- 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.
Patent searches
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 curcumstances.
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.
Patent fees:
Utility
patent*: Three
separate fees must be paid to the United Stated Patent Office when
filing: 1) a filing fee - $300.00, 2) a search fee -
$500.00, and 3) an examination fee - $200.00. When the USPTO allows
the patent to issue, two additional fees are due: 1) a publication fee
- $300.00, and 2) an issue fee - $1,400.00 Not including
processing fees and expedited fees. The fees for "independent
inventors" and small businesses are one- half these amounts.
Design
patent: 1)
filing fee - $200.00, 2) search fee - $100.00, 3) examination
fee - $130.00 4) issue fee - $800.00 Not including
processing fees and expedited fees.
*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 $900.00 to $3,800) 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.
For more information on
fees and fee schedules from the USPTO (United States Patent and Trademark
Office) web site, http://www.uspto.gov/main/howtofees.htm
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 $50.00) 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.
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