outside of the U.S.?

No. U.S. patents do not provide protection for your invention outside of the U.S. However, a patent application that is initially filed in the U.S. can be used as a springboard for obtaining patent rights in many other countries.

There are several options for obtaining foreign patent protection, including under multinational treaties such as the Patent Cooperation Treaty (PCT) or the Paris Convention. There are also a number of pitfalls that could result in the loss of patent rights or the inability to obtain patent rights in foreign countries. For example, in order to obtain foreign patent protection based on a U.S. patent application, foreign patent applications must be filed within one year of the corresponding U.S. application in most foreign countries. Also, some countries require “absolute novelty” to secure patent rights. In general, if a public disclosure of the invention is made prior to filing a patent application, patent rights in “absolute novelty” countries will be forfeited. This is a summary and each country’s laws vary. For that reason, if considering foreign patent protection, you should consult with a qualified patent attorney regarding foreign patent protection early in the process of disclosing and patenting your invention. Our attorneys can advise you on the various options and dangers involved in securing foreign patent protection.

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More Resources

Learn more about patents with these helpful links

Our Patent Prosecution and Counseling Services

Patent Search and Analysis

Performing patent searches and analyzing search results to determine whether an invention may be patentable.

U.S. Patent Prosecution

Prosecuting patent applications in the U.S. Patent and Trademark Office (USPTO).

Patent Clearance Searches

Performing patent clearance searches to determine whether our clients’ products or services might infringe patents held by competitors.

Patent Licenses

Negotiating and preparing patent licenses.

Patent Applications

Preparing and filing patent applications.

International Patent Prosecution

Working with law firms overseas to arrange for filing and prosecuting patent applications throughout the world.

Technical and Legal Advice

Providing technical and legal advice to help our clients design products and services that do not infringe patents held by competitors.

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