Introduction To Patents

What is a Patent?

A patent represents the rights to keep others from making, using or selling an invention. U.S. patents are granted by the federal government. Foreign governments also grant patents to protect inventions in their countries. The patent grant is in the form of a printed document.

An invention must pass certain tests before it will be granted a patent. A written application must be submitted to the U.S. Patent and Trademark Office. An examiner searches the large collection of patents and other literature in the Patent and Trademark Office to find written descriptions of similar inventions. If the invention passes the tests of patentability, a patent is granted.

Types of Patents

Utility patents, which cover such inventions as machines, processes (including software), and chemical compositions, are the most common type of patent and last for twenty years from their filing date. However, patents are also issued for new, original and ornamental designs for manufactured articles and compositions of matter. These “design patents” only last for fourteen years from their issuance date. Patents are also granted for certain new plant varieties, but these are less common. The discussion presented here is limited for the most part to utility patents.

Conditions for Patentability

To be patentable, an invention must be new, useful (or, for design patents, ornamental), and unobvious. Patentable inventions must be processes, machines, manufactured products or compositions of matter (or designs for manufactured articles for design patents).

“New” means that the invention must be different in some manner from anything that came before it. This usually is not a difficult test to pass.

“Useful” means that the invention must have some significant utility in society. The utility test is usually not difficult to pass either.

“Unobvious” means that the invention, at the time it was made, must not have been “obvious” to one who has ordinary skill in the technical field of the invention. That person is assumed to know the pertinent technical information in that field. The test is whether the invention would have been obvious to that person as of the time the invention was made. The “obviousness” test tends to be the most difficult to pass. We look for unusual or surprising features in an invention.

Preliminary Searching

Before a patent application is prepared, it is important to have in mind just what is new and unusual about the invention. For the purpose of learning what is “old,” we usually find it valuable to search the patent records in the Patent and Trademark Office for patents that have been granted for similar inventions. The results of this search may show that their invention is old or that it would have been obvious in view of the disclosures of other patents, and in this situation we would recommend against filing a patent application.

The cost of preliminary searches depends largely upon the difficulty of the subject matter, but commonly runs from $1000-$1400 for straightforward mechanical inventions.

Filing the Patent Application

We have found that close cooperation with the inventor in the preparation and filing of a patent application is very important. We usually need several weeks to prepare the application. Some months after the application is filed, it is examined in the United States Patent and Trademark Office by an Examiner having some technical skill in the field of the invention. The Examiner will perform his or her own search of the Patent Office records, and this search is usually more complete than the preliminary search referred to earlier. The examiner reports the findings to us.

The majority of patent applications are initially rejected, but we then have the opportunity to change the claims in the application and to present arguments favoring patentability. The application is then re-examined by the examiner, and if it is found allowable, a patent is issued.  The term of a United States patent is twenty years from its filing date.

The patent application that we prepare contains a written description of the invention, drawings (if required), and claims. “Claims” are one-sentence paragraphs, carefully worded, that define the boundaries of the invention for which the patent is sought. Claims having a broad scope are generally more desirable than claims with a narrow scope. Considerable effort is expended toward obtaining claims that are as broad as the law will allow.

Timing for Filing the Patent Application

Although not provided for by foreign countries, the U.S. provides patent applicants a one-year “grace period” within which to file a patent application. A patent application must be on file within one year from the date that the invention was first publicly used or placed on sale in the United States, or first described in a printed publication or patent anywhere in the world. These are critical features of the U.S. patent law, and some patents have been found to be invalid because inventors simply waited too long to place their patent applications on file. Most foreign countries do not provide such a “grace period.”

Publication of Patent Applications

U.S. patent applications (filed after November 2000) and many foreign patent applications are published 18 months after filing. Upon publication, the patent application and the patent file history (record of communication between the patent applicant and the Patent Office) are available for public review. One disadvantage associated with publication is that any trade secrets disclosed in the application will become publicized. On the other hand, there is a chance that you could collect a reasonable royalty from an infringer of your patent for the period between the publication date and the patent grant.

Under certain circumstances, U.S. law permits a patent applicant to request that the application not be published. The Patent Office will grant this non-publication request only if the patent applicant certifies that the application will not be filed in a foreign country (or under an international agreement such as the Patent Cooperation Treaty) that requires patent publication. In essence, if you plan to file this application only in the U.S., you may request non-publication. If you decide later to file the application in a foreign country or if you desire to have the application published, we must notify the Patent Office immediately so that the U.S. application enters the publication process. Failure to notify the Patent Office will result in the abandonment of your U.S. application.

Record-Keeping – Interferences

If different people invent substantially the same invention at about the same time, a patent will be awarded to the inventor who can prove that he was the first to invent. The Patent and Trademark Office will initiate an “interference.” An interference is a priority contest between the inventors and commonly takes the form of a miniature trial in which each inventor introduces evidence to show the date the invention was first conceived or thought of and the date when the invention was “reduced to practice,” e.g., actually made in operative form and tested.

Accordingly, it is important to keep good written records showing when inventions were first thought of or conceived, how they were developed, and when they were actually reduced to practice. This evidence should be reliable. The mere testimony of the inventor, not verified by other evidence, generally is not considered very reliable.

An inventor should keep a written record as the invention is developed, as complete and clear as possible. Particularly desirable are drawings and photographs. 

Each written page and each picture, graph and drawing should be signed and dated by the inventor and also by at least one other person, such as a friend or co-worker, who is familiar with the inventor’s work and who has read and understood the information on that page. Large companies often require their technical employees to maintain day-to-day diaries of their work. The diaries (which are actually notebooks) are read and countersigned periodically by at least one co-worker, and then are retained in the files of the company for future use.

Abandonment

The patent law requires an inventor to be diligent in patenting an invention. One may not, for example, place an invention on the shelf for a period of years and then seek a patent only when it appears commercially feasible to do so. There is thus some urgency in proceeding diligently to obtain a patent for an invention. To determine whether an invention has been abandoned, the law generally looks to the intent of the inventor.

Costs

The cost of placing an application on file in the United States Patent Office depends primarily upon the amount of attorney time that is required to prepare the application. This, in turn, depends largely upon the difficulty of the subject matter of the invention. Attorneys’ fees typically may run from about $5,000 for the simplest mechanical inventions to $10,000 or more for highly sophisticated electronic or chemical inventions. To this fee is added the costs of preparing drawings under the strict Patent and Trademark Office rules (normally $300-$600) and the official fees that are paid into the Patent and Trademark Office (typically $400-$500 for independent inventors and small businesses; $800-$1,000 for larger businesses).

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