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Understanding Patents

A Patent is a monopoly on an invention given to its owner by the government in exchange for the owner telling the world about their invention and explaining how it works. The invention can be any useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof. A patent grants to its owner "the right to exclude others from making, using, offering for sale, or selling" the invention in the United States or "importing" the invention into the United States.


Unlike trade secrets, whose protection remains until it is disclosed, a patent has a limited term to the monopoly. Most patent terms last for 20 years from the date application is made in the United States Patent and Trademark Office. (Design patents are shorter with only a fourteen year period and in some cases the patent office can shorten the term of a patent particularly when it relates closely to another previously issued patent to the same inventor).


There are three types of patents: design, utility and plant. A utility patent is granted for a new and useful invention. Typically this means the structural or functional aspects of the invention. A design patent covers a new and non-obvious ornamental design for an article of manufacture. The design patent protects only the appearance of an article, but not its structural or functional features. A design patent receives 14 years of coverage. A plant patent covers a new variety of asexually reproduced plant (from cuttings and grafts, not seeds). Like utility patents, plant patents last 20 years from the date of application.


Up until approximately ten years ago you could not patent a business method. However the interpretation of the law has changed and business methods are now considered patentable inventions. This area of inventing has seen significant activity in the recent years fueled by the explosion of the internet. On-line auctions, e-commerce, website shopping carts are all examples of technology areas involving business methods which have been the topic for numerous patents.


To be patented, the invention must have novelty and be non-obvious. Novelty is a term of art that means the invention is not known in the “prior art”. Prior art covers previous patents or publication of a similar invention anywhere in the world. Besides novelty, the invention must pass a threshold of “non-obvious”.


Non-obvious means the invention cannot be obvious to anyone skilled in the art. While this article is too short to discuss the meaning of “skilled in the art”, generally this means someone who is knowledgeable about the science or technology used in constructing the invention. Such a person would not ordinarily have thought of the invention without first reading about the invention and being “taught the idea” from the patent.


Anyone, from a private individual to a business owner, who creates an invention and thinks it might be patentable should consult with a patent attorney to find out if the invention is worth patenting. The patent attorney will search the prior art (starting with previously granted patents) to see if there is anything similar to the client's invention. The attorney working with guidance from the inventor will then attempt to  distinguish the client's invention from the prior art.

There are several ways an invention can be distinguished. The most direct is that it is new and has never been thought of before. However, an invention can be also distinguished from the prior art because it is an improvement over the prior art.  


Patent applications are filed with the United States Patent and Trademark Office (USPTO). If the patent application is being filed only for protection in the United States (called a domestic application) it is held secret until the date the patent is granted. However, if you want to have global protection for your invention, you would file an international application, which can be done thru the USPTO.


International applications are published by the patent office 18 months after filing which in most cases is before it has been allowed. The reason for this is a complicated subject. The simple explanation is that the USPTO wanted to harmonize with the rest of the world, which for the most part publishes their applications so that the public can provide commentary on the prior art as it relates to an invention. In the US, the prior art analysis is conducted solely by the Patent and Trademark Office.


Your rights in a patent are pending while the patent application is being reviewed by the USPTO in a process known as patent prosecution. Think of the patent as a property right, like purchasing a car. In the case of a patent, once you submit the patent application you have a car but you don’t yet have the “title”. Once the patent is approved by the USPTO, which is called “allowance”, then it publishes (is granted) and at that time your pending right ripens into having title to the property.


Just as with land, once you have title to the property, you can control and dictate who and how your land is used. Some one who copies your invention is a trespasser not unlike some one who comes onto your land uninvited. You can take legal measures to stop them and also penalize them for making illegal copies.


A common question about the patent process is how long does it take and how much does it cost. While every patent application is uniquely different, the following information can be used as a general guide.

The process of obtaining a patent follows several steps, beginning with the invention disclosure, patentability search, preparation and filing of the patent application, prosecution of the application before the USPTO and if granted issuance of the patent. The complete process will typically take two-three years to complete, much of the time which is spent waiting for a response from the USPTO. The length of time also depends upon the particular area of art and which section of the USPTO is handling the patent prosecution.


To prepare and file the patent application can range from several thousand upto $25,000 or more. The greatest number of patents fall into the $5000 to $10,000 range to reach the patent application stage. Out of pocket expenses for third party services utilized for the search might entail a cost of $300 to $1000. Filing fees due to the USPTO at the time of application should be an additional $400 to $500 for small entities and higher for large corporations or if an extensive number of claims are filed. To reach the point of filing the application will take about three to four months of calendar time. This gives the patent attorney adequate time to review the invention, search the prior art and discuss their findings with the inventor.


Once the application is filed, most of the remaining time is spent waiting for the application to make its way through the “que” at USPTO. Once the patent office has reviewed the application it will issue a notice of allowance (unlikely on its initial review) or a denial in the form of an “office action”.


An office action gives the inventor the opportunity to address any objections to patentability raised by the patent examiner. The typical patent application will have one to three office actions, at which time the USPTO points out why the patent cannot be yet allowed. Changes to the patent application which address and overcome the patent office objections are called “amendments”.


Finally once the amendments have satisfied the patent examiner, a notice of allowance will be issued. The “issue fee” for the patent is paid and the patent issues with its patent number. Issue fees on essentially the same amount as the original application fee. As stated earlier, to get to this point is typically twenty-four to thirty-six months from the date the application was first filed.


Since this is a rather expensive and time consuming process, we typically offer our clients the opportunity to assess the patentability of their invention before committing to spending thousands of dollars on a patent application. We l perform a “patentability scan” which is in many ways a “mini” patent search for prior art. This usually costs $1000 to $1500 and can be accomplished in a few days. Based on the results of the findings, our client can then make an intelligent decision on whether the invention is worth pursuing.


If you need more information or wish to discuss specific aspects of an invention you may be currently considering as a candidate for a patent application, contact our office and we will be happy to arrange a fee-based consultation.

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