The following are questions that are frequently raised by patent clients. They are answered here to refresh the memories of current clients and to help make interested readers more informed. If you need more information, please feel free to contact me at 602-281-6481.
- What is a patent?
- What is the difference between a utility patent, a design patent, and a plant patent?
- What is patentable?
- What is novelty?
- What is non-obviousness?
- What is not patentable?
- What is a patent search?
- Should I have a patent search performed?
- Why can’t I do a patent search myself?
- How do I get a patent?
- What is a patent agent?
- What is a patent attorney?
- Why should I hire a patent attorney instead of a patent agent?
- How long does patent protection last?
- Can I get a patent myself?
- What does patent pending mean?
- How long does it take to get a patent?
- I still have questions – where can I go for more information?
A patent is a set of exclusive rights to an invention. A patent gives the owner of the patent the ability to prevent others from competing with an identical or closely similar product. A patent also gives the owner the right to stop others from using the invention, making the invention, selling the invention, or importing the invention.
A patent doesn’t however, give the owner the right to use, make, or sell the invention. This is a very important aspect of patent law to understand. The ability to make, use, or sell the invention depends on whether the invention conflicts with other, earlier patents or possibly other laws and agreements. So just because you get a patent on something doesn’t mean you can begin selling it – you may be infringing someone else’s rights.
Nevertheless, a patent is a set of exclusive rights, which gives you a limited monopolistic power to negotiate sales, licensing arrangements, or simply achieve a competitive advantage over others who cannot practice your invention.
Lastly, a patent is an agreement with the government, a quid pro quo. In exchange for the limited monopoly, the inventor discloses the patent invention to the public so that others may learn from it and build on it after the patent life runs. Patents thus encourage innovation by fostering the disclosure of information to the public in exchange for the provision of powerful rights to the inventor.
A utility patent protects a functional item, while a design patent protects the ornamental aspects of a functional item. So a utility patent protects the way something works and operates, while a design patent protects the way that thing looks. Plant patents are different beasts entirely – they protect new species of asexually-reproduced plants and last for 17 years from the date of issuance.
For an invention to be patentable, it must be new, useful, not an obvious combination of earlier inventions, and of the appropriate subject matter. Subject matter appropriate for patenting include processes, machines, articles of manufacture, compositions, or any new and useful improvement of any of these.
Novelty means, essentially, that the invention be new. However, there are many technical rules and definitions behind what “new” is. For instance, an invention is new if it hasn’t been described in a printed publication before the inventor came up with it. An invention isn’t new if someone knew about it more than one year before the application for it was filed – but it is new if you told someone about it 364 days before filing the application for it. The rules behind what constitutes “new” are quite complicated.
Non-obviousness requires that the invention not be identical to prior art. Non-obviousness also requires that the invention not be an obvious combination of the prior art. In other words, if the differences between the invention and the prior art are slight enough that the invention would have been obvious to a person skilled in the relevant art, the invention is obvious and cannot be patented.
Lots of things are patentable, but some never are. Ideas, algorithms, theories or forces of nature are not patentable. You can’t patent lightning or the force of gravity, and you can’t patent the Pythagorean Theorem.
Other things like books, movies, literary works, musical compositions are not patentable. Instead, these are works that can be protected with copyright. Similarly, logos and designs that signify the source of a product or service can qualify for trademark protection.
A patent search is a search for prior art that is relevant to the patent. The search covers patents, patent publications, publications, industry literature, and foreign patents. Prior art may be similar in terms of the technological field or in terms of the problem the invention solves. A patent search returns prior art that can be analyzed to help determine patentability, and it can also raise possible infringement issues for the inventor to tackle before proceeding further.
A patent search is a helpful way to decide whether to proceed with a patent application. A patent search that reveals a large amount of highly relevant prior art can counsel an inventor to forego filing an application and thus save a great deal of money pursuing a patent that cannot be achieved. It also familiarizes the patent attorney drafting the application with the boundaries and scope of the prior art. A patent search is a very important step in the patenting process, and can often make the decision whether to file an application.
You don’t have to have a patent search done; there is no requirement that one be performed before filing a standard patent application. However, it is recommended that one we be performed so that you know whether your invention is patentable before you file an application and so that the patent attorney knows the limits of the prior art and thus the permissible scope of the patent’s claims.
You can, but patent searching is a learned skill and a very difficult one. It is more than a simple search through the USPTO’s website or espacenet. A patent search involves understanding and careful parsing of the invention and requires experienced and sophisticated searching techniques. Further, a professional patent search will access a greater variety of disclosures than you can likely tap into, including most importantly, the same database that the Patent Office uses in examining a patent application.
Searching on your own can also be risky in a few ways. First, if you view a prior art reference and mistakenly discard it as irrelevant, that prior art reference can be used later on to invalidate your patent completely. An attorney that has the experience and legal knowledge to analyzed prior art can review the results of a patent search and avoid mistakes like that. Second, many online search services are incomplete; they have gaps in coverage, do not provide results older than a certain date, or may not include foreign references. Third, you may find something that you think knocks your invention out, but a patent attorney who understands the standards of novelty and non-obviousness may be able to find appreciable and patentable differences between your invention and the prior art.
To obtain a patent, a patent application must be filed with the USPTO. The application must disclose and claim the invention. The application’s disclosure must describe how to make and use the invention, and must describe it sufficient detail. The claims must be supported by the disclosure.
After the application is filed, it is examined by the USPTO. Very rarely, the application is immediately approved for issuance. Generally, however examination leads to a series of correspondences between the USPTO examiner and the patent attorney in which the application is argued and amended with the ultimate goal that application is issued as a patent.
A patent agent is a person licensed by the United States Patent and Trademark Office to represent clients in patent proceedings before the USPTO. A patent agent can draft, file, and prosecute patent applications. However, a patent agent is not a patent attorney.
A patent attorney is a lawyer who is licensed by the United States Patent and Trademark Office to represent clients in patent proceedings before the USPTO. A patent attorney can draft, file, and prosecute applications just as a patent agent can. However, a patent attorney can also represent that client outside of USPTO matters, such as in patent litigation, trial and appeal proceedings before judicial courts, and legal negotiations. An attorney can also draft contracts and give legal advice, while a patent agent cannot.
A patent attorney can offer a fuller array of services. A patent attorney can appeal administrative decisions by the USPTO. A patent attorney can file suit for patent litigation. A patent attorney can enter into negotiations for the sale of a patent and draft the licensing or assignment documents for the patent seller or buyer. A patent attorney can dispense legal advice relating to issues beyond patent law. A patent agent cannot do any of these things.
Utility patents offer protection for 20 years calculated from the filing date. Design patents provide 14 years of protection from the issue date.
Yes, you can file and prosecute an application yourself. However, the results may be proportional to your knowledge of and experience with the patent system. Like any professional field, a professional patent attorney has the education, training, experience, and time to write, prosecute, and monitor patents. Before you decide to write a patent application yourself, consider this: the US Supreme Court has on at least two occasions noted that a patent application “constitute[s] one of the most difficult legal instruments to draw with accuracy.” Sperry v. Florida, 373 U.S. 379, 383 (1963); Topliff v. Topliff, 145 U.S. 156, 171 (1892) (“The specification and claims of a patent, particularly if the invention be at all complicated, constitute one of the most difficult legal instruments to draw with accuracy, and in view of the fact that valuable inventions are often placed in the hands of inexperienced persons to prepare such specifications and claims, it is no matter of surprise that the latter frequently fail to describe with requisite certainty the exact invention of the patentee, and err either in claiming that which the patentee had not in fact invented, or in omitting some element which was a valuable or essential part of his actual invention.”).
A label of “patent pending” means that an application for patent has been filed on the product. While the “patent pending” label on its own carries no legal weight, such a marking can deter competition and copying. Patents are not enforceable until the application has been examined and issued, but can be nevertheless be enforced retroactively. A provisional patent application is often used to claim “patent pending.” I have more information about the “patent pending” label here.
The time varies substantially. Currently, it takes about 18 months just to receive an Office Action, and you can expect at least 2 years to obtain a patent application. It can take much longer – some applications takes several years to issue. The length of time depends on the complexity of the invention, the quality of the application, the nature of the prior art, and many other factors.
The United States Patent and Trademark Office has a very complete website, but it can be difficult to navigate. It is available at www.uspto.gov. Or, you can contact Arizona patent attorney Tom Galvani at 602-281-6481.