Do you have dreams of selling your new product to a manufacturer? You’ll probably need a patent.
A United States patent is a grant by the U.S. Government to an inventor giving that person the right "to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States." To be patentable, an invention must be new or "novel" and it must also not be obvious to a "person of ordinary skill in the art." You cannot get a patent on a law of nature, a mere suggestion, or printed matter.
Types of patents:
Utility – These patents protect technological innovations (processes, machines, articles of manufacture, and compositions of matter). Patent protection begins on the day the patent issues and expires 20 years after the date the application was originally filed. This is the most common type of patent.
Design – Design patents afford legal protection of the ornamental design of a useful product. They have nothing to do with how an invention works or how it is constructed. Design patent protection is not as broad that of a utility patent. The life of this type of patent is 14 years from the date the U.S. Patent office issues the patent.
Plant patents may be granted to anyone who invents or discovers and asexually re-produces (by grafts and cuts) any distinct and new variety of plant.
Is your idea patentable?
To be patentable the invention:
Must be a useful process (primarily includes industrial or technical processes, and now also includes "methods of doing business"), machine, manufacture (includes all manufactured articles), or composition of matter (chemical compositions, mixtures of ingredients or new chemical compounds). Essentially, patents can protect (practically anything made by man and the processes for making those things.
The invention must be useful. A machine, for instance, must perform its intended use.
The invention must be novel and not obvious over prior art. Even if it is not exactly as shown by prior art and it has one or more differences over the most nearly similar thing already known, a patent may still be refused if the differences would be obvious to a person who has ordinary skill in the area of the technology relating to the invention.
It cannot be known or used by others in this country, or patented or described in a printed publication anywhere. If the inventor describes the invention in a printed publication or uses the invention publicly, or places it on sale, they must apply for a patent before one year has gone by. If information regarding your invention or innovation is published, the U.S. provides a one-year grace period for filing a patent application to seek patent protection.
A patent cannot be obtained based on an mere idea or suggestion. The inventor must supply a complete description of how the invention is implemented.
The laws of nature, physical phenomena, and abstract ideas are not patentable.
Why apply for patent protection?
Patents allow you to keep a competitor from duplicating the unique technology that is your product. The owner of a patent can also sell the patent application, the patent rights (or parts of it), the license to use it, or use it as collateral.
Patent protection is essential for inventors who want to sell or license their ideas to manufacturers. Most manufacturers will not negotiate with an inventor unless he has filed a patent application. Also, full protection does not occur until a patent is issued.
There are promotion firms who claim they will help inventors sell their ideas to manufacturers, who generally don’t seek-out new inventions. Most persons find that they can promote their new products at least as well on their own.
Before filing a patent application, you may want to know which "prior art" is likely to be relevant in determining whether your invention is patentable. A search of prior art is called a patentability search. Conducting one is a good idea before filing any patent application. A web-savvy inventor can perform a preliminary search using Internet data bases. The United States Patent and Trademark Office (USPTO) home page is at www.uspto.gov. For a comprehensive search with a professional opinion on whether the innovation is patentable, a patent attorney will charge from $1,000 – $2,500.
An infringement or right-to-use search may help determine if your product or process is likely to violate the claims of other patents. Infringement occurs when a person (or company) makes, uses, offers for sale, or sells a product or process that includes all the elements of the original patent claim. This remains true even though the new product or process adds additional elements not included in the other patent. A person who improves patented product by adding additional claims to their improved product may be able to get a new patent, yet still infringe the original.
An analytical examination and search of existing patents may cost $20,000 or more and can take considerable time to complete. Even so, the search cannot guarantee freedom from an infringement question. After a patent is granted, another party may discover pertinent art not uncovered in the original search or by the USPTO. The court may therefore conclude that the patent is invalid and should not have been issued in the first place. Consulting with a professional patent attorney can help you decide if these steps might be helpful or efficient in your particular circumstances.If you have decided to patent your idea, here are the next steps in the process.
Obtaining a patent
To patent an invention, a written application must be filed with the USPTO (United States Patent and Trademark Office). You may file the application yourself, or you may hire a registered patent attorney or patent agent to do so on your behalf. The patent application includes a detailed description of the invention (with drawings) and some specialized legal terms that define the scope of the invention (the claims). Once a patent application has been filed, the product may be marked "Patent Pending." It is not necessary to have a working model of your invention.
Utility patent*: Three separate fees must be paid to the United Stated Patent Office when filing: 1) a filing fee – $330.00, 2) a search fee – $540.00, and 3) an examination fee – $220.00. When the USPTO allows the patent to issue, two additional fees are due: 1) a publication fee – $300.00, and 2) an issue fee – $1,510.00 Not including processing fees and expedited fees. The fees for "independent inventors" and small businesses (small entities) are one-half these amounts.
Design patent: 1) filing fee – $220.00, 2) search fee – $100.00, 3) examination fee – $140.00 4) issue fee – $860.00 Not including processing fees and expedited fees. The fees for "independent inventors" and small businesses (small entities) are one-half these amounts.
*There are also maintenance fees at 3 1/2. 7 1/2, and 11 1/2 years.
A typical utility patent application prepared and filed by a patent attorney costs from $6,000-$11,000. Most of the cost is for attorney's fees, but it is possible to prepare and file the application yourself. The other two types of patents, design and plant patents, are generally much less expensive (about $2,500 or less).
Further negotiations (and about $3,000 in extra attorneys' fees) with the USPTO are usually necessary before a patent is issued. This negotiation process is called "prosecution" of the patent application. Ultimately, the cost of preparing, submitting, prosecuting, and issuing a utility patent takes at least two years. Using the professional expertise of an attorney for the process, the cost may be $8,000 – $12,000.
Doing it yourself costs only $1,500.00 – $2,500.00 in official United States Patent Office fees, but also deprives you of the professional advice that an experienced patent attorney brings to the process.
It is also necessary to pay maintenance fees (from $980.00 to $4,110) after the patent issues to keep it in force. Prosecution costs for design and plant patents are less expensive and they have no maintenance fee schedules. The fees for "small entities" are one-half these amounts.
For more information on fees and fee schedules from the USPTO (United States Patent and Trademark Office) web site, http://www.uspto.gov/
United States patent rights do not extend to other countries, and the rules are different in each country. For patent protection in the U.S., you must file within a year of either publishing a description of the invention or offering for sale a product incorporating the invention. Seeking patent protection outside the U.S. requires that you file your application before you make your invention available to the public. Certain treaties make it unnecessary to apply for patent protection in each individual country, but differing requirements make filing for world-wide patent rights an expensive and involved process which should be handled by a professional patent attorney.
Provisional Patent application
An inexpensive way to begin the patent process is with the provisional patent application (PPA). (The Provisional application filing fee is $110.00 – $220.00) This type of filing allows an individual to publicly show a new invention and have protection of a "patent pending" status for one year. It allows filing without an information disclosure (prior art) statement. To be effective, however, it must contain the same complete description of the invention as is required in a regular patent application. The PPA will prevent the loss of foreign patent rights, so it is a way for inventors to do some preliminary marketing research before undertaking the cost of regular patent application filing. Ultimately, a standard patent application must be filed within a year of filing the provisional if you intend to get a patent issued. The 12-month provisional pendency cannot be extended.
Other sources of information
There is a lot of useful patent information on the internet and in print. An extensive collection of links to patent-related sites is at www.kuesterlaw.com. If you are interested in further reading, a good "how-to" book is "Patent It Yourself", by David Pressman. Another, "Stand Alone, Inventor", by Robert Merrick, received good reviews in the Amazon.com web site.
The above information is not legal advice. For advice concerning your specific situation, consult a qualified attorney.
David J. Arthur, a registered patent attorney with twenty-plus years of experience, co-wrote and edited this article.