In this module, we will introduce inventors to the basics of patents and the patent process. 1
An inventor may want to protect their invention by applying for a U.S. Patent.
According to the US Patent and Trademark Office, “A patent is an intellectual property right granted by the Government of the United States of America to an inventor ‘to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States’ for a limited time in exchange for public disclosure of the invention when the patent is granted.” http://www.uspto.gov/patents/index.jsp
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Obtaining a patent is important to protecting your new and useful invention, but it is limited. A United States patent does not protect the invention in any other country. For more information on international patents, visit http://www.uspto.gov/inventors/patents.jsp and click on What is a PCT application? (Patent Cooperation Treaty)
In addition, the US Patent and Trademark Office does not enforce the patents they issue or help the inventor license or sell their product. Therefore, if a person or company steals your idea, the inventor is responsible for prosecuting and retaining and paying for their own legal counsel. Similarly, a patent does not automatically produce profit for the inventor. In order to make money, the inventor must either go into business personally, license the invention, or sell all patent rights. A patent is also not the only means to protect intellectual property rights. Depending on the property needing protection, options include copyrights, trademarks, and trade secrets. 3
In order to obtain a patent, the invention must be:
•Useful: it must have a purpose it fulfills. For example, perpetual motion machines are not useful. •Novel: it must be a new invention, meaning not patented, used, sold, or even published anywhere before.
•Non‐obvious: the invention must not be an obvious solution to the problem.
•Adequately described or enabled: an idea for a product or service must be developed adequately in order to put it into practice (show that it works) or described in enough detail so that it may be built by someone skilled in the technology area. •Claimed in clear terms: the parts of the design that the inventor wants to protect must be specifically written out in the “claims” portion of the patent application. A patent attorney or agent is the best option for preparing patent applications. 4
In order to receive a patent, an invention must meet the first patentability requirement—
utility or usefulness. The USPTO will not grant a patent unless the invention has a useful purpose that it fulfills. While the specifications of the requirement are vague, it is explicitly stated that perpetual motion machines are not useful and therefore not patentable. Another facet to the utility requirement is the need for it to be operative, which means it must be able to actually work and complete its intended purpose. Some patent attorneys employ engineers or scientists to verify the utility of a proposed invention. 5
The second requirement an invention must meet in order to be patented is novelty or newness. The invention cannot be patented if it has been used or known in the United States before it was invented by the inventor. If the invention has already been issued as a patent, printed in a publication, offered for sale or sold, it is considered to be publically disclosed, and therefore not eligible for a patent. It is important to note that if the invention has been described in a printed publication or if it has been patented in any foreign country, the invention cannot be patented in the United States. When a patent application is submitted to the US Patent and Trademark Office, the examiners do a “prior art” search. This search does not just include patents and other patent applications, but also printed publications, journals, catalogs, and foreign publications and patents. Prior art is defined as “previously used or published technology that may be referred to in a patent application or examination report,” and examines all
relevant items that were publically available at the time the invention was created. The USPTO gives inventors a grace period of one year after their invention has been publically disclosed (whether through offering it for sale, filing a provisional patent application, or printing it in a publication) to file a non‐provisional patent application. Once the 12 months pass, the invention will be ineligible for a patent, and the inventor has no means to claim exclusive rights to it. http://www.uspto.gov/patents/resources/general_info_concerning_patents.jsp
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The third requirement for a patent is that the invention must not be obvious. First, it cannot be an obvious solution to a problem. Secondly, it must differ from the next‐closest item in ways that are not obvious. For example, differences in the size or color of an object are obvious, and would not qualify for a patent. That being said, “non‐obviousness” is a vague term that can be interpreted different ways. A patent attorney or agent should be consulted regarding whether an inventor’s solution is obvious or not. In turn, patent attorneys and agents may employ technical experts to determine whether an invention is non‐obvious.
http://www.uspto.gov/patents/resources/general_info_concerning_patents.jsp
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Adequately described or enabled: An idea for a product or service must be developed adequately in order to put it into practice (show that it works) or described in enough detail so that it may be built by someone skilled in the technology area. This provision prevents the patenting of ideas that are not able to be classified as inventions (having a practical purpose they fulfill). Thus, the USPTO requires that an invention be shown to work through detailed drawings and descriptions. If the inventor lacks knowledge in a certain area, such as engineering, and can therefore not build it on their own, they must describe the invention in enough detail that someone with skill in the specific technology area could build it. http://www.uspto.gov/patents/resources/general_info_concerning_patents.jsp
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Claimed in clear terms: The parts of the design that the inventor wants to protect must be specifically written out in the “claims” portion of the patent application. A patent attorney or agent is the best option for drawing up patent applications, as the wording must be very specific in order to guarantee proper protection of the invention. http://www.uspto.gov/patents/resources/general_info_concerning_patents.jsp
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There are certain categories of things which cannot be patented. Laws of nature (i.e. gravity), physical phenomena (wave action, volcanoes), and abstract ideas (generic cure for any disease) do not qualify for patents. Literary, dramatic, musical, and artistic works can only be protected through the Copyright Office (www.copyright.gov). As mentioned before, all inventions must be useful to obtain a patent, and must not be offensive to public morality. http://www.uspto.gov/inventors/patents.jsp
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Filing a provisional application is a way to officially establish a date of conception of the idea with the USPTO. The United States became a first to file county in March 2013. This means that the first person to file for a patent of a unique invention receives it, even if they were not the first to conceive the idea for the invention. A provisional application is inexpensive, and patent officers do not review the applications until a non‐provisional application is filed later. The main benefit of a provisional application is the protection it provides against public disclosure. Once an inventor files a provisional application, their invention is deemed “patent pending.” Thus, they can talk to businesses about licensing agreements, finance their project, or conduct specific market analysis without fear of their idea being infringed upon. Plus, the provisional application provides a 12‐month window for the inventor to decide if pursuing a much more involved and expensive non‐provisional patent is worthwhile. If a non‐provisional application is not filed within 12 months of the provisional application’s filing date, the provisional application will be abandoned, and the invention will most likely no longer be patentable, because an inventor only has 12 months to patent an invention from the first date of public disclosure (sale, publication, provisional application) anyway. 11
Utility: the most common type of patent. Protects a new and useful process, machine, article of manufacture, composition of matter, or improvement of any of the previous. Design: only protects the ornamental exterior design—none of the inner workings of the item. Generally not very useful or profitable for individual inventors.
Plant: protects new asexually reproducible plant varieties, such as rose hybrids. http://www.uspto.gov/patents/index.jsp
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“A utility patent may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, compositions of matter, or any new useful improvement thereof. A design patent may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture.” http://www.uspto.gov/main/faq/index.html Because design patents only cover the ornamental appearance of the object, even minor differences between two designs can each get their own patent. Therefore, a design patent offers limited protection, because it is easy to get around. “Both design and utility patents may be obtained on an article if invention resides both in its utility and ornamental appearance.” http://www.uspto.gov/patents/resouerces/types/designapp.jsp#def 13
Utility patents are, by far, the most common type applied for and granted, but are also the most expensive. As of September 2011, the approximate USPTO fees for a utility patent were about $6000 minimum. A utility patent protects how the product is used, or protects the process employed. If the claims are written correctly in the application, a utility patent can be used to protect the invention against infringement by copies that are identical or even similar to the patented one. 14
For a helpful guide to the patent process, please click on the link. http://www.uspto.gov/patents/process/index.jsp
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Once a patent is granted, the protection only lasts for a limited amount of time. Utility and plant patents last 20 years from the date the application is filed, and design patents last 14 years from the date the patent is granted. Once the patent expires, the information is in public domain, and the inventor can no longer prevent others from making, using, or selling it.
http://www.uspto.gov/inventors/patents.jsp#heading‐5
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The Patent Cooperation Treaty (PCT) is an international agreement for filing patent applications having effect in many countries around the world. Although the PCT system does not provide for the grant of “an international patent”, the system simplifies the process of filing patent applications, lessens the expenses associated with applying for patent protection in foreign countries, and allows the inventor more time to assess the commercial viability of his/her invention. Under the PCT, an inventor can file a single international patent application in one language with one patent office in order to simultaneously seek protection for an invention in the PCT member countries.
Many foreign countries do not allow you to file for a patent after the invention has been publically disclosed. Public disclosure includes but is not limited to: filing a provisional US patent, filing for a non‐provisional US patent, selling the item, publishing the invention, or bringing it to a trade show. If you wish to obtain any sort of international patent, you should look into the options before publically disclosing the invention even within the United States. For more information on international filing, please visit: http://www.uspto.gov/patents/int_protect/index.jsp http://www.uspto.gov/inventors/patents.jsp 18
Inventors should attempt to maintain a realistic view of the odds of their invention being successful. Just because a patent has been obtained does not mean that the invention will make profits for the inventor. There are many patented products that have never been sold or even produced in some cases. Various sources say that very few (some say less than 1%) inventions actually make it to the marketplace. In addition, obtaining a patent is expensive, costing between $10,000 to $20,000 depending on the complexity of the invention. These costs include attorney fees and maintenance fees, which must be paid for the patent to avoid early expiration. Because of the current backlog of applications in the USPTO, a patent application can take up to several years to process. Therefore, an inventor should seriously consider the potential marketability and profitability of their invention before attempting to obtain a patent on it. http://www.ftc.gov/bcp/edu/pubs/consumer/products/pro21.shtm https://uspto.connectsolutions.com/conceptprotection/
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