What is a patent?

A patent is a government granted right to exclude others from making, using, selling, or importing an invention without the permission of the patent owner. In the United States, patents are issued by the United States Patent & Trademark Office ("USPTO"). A patent does not grant the patent holder the right to do anything, just the right to prevent others from infringing. In fact, a patented product can also violate another patent.

 

There are three types of patents:

1) Utility Patents. A utility patent is the most common type of patent and may be issued for any new and useful process, machine, article of manufacture, or composition of matter, and any new and useful improvement thereof.

2) Plant Patents. A plant patent may be issued to anyone who invents or discovers and asexually reproduces any distinct and new variety of plants.

3) Design Patents. Design patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture.

These classes are not always mutually exclusive. For example, a new variety of plant may be protectable with a utility patent whether or not it is eligible for plant patent protection. Also, an article of manufacture may have functional elements that are eligible for utility patent protection and other ornamental features that are eligible for design patent protection.

What can be patented?

Almost anything made by human labor may be patentable. Utility patent protection is available for any new and useful process, machine, article of manufacture, or composition of matter, and any new and useful improvement thereof. However, naturally occurring substances, scientific principles, and algorithms are not patentable in and of themselves. For example, a plant extract is not patentable, but a method of extracting or using it may be patentable. Likewise, Einstein's famous equation, E=mc2, is not patentable, but a product based on the application of a scientific principle may be patentable. Although algorithms are ostensibly denied patent protection, software is eligible for patent protection.

Is my invention patentable?

To be patentable, an invention must be new, useful, and non-obvious. Each of these terms has special meaning in the patent law.

The term “new” means that an invention must contain something that was unknown or never done before. A patent will not be granted if the invention was  patented, described in a printed publication, in public use, on sale, or otherwise available to the public before the patent application was filed. There is a limited exception to the novelty requirement for disclosures made less than one year before filing a patent application if the source of the disclosure is an inventor. Very few other countries have any exceptions to the novelty requirement. If patent protection will be sought in any other countries, a patent application should be filed before any public disclosure or use, including secret commercial use.

The term “useful” means that the invention has a useful purpose and also includes operative ability, that is, a machine which will not operate to perform the intended purpose would not be called useful, and therefore would not be granted a patent. Impossible inventions, such as perpetual motion machines, are not  useful.

The term "non-obvious" means that the invention is different from the prior art (earlier inventions in the same field) in a meaningful way. The subject matter sought to be patented must be sufficiently different from what has been used or described before that it may be said to be nonobvious to a person having ordinary skill in the area of technology related to the invention. For example, the substitution of one material for another or changes in size and scale are ordinarily not patentable.

How do I obtain a patent?

Generally, the first step in seeking patent protection for your invention is filing a patent application with the USPTO. However, most inventors research the likelihood of obtaining a patent by having a patent search performed. A patent search looks for the most similar patents or other publications and compares them to the invention to identify the most significant differences.

 

A patent application must include a complete description of the invention in enough detail for a person of ordinary skill in the invention's field to be able to make or use the invention. It should also include one or more claims that define precisely what the applicant believes the invention to be. The claims are the most important part of the patent, because they define the scope of the patentee's rights, and the most difficult to draft.

 

The application is assigned to a patent examiner who issues a decision on whether the application's claims are eligible for patent protection (called an Office Action). The applicant has the right to file a response to the rejection of any claims. This process may be repeated before the Examiner agrees to allow any claims to be patented. An applicant who is denied a patent may appeal to a panel of administrative judges, then to the federal courts. After claims are allowed, additional fees must be paid prior to the issuance of a patent.

Is my U.S. patent enforceable in other countries?

U.S. patents only apply to actions undertaken in the United States and its territories. Patented articles manufactured overseas cannot be imported into the U.S., but they can be imported and sold anywhere else unless patent protection is obtained in those countries. There are also limits on the ability to export some components of patented inventions for assembly overseas.

There are patent systems in nearly all countries. Foreign patent protection can be applied for in a few ways. Most U.S. applicants seeking foreign protection use the processes of the Paris Convention or the Patent Cooperation Treaty ("PCT").

Under the Paris Convention, a U.S. applicant can file patent applications in any other member country within twelve months of their U.S. filing date and have that application treated as if filed in that country on the date of the U.S. application.

Under the PCT, a U.S. applicant must file an international application within twelve months of their U.S. filing date. Eighteen months later, the international application is forwarded to each treaty member country chosen by the applicant and is examined by each country as if originally filed in that country on the date of the U.S. application.

Virtually every country in the industrialized world is a party to one or both of these treaties. If patent protection is desired in a country that is not a member of such a treaty, an application should be filed there on the same day as the U.S. application.

How much does a patent application cost?

The cost of obtaining a patent can vary greatly depending on the complexity of the invention and the quality of the invention disclosure. The cost to prepare and file a utility patent application can vary between $5,000 and $10,000 or more. Provisional patent applications typically cost less to prepare than full applications, but a full (nonprovisional) application based on the provisional must be filed no later than twelve months after the filing date of the provisional. You can help control your costs by setting a realistic budget with a patent professional and by providing detailed and accurate descriptions and drawings of your invention. USPTO fees are also a significant part of the cost of obtaining a patent, but are reduced for inventors that qualify as small or micro entities.

Typically there are additional costs once the application begins examination, after it is allowed, and following issuance. These costs include responding to adverse Examiner decisions, publication and issue fees, and maintenance fees.

Cleere Intellectual Property | Evanston, IL | 630-770-1691 | scott@Cleere-Law.com

Nothing in this website should be construed or used as legal advice. The content of this site is provided for informational purposes only. No attorney-client or other relationship is formed by use of or reliance on any information on this site without the express written consent of Cleere Intellectual Property.

© 2017 by Scott Cleere.

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