Module 4 - How to Obtain and Protect Your IPRs in the United States
Lesson 4: Patents
Reading time ~9 minutes
Unlike copyright and trademark protection, patent protection in the United States is dependent upon registration. Unless a patent is granted, patent rights in an invention are not generally protected. General information on patent protection is provided on the following screens. Keep in mind, however, that patent registration is extremely complex and should not be attempted without the assistance of an experienced patent attorney.
The U.S. Patent and Trademark Office (USPTO) issues three kinds of patents:
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Utility patent (20-year term of protection). This patent is the type most people think of when they talk about patents — protection for technological advances and innovation. A utility patent can be granted for any of the following or an improvement on any of them:
- A manufactured article, such as a waffle maker or a vacuum cleaner
- A machine, such as a photocopier or a computer
- A composition of matter, such as a medicine or a carpet cleaner
- A process for making or doing something, such as a method for refining oil
- Design patent (14- year term of protection). This patent covers a new and original ornamental design for a manufactured article. The shape or ornamentation can have no functional utility other than an aesthetic one. For example, the shape of a table lamp or an automobile body may be protected by a design patent.
- Plant patent (20-year term of protection). This patent may be granted by USPTO to anyone who invents or discovers any distinct and new plant variety that has been asexually reproduced by grafting or selective cuttings (without seed manipulation).
Note that plant patents differ from plant variety protection. New varieties of plants that are sexually reproduced by seed or are tuber-propagated can be protected under the Plant Variety Protection Act (PVPA). The PVPA is administered by the U.S. Department of Agriculture, and information about the PVPA can be found at: http://www.ams.usda.gov/Science/PVPA/PVPindex.htm.
Public Disclosure
In the
U.S. law allows a 1-year grace period after public disclosure or certain uses or sales of an invention to file a patent application. In contrast, many other countries bar an inventor from obtaining a patent if the invention has been publicly disclosed before a patent application is filed. Therefore, in order to preserve patent rights in foreign countries, inventors should be cautious in deciding when to disclose inventions and when to file applications abroad.
Provisional Patent Applications
If your invention potentially qualifies for a patent, you may consider filing a provisional application for a patent. Filing a provisional patent application, which is relatively easy and inexpensive. Having a provisional application on file will enable you to claim "patent pending" status, a claim which may provide some deterrent to possible infringement.
More information on provisional patent applications is presented later in this lesson.
Nondisclosure Agreements
Another way to protect yourself when pitching an idea is to have prospective licensees sign a nondisclosure agreement before you disclose any confidential information. If someone signs a nondisclosure agreement and later uses the confidential information you disclosed without authorization, you can sue for damages.
You should be aware, however, that large corporations usually have IP or licensing departments specifically set up to handle and manage the inflow of product licensing opportunities. Many of these offices will not accept any submission of a licensing opportunity for which a patent has not yet been issued. Further, many will not sign a confidentiality agreement at all, while many others will be willing to sign only their own agreement, which generally will have terms that are not favorable to you. Thus, it is advisable when pitching an idea to know the person or company to which you are making the pitch and, in any event, to limit what you disclose.
Keeping an Invention Notebook
You can also protect the rights to your idea by thoroughly documenting the dates and milestones related to its creation. You would need to take this step during the process of developing your idea, well in advance of pitching it. Many attorneys advise their clients to keep an invention notebook in which the inventor records the things he or she did and tried to do that led to the development of the invention. It is also a good idea to periodically have the notebook notarized so that you can prove the dates associated with the creation of the idea in court in the event the idea is stolen after you pitch it.
Inventors who are not in a position to independently commercialize an idea are often faced with a dilemma. To make money from the invention, they generally must license the rights to another business, such as a manufacturer or distributor. But in pitching the invention to potential licensees, the inventor runs the risk that the invention may be stolen or no longer protected by law because it has been publicly disclosed.
Unfortunately, if an invention has not yet been patented, the risks associated with pitching it are significant, and it is impossible to fully eliminate them. As with most intellectual property (IP) matters, it is generally advisable to consult with an experienced IP attorney before proceeding. An IP attorney may suggest a variety of strategies, such as:
Conducting a Search of Prior Art
As you learned in Module 3, an invention may be patented if it is new, useful and non-obvious to one of ordinary skill in the art. The "prior art" (i.e., the body of knowledge existing prior to the invention) helps determine whether or not the invention is new and non-obvious. In other words, a prior art search reveals whether or not an invention has already been patented.
Patent attorneys are experienced in conducting prior art searches using resources such as scientific publications, the Internet, and the U.S. patent database.
Because of the complexity of the patent application process, the first step toward obtaining a U.S. patent is generally the hiring of a patent attorney. The USPTO Web site contains a list of registered patent attorneys by geographic region at http://des.uspto.gov/OEDCI/.
A patent attorney will assist the inventor with the two basic steps necessary to obtain a patent:
- Conducting a search of prior art
- Completing and filing a patent application
Patent Examination Process
Examination of a patent application by the USPTO follows these basic steps:
After being assigned a patent application, the USPTO examiner checks if the application is patentable and, more precisely, if the patent application:
- Complies with patent writing rules
- Has a patentable (statutory) subject matter
- Enables a person of the art to implement the invention
- Is useful, novel, and inventive
- Has claims that are supported by the description
If the examiner finds that the invention is not patentable (i.e., it does not meet at least one of the criteria described above), the following steps are taken:
The examiner issues a written rejection of the application, explaining the reasons for the rejection and possibly suggesting changes. Depending upon the reasons for the rejection, the examiner may also suggest abandoning the application.
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The applicant replies to the rejection in a document usually entitled "Remarks." The applicant may also amend the application, which usually consists of changes to the patent claims but can also include descriptions or abstract changes.
The examiner analyzes the applicant’s answer. If the examiner still considers the invention to be not patentable, he or she makes another rejection, to which to the applicant may again reply. When, and if, the examiner makes a final determination that the invention is not patentable, he or she issues a final rejection.
If the examiner finds that the application is patentable, he or she issues a Notice of Allowance, after which a patent is issued.
A U.S. patent application must include:
- A description of the invention, usually accompanied by drawings, plans, or diagrams
- Specific claims that indicate the scope of protection being sought in the patent
The fees associated with a patent application vary depending on the nature of the applicant (individuals pay less than large corporations) and the number of claims made in the application. A schedule of current patent fees can be found at http://www.uspto.gov/main/howtofees.htm. Depending upon the nature of the technology involved, the patent examination process can take anywhere from 2 to 4 years to complete. While an application is pending, a notice of "patent pending" can be placed on marketing materials or the goods themselves to notify the public that an application has been filed, but there is no legal protection for the patent during this period.
For more information on patent applications, go to http://www.uspto.gov/main/patents.htm.
To see an example of a U.S. patent application, go to http://www.uspto.gov/patft/index.html.
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Since 1995, the USPTO has offered inventors the option of filing a provisional application for utility patents. The provisional patent application was designed as a simpler and less expensive way for inventors to get an application on file and begin the process of protecting an invention. A provisional patent allows filing without any formal patent claims or any information disclosure (prior art) statement. The provisional patent application was intended to provide the time to further develop and fine-tune the invention and to save inventors from unnecessarily spending thousands of dollars on a full utility patent application until after they were more technically and/or financially ready to complete the requirements.
The provisional application provides the means to establish an early effective filing date, which may be important in establishing the priority of the invention over other similar inventions or in defining what prior art will be compared to the invention during examination of the full utility patent. However, it is important to understand that a provisional patent application provides no legal protection for the invention, is itself never examined, and acts only as a “placeholder” for the full utility application. If a utility application is not filed within the year, the provisional application is abandoned, and the inventor can no longer benefit from the earlier filing date.
Patents are subject to the payment of maintenance fees to maintain the patent in force. These fees are due at 3½, 7½ and 11½ years from the date the patent is granted and can be paid without a surcharge during the "window period," which is the 6-month period preceding each due date (e.g., 3 years to 3 years 6 months).
Failure to pay the current maintenance fee on time may result in expiration of the patent. A 6-month grace period is provided when the maintenance fee may be paid with a surcharge. The USPTO does not mail notices to patent owners that maintenance fees are due.
A current schedule of patent maintenance fees can be found at: http://www.uspto.gov/main/howtofees.htm.
You have now completed the lesson on protecting a patent in the United States.
- If you wish to learn about protecting your patents abroad, select Module 5 from the menu on the top left of this screen.
- If you would like to read about protecting trade secrets in the United States, continue with this module.