Frequently Asked Questions About Patents


Requirements for Patentability:

Q: What are the basic requirements for patentability?

A: For an invention to be patentable, it must be:

1. new, 2. useful, 3. non-obvious and 4. patentable subject matter.

1. For an invention to be new, it must not have been known or used by others in the United States or in any foreign country before the invention was conceived by the applicant.

2. For an invention to be useful, it can not be frivolous, contrary to public morals or a contradiction of the basic laws of nature. A well known example of non-patentable subject matter is the perpetual motion machine.

3. For an invention to be non-obvious, it must not be obvious to the “skilled practitioner skilled in the art.” In other words, even if the invention is new, if a hypothetical person who has access to all of the information concerning that particular field of technology would have considered it to be obvious, the invention will be rejected as being obvious.  This is the question about which the patent attorney often needs to argue with the patent examiner.

4. Patentable subject matter includes processes, machines, manufactured articles, compositions and improvements to patentable subject matter. Typical subject matter that is not patentable includes mathematical equations and laws of nature.

Utility v. Provisional v. Design Patents:

Q: Are there different kinds of patents in the United States?

A: Yes. The information described above applies to utility or provisional patents which protect the function of an invention. Another type of patent is a design patent which protects the ornamental features of an invention. In other words, a design patent protects the way an article looks, while a utility patent protects the way an article operates.

Q: How is a provisional patent application different from a non-provisional application?

A: A provisional patent application establishes a filing date under section 35 USC Section 102(e) of the Patent Statue but is not examined and does not result in an issued patent. Fundamental content requirements must be met but the format of the provisional application is more relaxed than for a non-provision patent application. Claims, a formal oath or declaration and an information disclosure statement are not required with a provisional patent application. The provisional application allows for a one year delay in the filing of a corresponding non-provisional application. The filing fee to the U.S. Patent and Trademark Office for a provisional patent application is currently $130.00 for a small business entity.  More information about a provisional patent application.

Searching the Patent Office Records:

Q: Practically speaking, how is an invention evaluated to determine whether it is patentable?

A: The records of the United States Patent Office are searched to locate all patents and published patent applications that concern related technology. The patents and published patent applications which are located are then compared with the disclosure of the invention to determine whether the invention is new and non-obvious. It is also important for the inventor to provide all literature, brochures, drawings, photographs, web links or other related printed matter to the patent attorney before the patentability search is conducted.

Q: Is it possible to estimate a probability of successfully obtaining a patent after conducting a patentability search?

A: Yes. Although it is not possible to guarantee results, generally there is an 85% or better probability that a patent will issue to the extent described in the patentability report.

Q: How many of the patent applications filed result in an issued patent?

A: On average, more than one out of every two patent applications filed results in an issued patent.

Q: What is the life of a patent?

A: The life of a utility patent is 20 years from the date of filing the patent application. The life of a design patent is 14 years from the date of issue.

Patent Application Basics:

Q: What is included in a patent application?

A: A non-provisional patent application includes: a description of the invention including how use the invention, the best mode known to the inventor for making the invention, one or more claims and usually drawings of the invention. The patent application must also include an oath or declaration signed by the inventor and a filing fee payable to the US Patent and Trademark Office.

Q: Do any other documents need to be filed with the US Patent and Trademark Office for the patent application?

A: Yes. An Information Disclosure Statement (IDS) must be filed within three (3) months after the application has been filed. The IDS includes a listing of all of the prior patents and any other printed literature or any other information relative to the subject matter of the invention.

Q: How important are the claims in the patent?

A: The claims are considered to be the most important component of a patent because they define the specific area protected by the patent grant. Claims in a patent are very much like the boundary lines on a parcel of real estate. They define the “metes and bounds” of the invention. The specification and drawings are used to interpret and understand the claims.

Patent Application Prosecution:

Q: What happens after a patent application is filed?

A: After a patent application is filed, it is assigned to a Group Art Unit and then to a patent examiner within that Group Art Unit. The Group Art Unit is determined according to the specific area of technology of the subject matter of the invention. The examiner evaluates the patent application in comparison to the prior art to determine whether the claims are patentable. It is quite common for the examiner to reject the claims as being obvious over the prior art. It is also common for the claims to be objected to as to form.

Q: How do you overcome rejections or objections presented by the examiner?

A: Objections as to form are generally easily overcome. Rejections based on obviousness require careful analysis and the preparation and filing of a response which shows specific reasons why the claimed invention is not obvious over the prior art.

Q: What kinds of reasons can be used to overcome a rejection based upon obviousness?

A: There are many different ways to persuade a patent examiner that an invention is non-obvious. For example, if a problem has existed for a long time and is solved by the invention, this is an indicator of non-obviousness. Also, substantial commercial success in the market created as a direct result of the invention is an indication of non-obviousness.

Q: Can I file a patent application on my own?

A: Yes. There are many inventors who file their own patent applications “pro-se.” However, this can be risky. The scope of the invention is defined by the claims and if the claims are drafted too narrowly, then it will be possible for competitors to design around the patent without infringing the claims. In such a case, the value of any issued patent will be questionable.

Estimated Costs of Obtaining a U.S. Patent:

Q: What does it cost to patent an invention?

A: There are several costs involved:

First, a search needs to be conducted.  We can conduct a search and prepare an opinion on patentability, including a full set of references cited for $1200.00

Second, a patent application must be prepared and filed. The fee for preparing and filing a patent application ranges from $5,500 to over $10,000.  A written fee estimate is provided with a patentability report for complex or high-tech inventions.

Third, a government filing fee presently is $800 for a small entity.  A small entity has 500 or fewer employees and is not obligated to assign the invention to a non-small entity.

After claims in a patent are allowed, an issue fee of $480 is presently required for a small entity; and maintenance fees are due at 3 1/2, 7 1/2 and 11 1/2 years after the patent issues.

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