Frequently Asked Questions for Novice Inventors courtesy of YouInventIt.com

Why should I patent my invention?

A patent allows you to protect your idea and generate money with it. Without patent protection, another company or individual can freely copy your idea. Once you start the patenting process, you can tell others about your invention without losing your patenting rights or having it stolen. This allows you to market your invention for sale or licensing.

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What benefits come from patenting my invention?

You are granted a right to prevent others from making, using, selling, offering for sale, or importing your patented invention for a limited time (twenty years from the application's filing in most cases). This is a powerful right because it is a limited monopoly that may give you significant market advantage.

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Does an invention have to be a totally new concept?

Absolutely not. In fact, most inventions are improvements upon existing products and devices. As long as your invention is novel and non-obvious from that which is already known in the public, you may receive a patent upon it.

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Do I have to use a patent professional?

No, you do not have to use a patent attorney or agent. However, the patenting process is difficult and complex. The patenting process is filled with a lot of procedures and rules that lead most individuals to seek professional assistance. Also, getting professional assistance will vastly improve the likelihood of your invention being granted a patent. Patent attorneys have the technical and legal skills necessary to represent inventors.

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Why do I need a patent attorney to write my patent application?

The original patent application filing is the most important step in the invention/patenting process because you cannot add new information later.

The mistake that most inventors make is to narrowly describe and claim exactly what they have invented and nothing else. This is bad because you will almost always be entitled to far broader scope than you could possibly imagine. For example, if you were to need to connect two pieces of metal together, and in the original filing you mentioned only connecting the metal pieces by using bolts, your patent may not include and could not be amended later to include other methods of connecting the pieces of metal, such as nuts, rivets, welding or glue. This simple example illustrates how important it is to know the intricacies of patent law and patent claim drafting, which is why companies and experienced inventors hire patent attorneys rather than going it alone.

Also Inventors tend to be "Penny wise and Dollar foolish" Think of it this way, isn't it better to pay more money and get a Patent Issued then to spend anything and NOT have it issued?

If you are not convinced with respect to hiring a patent attorney rather than going it alone, please read the Federal Circuit's recent decision in Chef Am., Inc. v. uLamb-Weston, Inc. (Fed. Cir., February 20, 2004). )This case clearly illustrates that simple, careless, uncorrected mistakes can and do lead to worthless patents.

The case centered around U.S. Patent No. 4,761,290 which contains a claim that recites a step of "heating the resulting batter-coated dough to a temperature in the range of about 400'F to 850'F." The court ruled that the claim required the dough itself, rather than the oven air, be at a temperature of 400-850 degrees. Therefore, you can put the dough in an oven that is heated to 400 - 850 degrees without infringing the patent!

Simply put, if you do not use the right tools, you might as well watch your money fly out the door!

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Why use a patent attorney and not a patent agent?

Patent attorneys and agents are professionals who have a technical background sufficient to sit for and to pass the registration exam offered by the United States Patent and Trademark Office. However, patent agents are not attorneys and cannot render legal advice beyond the patenting of an invention.

A registered patent attorney has attended law school and has passed at least one state bar exam. The patent attorney can render legal advice beyond the preparation of patents in areas such as patent infringement and trademark and copyright protection. Also, a patent attorney can assist you and help protect your rights in negotiating the sale or licensing of your invention.

What is a Patent Attorney

  • A patent attorney is somebody who has completed law school passed at least one state bar exam and is registered with the Patent and Trademark Office.
  • To be registered with the PTO one must have the proper scientific background and pass an extremely difficult test where the pass rate is around 40%.

What is a Patent Agent

  • A patent agent is somebody who is registered with the PTO but is NOT an attorney.
  • A patent agent can only write a patent for you.
  • A patent agent is not bound by the attorney/client privilege rule or the attorney's code of ethics.
  • A patent agent cannot:
    • Give you a patent analysis or infringement opinion
    • Enforce your rights as a patent holder
    • Help you with licensing or any other legal matter.

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How long will it take for me to get a patent issued for my invention?

The patent length varies from less than a year to three or more. If the time takes too long due to the fault of the United States Patent and Trademark Office, you can petition to have time added to the length of your patent.

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How do I profit from my Idea?

To profit from your invention you need to:

  • Sell you idea to a company
  • License your idea to a company or several companies
  • Sell your patented idea to consumers on your own

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What are my chances for having my invention patented?

No professional can or should be able to give you a percentage. Whether your invention is going to be granted a patent is dependent upon what is already known in the prior art (for example, issued patents, books, journals, websites, etc.). If you opt to have a patent search performed, then you significantly increase the likelihood that your invention will be patentable. However, even a patent search may miss some piece literature or obscure patent that a patent examiner may cite against your invention. If you do not try though, you will never know whether your invention was novel or not, or more importantly, profitable.

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Do I need to have a prototype of my invention completed prior to filing a patent?

No. As long as you can describe how it could work or be made, then this is sufficient.

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What is a Patent Search?

A patent search can be an important initial step in applying for a utility patent, provisional patent application, or design patent. After I review your idea for patentability, I recommend having a limited patent search* completed to evaluate your likelihood of receiving a utility patent or design patent. based on the limited patent search, I will present options available to you.

If no exact match of your idea or invention is found during the limited patent search, you have a choice of whether to commit to immediately going forward and having a utility patent application, provisional patent application, or design patent application prepared and filed with the united states patent and trademark office. If you would prefer to improve the likelihood that your utility patent application or design patent application will be allowed by the patent office, you may have a complete patent search performed.

With a complete patent search, a professional patent searcher will conduct an expanded search of issued patents and other relevant literature. The relevant utility patents and/or design patents, and other literature will be carefully analyzed by me, a registered patent attorney, to see if your invention is novel and non-obvious. I will then prepare a patentability opinion stating whether your invention is likely to receive a patent.

Limited patent search is not conclusive or exhaustive. No legal opinion concerning patentability is offered based on a limited patent search.

If you find this confusing or would like a friendly person to answer all your questions please contact us at your earliest convenience.

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What is Patent Length?

The patent length or, more appropriately, average patent pendency is the period of time measured from a patent application's filing until a particular event such as allowance (patent is granted) or first Office action (a response from a patent examiner). How long your invention waits at the Patent Office for examination depends on how many applications are presently on file awaiting review at the United States Patent and Trademark Office (USPTO). Also, time until your patent is granted can vary depending on what type of invention you are filing because different patent application examining groups have different amounts of patent applications pending (backlog). With all non-provisional utility patent applications and design patent applications, the USPTO examines these for patentability.

Provisional patent applications are unlike utility patent applications discussed above. A filed provisional patent application will get your invention "patent pending" status. However, the provisional patent application will not be examined. A provisional patent application will simply hold your file date (priority date) for when you file your new utility patent application based on the provisional patent application. While the costs are often quite a bit smaller for a provisional patent application compared to a utility patent application, you are simply increasing your ultimate expenses. A utility patent application must be filed based on your provisional patent application within one year from the date you filed your provisional patent application, otherwise you lose your earlier filing date. Because you waited additional time to file a utility patent application, you ultimately increased your waiting time until you get your patent issued or denied.

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What is a Application for Patent?

A document comprising a detailed explanation of an invention, any needed drawings, and often one or more claims filed for examination and approval by the U.S. Patent and Trademark Office.

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What is Infringement?

An unauthorized use of a party's legal right such as to a patent, copyright, or trademark for which a lawsuit may be commenced to recover money damages and to stop further unauthorized uses.

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What is an Inventor?

A person who contributes a significant creative portion, even if small, into the development of an invention.

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What is an Assignment?

A transfer of ownership of a right such as to a patent, copyright, or trademark to another for a lump sum or royalties on future sales. (Compare to License.)

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What is a License?

A grant of permission for a limited time from an owner of a legal right such as to a patent, copyright, or trademark to make, use, sell, or import a protected article for the payment of a fee or royalty.

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Can I disclose or talk about my 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, advertised for sale, or sold in the U.S. and more than one year passes, the invention is no longer patentable. What does it mean to be "On Sale"? * 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 arises 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.

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What is the difference between a utility patent and a design patent?

A utility patent protects an invention's function and usefulness whereas a design patent protects the aesthetic aspects of a device. An example of a utility patent could be a new design of a golf club head that allows a golf ball to travel further when hit compared to existing club heads. If your golf club had a novel shape to its club head for example, you could get a design patent on it as well. Utility patents are more beneficial because they offer much greater protection in that they are more difficult to invent around. Also, utility patents last for 20 years from filing whereas design patents last only 14 years from being issued. Design patents are useful in protecting shapes of devices that in some cases are not eligible for trademark or copyright protection. Note that many devices are eligible for simultaneous protection through utility patents, design patents, trademarks, and copyrights. The best way to maximize the protection of your design is to consult with an attorney who specializes in intellectual property such as me.

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What is a Non-Disclosure Agreement?

A legally binding contract between two parties promising to treat specific information confidential and not disclose it to others without permission.

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What is the One-year Rule?

A patent application must be filed within one year of any public disclosure, sale, or offer for sale of the invention or item produced by the invention.

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What is a Patent Agent?

A non-attorney with technical training who is registered by the U.S. Patent and Trademark Office to draft, file, and prosecute patent applications.

  • A patent agent is somebody who is registered with the USPTO but is NOT an attorney.
  • A patent agent can only write and prosecute a patent application for you.
  • A patent agent is not bound by an attorney/client privilege rule or an attorney's code of ethics of a State Bar.
  • A patent agent cannot:
    • Provide you with any infringement analysis or opinion;
    • Enforce your rights as a patent holder;
    • Help you with licensing or other legal matters except as noted above.

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What is a Patent Attorney?

An attorney who is licensed to practice law AND is also registered to practice before the U.S. Patent and Trademark Office.

A patent attorney is somebody who completed law school, passed at least one bar exam and is licensed to practice law in a state, and is registered with the Patent and Trademark Office. To be registered with the USPTO, the attorney must have the proper scientific or engineering background and pass an extremely difficult exam that has a pass rate often around 40%.

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What is a Patent Examiner?

U.S. Patent and Trademark Office employee who examines a patent application to determine whether an invention is allowable.

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What is Patent Pending?

A status obtained by filing a patent application with the U.S. Patent and Trademark Office. The owner of the invention may mark a product with the term "Patent Pending" to warn potential infringers.

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What is a Patentability Search?

A search for any documents, particularly previously issued patents, that will show whether an invention is truly novel and non-obvious and therefore eligible to receive a patent.

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What is a Patentable Invention?

A novel, nonobvious, and useful invention or improvement of an article of manufacture, a machine, a composition of matter, or a process may be patented.

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What is a Prior Art Reference?

A publication, published patent, or other document that reveals all or a portion of an applicant's invention claimed within the patent application.

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What is a Small Entity?

A small company, nonprofit organization, or an independent inventor who is eligible to pay reduced patenting fees to the U.S. Patent and Trademark Office.

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What is the U.S. Patent and Trademark Office?

An organization within the U.S. Department of Commerce charged with overseeing and implementing certain federal laws relating to patents and trademarks.

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I want to file in a foreign country. Are there special rules about disclosing and selling my invention?

If you are interested in foreign patent protection, be aware that the rules in many foreign countries are rigid. Your invention is not patentable in many foreign countries if there has been any public disclosure or any outright sale before a patent application is filed. That is, in many 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 international patent protection is unattainable 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 international patent protection, BE SURE TO FILE YOUR U.S. APPLICATION before you make any sale or public disclosure of the invention and be sure to file internationally within 12 months of filing the U.S. application.

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