What is a Patent?
is a right, granted by the United States government to
an inventor, to exclude others from making, using, selling or importing
an invention throughout the United States without the inventor’s
consent. The inventor may license or sell the patent rights defined by
the claims of the patent. There are currently over 7 million United
States patents. Without a patent, anyone can make and sell your
invention without your permission and without paying you. It is
important to note that a patent application only provides patent
and does not provide any enforceable patent rights. Only a granted
patent provides enforceable patent rights to an inventor or business.
There are two main types of patents issued
by the United States Patent Trademark Office: utility patents
and design patents
. Regardless of the
patent ownership rights
you seek patent protection on, you
should establish patent ownership prior to filing the patent application
A utility patent
protects the function of an invention. Utility
patents are granted for any new, useful and non-obvious process, machine,
manufactured article, composition of matter, or any new and useful improvements
to any of these types of inventions. The term of a utility patent is 20
years from the date of filing. Utility patents are usually more desirable
than design patents. We have a chart that illustrates the Typical
Utility Patent Application Process
A design patent
protects the overall appearance of an invention and is granted for any new, original
and ornamental design for an article of manufacture. The term of a design
patent is 14 years from the date of issuance for design applications filed before May 13, 2015 and 15 years from the date of issuance for design applications filed on or after May 13, 2015. A design patent should only
be chosen if the appearance of the invention is important, otherwise utility
patent protection should be sought.
Should You Patent?
Before seeking patent protection, you should first determine whether your
invention is potentially marketable. If your invention is not marketable
you do not need patent protection. When determining whether your invention
is marketable, you should determine if another company would be able to
profit from your invention not only today, but also in the future. If
so, patent protection should be sought so that the company would have
to license the invention from you.
What is Not Patentable
An inventor cannot receive a patent for perpetual motion devices, abstract
ideas, laws of nature, or naturally occurring substances. An inventor
cannot receive a United States patent for an invention publicly disclosed
more than 12 months ago.
includes any sale, exhibit at trade show, or printed
in a publication, with a few exceptions. You should seek a Patent Attorney’s
opinion if you have any questions whether your invention is patentable.
It should also be noted that you do not need a prototype when seeking
patent protection – you only need to be able to describe the invention
in sufficient detail so that one skilled in the art could construct your
Benefits of Patenting
Patenting your invention also allows you to prevent others from making,
using or selling your invention throughout the United States without your
consent. A patent is also one of the few assets that can increase in value
over time. A patent also increases the value of your business because
it is considered a valuable asset by banks and potential purchasers of
There are many ways to financially benefit from a patent. Your patent
may be sold outright to another for monetary remuneration. You may also
license your patent to one or more parties for a percentage of the sale
price. You may also be the exclusive manufacturer of your invention. Whether
you are a business or an independent inventor, a patent is a valuable
asset and is needed to protect you from unscrupulous individuals who could
benefit from your hard work.
U.S. Patent Search
The first step in the patenting process is usually to have a patentability
search completed to determine the patentability of your invention. Our
patent searches are performed in-house using the latest patent search
technology. However, outside patent searchers may be used on selected
After the patent search is completed, Michael S. Neustel (U.S. Registered
Patent Attorney) will compare the relevant located patents to your invention.
A professional patentability opinion by a Registered Patent Attorney along
with copies of the relevant patents will be sent to you upon receiving
and reviewing the patent search results.
After the patentability opinion is received and you have adequately reviewed
everything, you will want to consider filing a patent application. A patent
application includes an abstract, a specification, at least one claim,
a Declaration, a filing fee and usually at least one drawing. A patent
application is held “confidentially” by the USPTO subject to the 18-month
publication rule recently enacted (see below).
A very important part of the patent application is the “Claims”, which
describe the scope of coverage that the inventor is attempting to receive
from the United States government. A competent Patent Attorney is typically
required to receive the most favorable patent coverage for your invention.
Adequate patent coverage ensures that potential infringers will be prevented
from making, using or selling your invention even if they make a modification.
A utility patent application
may be filed as a regular patent application or as a provisional patent
application. A provisional application for patent is a U.S. national application
for patent filed in the PTO under 35 U.S.C. §111(b). A provisional
application allows filing without a formal patent claim, oath or declaration,
or any information or prior art disclosure. It provides the means to establish
an early effective filing date in a patent application and allows the
term “Patent Pending” to be applied for a period of one year.
After one year, the provisional application automatically becomes abandoned.
Patentees need to file a regular patent application during this one year
period to claim priority to the provisional application filing date. While
a provisional application provides a means for reducing the application
filing fees, the total end cost is typically approximately $1,000 higher
than simply filing a regular application.
After filing the patent application with the USPTO, an Office Action from
the USPTO will usually be received within 8 to 14 months. Typically, the
USPTO will reject some or all of the Claims of the patent application
depending upon whether the USPTO Examiner believes it would have been
obvious to create your invention in view of the prior art located by the
It is then necessary to argue that your invention is patentable based
upon the differences between the invention and the art cited by the USPTO
Examiner. Legal arguments and decided case law may be used to refute the
Examiner’s position. A telephone interview with the Examiner may also
be arranged to find agreement on any issues of dispute.
18-Month Publication of Patent Applications
Beginning March 2001, the USPTO began “publishing” utility patent applications
(not design patent applications) filed on or after November 29, 2000 (including
International applications). In exchange for the publication of a patent
application, patentees may be able to obtain a reasonable royalty during
the period beginning on the date of publication of the application by
the USPTO and ending on the date the patent is issued (“provisional rights”).
An application may be published earlier than the end of such eighteen-month
period at the request of the applicant. An application will not be published
if an applicant makes a request upon filing the application certifying
that the invention has not and will not be the subject of an application
filed in another country, or under a multilateral international agreement,
that requires eighteen-month publication.