Who can file a patent application?
There are no restrictions on the identity of a patent applicant. A person of any age or nationality is eligible. Even deceased or insane persons may file applications through their legal representatives. The only requirement in the U.S. is that they are the true inventor(s). Although a patent application must be filed in the name(s) of the inventor(s), ownership may be assigned at the time of filing or any time thereafter.
What types of patents are available?
The U.S. Patent and Trademark Office issues three types of patents. Most are utility patents, which are what people generally envision when they think of a patent. These includes machines, processes, articles of manufacture, and new chemical compositions. Design patents cover the unique ornamental aspects or surface appearance of articles, for which the outer appearance is inseparable from the object itself (such as a soda bottle design). The third category is plant patents. These are relatively specialized and rare patents that cover new types of asexually reproducible plants.
See the Patent Law Overview section for more information about the patenting process.
How much will it cost to get a patent?
The cost for obtaining a patent includes fees chared by the U.S. Patent & Trademark Office and professional services, and can vary significantly depending on a variety of factors. The following is a list of fees charged by the USPTO (as of February, 2010). This is not a complete list; other fees may apply depending on the circumstances. As you can see, many of the fees charged by the USPTO are reduced by half for small entities.
Subtotal (up-front fees)
Subtotal (up-front fees)
Note that Filing/Search/Examination fees are all paid at the time of filing. Therefore, they are cumulatively listed as "up-front" fees. The issue fee is not due until after a notice of allowance has been granted for the patent application. A "small entity" includes independent inventors, non-profit organizations, and businessness with 500 or fewer employees (including affiliates), as long as all parties with rights to the invention also qualify as small entities. Provisional applications are not examined, and thus require only a filing fee (but, of course, can never mature into a patent). After issuance, maintenance fees must be paid at 4-year intervals for utility patents.
In addtion to the USPTO fees, attorney's fees will apply for evaulating, preparing, and prosecuting the patent application. Also, professional drawing draftsmen are usually empoyed to produce formal drawings. The total cost to obtain a "typical" utility patent will be around $7,000. The actual cost may be higher or lower depending on the complexity of the invention, the number and complexity of drawings required, and issues that may or may not arise during prosecution. This is certainly not inexpensive, but a good deal of work is required to obtain a patent. Some large law firms charge substantially higher hourly rates, and may turn away independent inventors who cannot afford their services. Our figures reflect the fact that we have a low overhead and can therefore pass the savings on to our clients. The cost to obtain a design patent or file a provisional application is significantly less than the cost of obtaining a utility patent due to lower fees and less work involved.
What steps are required to obtain a patent?
There are three basic steps required for obtaining a patent, as follows.
Prior art search. This is done to determine the likelihood of receiving a patent and to assist with preparation of the patent application. It is normally accompanied by a patentability opinion.
Drafting and filing. The application is drafted, and any necessary drawings are prepared. The application is assembled in the form required by the U.S. Patent and Trademark Office for examination, and filed along with the requisite forms and fees.
Patent Prosecution. Patent attorneys interact with examiners at the patent office to put the application in a condition for allowance.
See the Patent Law Overview section for more information about the patenting process.
When should I file for patent protection?
The first consideration should be whether you want to file in the United States only, or if you also want to file abroad. Inventors should be aware of the one-year rule for filing in the U.S. An applicant cannot obtain a patent on an invention if it was sold, offered for sale, used publicly, or shown to others without restriction, more than one year before filing. Generally, the one-year clock will not start if it was shown to others under a secrecy agreement, or if the use falls within the experimental use exception. Due to court precedent, however, an unwary inventor may inadvertently fall into the one-year trap. One court determined that a “public use” had occurred when the inventor had shown his device to a few friends at a party. Because this occurred more than a year before filing, the patent was held to be invalid.
Most foreign countries do not offer a one-year grace period, and require that a patent application be filed before any public use has occurred. Most industrialized countries have signed treaties with the United States that will allow the applicant to file abroad within one year of the U.S. filing date, so long as no public use has occurred before the patent application was filed in the U.S. In countries that are not party to an international treaty, you will not be given the benefit of your U.S. filing date.
What is a provisional patent application, and should I file one?
Provisional patent applications can be filed in advance of utility applications. They are similar to utility applications, but do not require as much information, nor do they require any claims (although it is good practice to include one or more claims to provide focus for the application). Contrary to the name, however, they are not “applications” since they can never mature into a patent. To obtain a patent that will rely on the filing date of the provisional application, a utility application (and corresponding foreign applications) must be filed within one year. The utility application will claim priority (i.e. the filing date) of the provisional application.
There are a few reasons why it may be beneficial to file a provisional application. They are used to establish a date of conception that cannot be questioned, and to obtain “patent pending” status for an invention. They may also be filed to allow time to develop a proper utility application if the applicant begins to market their invention or otherwise places it in the public domain, which may bar the patenting of the invention if the application is not filed soon enough. (Filing of either a provisional or utility application will comply with the one-year-rule and foreign filing requirements described above). They are less expensive to produce and file than utility applications, and most of the groundwork required to prepare and file a provisional application will be used for the regular utility application later. Therefore, minimal additional expense will be incurred by filing a provisional application first, and then following up later with a utility application. If you know that you want to file a utility application and are ready to do so, however, it may be best to forgo the provisional application process and proceed directly with a utility application.
An additional consideration is that the filing of a provisional application will not initiate the 20-year patent term. Therefore, an applicant may obtain up to one additional year of patent protection by filing a provisional application first, and then filing a utility application before one year has lapsed after the provisional application was filed.
To claim the earlier filing date, the written description of the provisional application must fully support all of the claims in the corresponding utility application. Any aspects that are not fully supported (for example, due to continuing product development) are considered to be new matter not entitled to receive priority of the earlier-filed application.
How long will my patent protection last?
The legal period of protection for a utility patent is 20 years from the filing date. Until recently, this period was measured as 17 years from the date of issuance. The rules were changed so as not to provide incentives for patent applicants to delay the patenting process (thereby delaying the date of issuance and effectively achieving a longer period of enforceability). A period of 20 years was chosen to account for the average time of three years required for a patent to issue after filing.
The term may be extended for delays in the patenting process that are not due to the fault of the applicant. In essence, every utility patent is guaranteed an enforcement period of 17 years after issuance so long as the applicant did not cause the delays.
The term of protection for a design patent is 14 years from its date of issuance.
What legal rights will I obtain from a patent?
A patent is legal monopoly over a particular technology for a limited period of time. The patent owner can prevent anyone else from making, using, selling, attempting to sell, or importing the protected technology. Alternatively, the patent owner can license its rights in the technology to another party, through either an exclusive or non-exclusive license agreement. The patent protection applies only within the legal jurisdictions (countries) in which the patent issued.
A patent does not provide a positive right to practice the invention. For instance, the invention may be an improvement to an existing patented technology. In that case, you could not practice your invention without infringing the other patent. Likewise, the other patent owner could not adopt your improvement without infringing your patent. Cross-licensing agreements may be used to commercialize both aspects of the technology.
How long does it take to get a patent?
The time period required for a patent to issue is variable. It depends on the complexity of the invention, the back log in the particular Art Unit at the patent office to which it is assigned, and various factors that may arise during patent prosecution. On average, it takes about three years for a utility patent to issue after filing. (The USPTO has a large back log). Design patent prosecution is less involved. On average, design patents issue in less than half the time required for utility patents.
How is priority determined for patent applications?
If two or more people apply for a patent on the same invention close in time to each other, the patent office will declare an interference, and a determination will be made as to which applicant is eligible to obtain patent rights (in other words, which applicant has “priority.”) In the United States, priority is determined under a first-to-invent system. The applicant who was the first to invent and diligently reduce the invention to practice (filing is a constructive reduction to practice) will be awarded priority. If proof of an earlier date of conception is not available or is legally insufficient, the applicant will have to rely on their filing date. The first applicant to file is presumed to have priority. A later filer may overcome this presumption by submitting proper evidence.
Note that only the U.S. and the Philippines use a first-to-invent system. All other countries use a more straightforward first-to-file system.
Can I prove my date of invention by mailing a sealed envelope to myself?
Don’t count on it! Although proper documentation may be invaluable in the event that a priority dispute arises, there is a common misconception about the so-called “post-office patent.” The idea is to record the invention in writing and mail it back to yourself in a sealed envelope with a date stamp from the post office to prove your date of conception. Unfortunately for those who rely on post-office patents, courts have found them to be a virtually worthless form of evidence for proving conception. There are legally respected procedures (that are beyond the scope of this writing) for documenting the date of conception.
Should I file for patent rights in foreign countries?
Obtaining foreign patent protection can be complex and extremely expensive. However, international filing will allow the aspiring patent owner to obtain the maximum benefit from a given invention. It should be considered if you are highly confident that your invention has substantial commercial potential in the foreign countries where you intend to file, and you have a good deal of capital to invest (or if you can get a licensee to pay the bill).
When filing abroad, foreign agents and translators must be employed. Additionally, many countries require substantial annuity payments during and after patent prosecution. You will also generally be required to publish your application 18 months after filing. (A non-publication request can be submitted for applications that will only issue in the U.S. This saves publication fees and also may allow you to retain valuable trade secrets for a longer period of time because your patent application will be held in confidence at the patent office.)
In sum, domestic filing is much simpler and less expensive than foreign filing, but offers patent protection only within the United States. For corporations conducting wide-ranging business on an international level, it is often critical to receive patent protection in a variety of countries. Independent inventors should consider that the U.S. is a wealthy country with 300 million people, so there should be ample opportunities to market their technologies here at a substantially smaller out-of-pocket expense. For inventions that truly have considerable commercial potential in foreign countries, however, they should consider foreign filing if they can pay the up-front costs.