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Law Office of Marc D. Machtinger, Ltd.



Questions & Answers

Mr. Machtinger is an experienced Intellectual Property Attorney, providing the following professional patent services:

  • Free initial telephone consultations.
  • Patentability, infringement, and validity searches, analyses, and opinions.
  • Preparation and prosecution of utility and design patent applications.
  • Appeals to the Board of Patent Appeals and Interferences and to the U.S. Court of Appeals for the Federal Circuit
  • Due diligence investigations for buyers and sellers of businesses with respect to patent portfolios and infringement analyses.
  • Patent related litigation services.

Questions and Answers about Patents

What is a patent?

How does the U.S. patent process work?

What steps should I take as soon as I conceive my invention?

Should I pursue a search before filing a patent application?

What costs can I expect to incur in seeking patent protection?

What can I do to lower my costs?

What kinds of inventions are patentable?

Do I need a model or prototype in order to file a patent application?

What should I know about Marketing and Invention Promotion Firms?

What is the length of the term of a patent?

When can patent protection be barred?

What if I have already published, disclosed, sold, or offered my invention for sale?

What is a Provisional Patent Application?

When should I use a "Patent Pending" designation and other patent marking?

How can I seek patent protection outside the United States?

What are some recent changes in U.S. Patent Law?

 

What is a patent? A patent is a grant from the United States government to an inventor of the right to exclude others from making, using, selling, offering for sale, and importing the invention within the United States for a limited time, in exchange for the inventor disclosing the invention to the public. A patent is a valuable way in which to protect one's rights in an invention.

There are three types of patents. The most common type is referred to as a utility patent, and is appropriate for most inventions which are "useful." Design patents are appropriate for new, original, ornamental designs on or of products. Plant patents protect new varieties of asexually reproducing plants.
It is important to understand that a patent does not grant you the right to make, use, or sell your invention. You may or may not have those rights, with or without a patent. The right to practice your invention depends on government regulations and existing patent rights of others. Care should be taken if the invention is in a category which is regulated by the government, and a clearance study should be performed to determine whether patent rights of others might be infringed.

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How does the U.S. patent process work? Once a patent application is prepared, usually by a patent attorney, it is filed with the U.S. Patent and Trademark Office. Since the U.S. Patent and Trademark Office receives on the order of 250,000 patent applications each year, you can expect a 10-12 month delay before receiving any response from them. A Patent Examiner will review the application and perform a patentability search based on the claims of your application. A First Office Action from a Patent Examiner is then issued. In the majority of cases, the First Office Action will contain a rejection of some or all of the claims in the application. A Response to the Office Action is typically prepared and filed by patent counsel. The process which occurs between the Patent Examiner and your Patent Attorney during which your Patent Attorney seeks appropriate protection for you on your behalf is referred to as "patent prosecution." If the Patent Examiner is persuaded by the Response, the Patent Examiner will issue a Notice of Allowance, and a patent will be granted. At times, several Office Actions and Responses are issued and submitted. The time period from filing an application to receiving a patent can vary substantially, but frequently takes between 2 and 3 years. If the Patent Examiner is not persuaded to allow a patent to issue, several options are available for pursuing the matter further, including filing continuations or appeals.

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What steps should I take as soon as I conceive my invention? Keep your invention strictly confidential. Write a detailed description of the invention including sketches and all the information required to make the invention operable. Sign and date your notes. Have a trusted friend or associate sign and date them in confidence. If you are developing the concept or reducing it to practice over a period of time, keep a notebook with daily detailed notes on your developments and progress, and sign and date them regularly. Contact patent counsel as soon as possible. Once you conceive of the invention, it may be to your advantage to be particularly diligent in reducing your invention to an operable model and/or having a patent application filed as soon as feasible. Taking these steps may assist you in defending your rights against another patent applicant. Although the U.S. has a "first to invent" system which rewards the first inventor rather than the first to file a patent application, for evidentiary reasons it is to your advantage to file a patent application at the earliest possible time. Contact a patent attorney as soon as possible.

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Should I pursue a search before filing a patent application? While a search is not required by the U.S. Patent and Trademark Office prior to filing a patent application, searches are very helpful. First, you might find that your invention has already been disclosed, thus indicating that no further investment should be made toward seeking patent protection. Second, if your invention has not been anticipated by the "prior art" (i.e., prior patents and publications related to your invention), the search results will help your patent attorney better prepare your patent application and seek an appropriate legal scope of protection. Finally, if you intend to sell or license your invention, an infringement search should be conducted in order to determine whether practicing your invention would infringe the rights of another patentee.

If you would like to begin with a preliminary patent search online yourself, try the following websites: Delphion Intellectual Property Network or Patent Office Database. A new browser window will open which you can close out to return to this site. Preliminary searches conducted in this manner have many limitations. It is often prudent to request a professional patentability search. Feel free to Contact Us if you are interested in pursuing a professional patentability search, and consider using our E-Patent Your Inventionsm feature to request your search.

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What costs can I expect to incur in seeking utility patent protection? There are several costs associated with the patent process. Don't forget to read What can I do to lower my costs? The most significant costs will be attorney fees for the preparation and prosecution of the application. Fees for patent application preparation will typically fall in the range of $4500 to $12,000 or more, but can vary significantly based on the complexity of the invention and the strategies taken. If drawings are needed, draftsman's fees are often in the range of $100 to $400. The government filing fee for a utility patent application is currently $385 (for individuals or small entities). Patent prosecution is usually billed at an hourly rate. There is a government issue fee, currently $665 (for individuals and small entities) for the issuance of a patent. Also, maintenance fees must be paid at various times after the issuance of a patent in order to keep the patent in force. Expenses related to design patents are significantly lower. Contact a qualified tax professional about the deductibility of these expenses.

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What can I do to lower my costs? Your best option might be our patent pending E-Patent Your Inventionsm feature. Read on... There are several possible routes, depending on your situation, which you can utilize in order to help reduce your costs when seeking protection for your invention.

  • If you are ambitious and have sufficient time availability, you can attempt to prepare and file a patent application yourself. There are various resources available to individual inventors who wish to follow this route. However, without experience in the field, it may be difficult to seek the broadest scope of protection you are entitled to without assistance from a professional, and the process may be rather tedious. There are also a number of pitfalls which may present difficulties for the non-practitioner. It is usually best to work with a patent attorney who is skilled at drafting patent applications in such a way that it is difficult for a competitor to "design around" the patent.
  • You can attempt to market your invention to a larger company which might be interested in funding a patent application for you. It is often difficult, however, to interest a company in such an arrangement before a patent application is filed. There are also risks involved with disclosing an invention to such a company prior to the filing of a patent application. At the very least, a suitable non-disclosure agreement or confidentiality agreement should be used prior to any such disclosure. Consult a qualified patent attorney for advice prior to making any such disclosure. It is usually best to file a patent application prior to approaching such a company.
  • Consider getting together with a partner or two in an arrangement where you share the legal fees and share in any profits acquired.
  • Finally, you can use our conventional services at our already affordable rates, or try our patent pending E-Patent Your Inventionsm technology to save legal fees by participating in the preparation of your patent application online. This process allows you to put forth as much or as little effort as you wish in order to save a proportional amount in legal fees by doing some of the work yourself and letting a registered patent attorney complete the job.

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What kinds of inventions are patentable? The types of subject matter which may constitute patentable inventions include articles of manufacture (also known as products or manufactures), machines (apparatus, devices), processes (methods), compositions of matter, and improvements of the above.

Examples of the types of inventions which may be patentable, if they meet the standards of patentability, include new mouse traps, engines, electronic devices, toys, computer software, e-commerce methods, methods of manufacturing, methods of doing business, chemical compositions, etc. Ornamental designs may also qualify for design patent protection. In order to receive a patent, an invention must be new, unobvious, and useful. An "idea" is not patentable unless it is reduced to practice in the form of an invention, however, the filing of a patent application with a sufficient description is considered a "constructive reduction to practice." In other words, if you can describe the idea sufficiently in a patent application such that others are able to practice the invention, you may meet the standards for patentability (without creating a model or prototype).

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Do I need a model or prototype in order to file a patent application? No. Many people are surprised to learn that a prototype is not necessary to file a patent application. Until 1880, models were required to be filed with the U.S. Patent and Trademark Office when possible. However, since 1880, no model is required. The patent application must contain sufficient disclosure to enable one of ordinary skill in the industry to make or practice the invention without undue experimentation. Thus, the invention must be at least mentally developed enough that an enabling disclosure can be prepared. Because elements of the invention can change when a model or prototype is constructed, it is sometimes beneficial to create a model prior to pursuing patent protection. Check with a qualified patent attorney before delaying a patent application in order to make an informed decision, and to avoid sacrificing your rights by delaying. If you are not sure how to make your invention operable or you would like assistance with creating a design or model, Contact Us for a recommendation to get you started. Some model makers can design your application in 3-D images online, and even create a website to assist you in marketing your invention. Contact Us for more information. Please see our warnings about marketing firms.

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What should I know about Marketing and Invention Promotion Firms? It is often best to file a patent application prior to marketing your invention. Be cautious if you are considering working with an invention promotion firm to help you develop and market your invention. In general, you should avoid working with a firm which asks for significant up front fees, or promises success too readily. There have been numerous incidents of such firms fraudulently representing inventors, and hundreds of inventors report being victimized by invention development firms each year. Such companies often make their money from fees charged to inventors rather than successful marketing of inventions. Inventors have paid thousands of dollars to companies such as these without receiving any benefit.

Check with the following resources for further information before employing such a firm: National Inventor Fraud Center, InventorEd, Inc., and InventNet (A new browser window will open which you can close out to return to this site). If you know of reputable marketing firms, or you have had a positive experience with a marketing firm, please Contact Us with your experiences so that we can properly make recommendations.

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What is the length of the patent term? For utility or plant patent applications filed on or after June 8, 1995, the patent term begins on the issue date of the patent, and ends twenty (20) years after the patent application is first filed in the U.S. Since the prosecution of the patent application often takes two to three years, the patent term is often in the range of 17 to 18 years, however, this can vary significantly. Certain recent changes in U.S. patent law will provide for provisional rights (not to be confused with provisional applications) for published applications under certain circumstances. Seek advice of counsel for further details. Design patents have a 14 year term beginning on the issue date. In order to keep a utility patent enforceable during its term, maintenance fees must be paid to the U.S. Patent and Trademark Office 3 years, 7 years, and 11 years after the patent issues Design and plant patents do not require maintenance fees. For patents having filing dates prior to June 8, 1995, different rules apply. The terms of patents may be shortened or extended under various circumstances. Seek advice from qualified patent counsel in order to determine the expiration date of an existing patent.

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When can patent protection be barred? By federal law, patent protection will be barred if the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country more than one year prior to the date on which a patent application is filed. Furthermore, foreign (non-U.S.) patent protection may be barred if a patent application is not filed prior to any of the above events without the one year grace period. Therefore, it is vital that the inventor seek advice of patent counsel as soon as an invention has been conceptualized in order to avoid a loss of rights. If any of the above events have already occurred, advice of patent counsel should be sought in order to analyze the details of the event to determine the legal consequences.

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What if I have already published, disclosed, sold, or offered my invention for sale? See When can patent protection be barred? Patent counsel should be sought immediately. If the invention was published, in public use, or offered for sale or sold more than one year prior to the filing of a U.S. patent application, patent protection may be barred. Patent counsel should be consulted to determine the consequences of the specific events which have occurred. If the one year period from the first such event is approaching, patent counsel should be consulted immediately in order to attempt to preserve your rights. Your patent counsel may require a certain amount of time in order to prepare and file a patent application. Therefore, immediate attention should be given to the situation.

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What is a Provisional Patent Application? Provisional Patent Applications are applications which can be filed with the U.S. Patent and Trademark Office to secure a filing date. However, Provisional Patent Applications are not examined and do not have the potential to become patents; they do not provide you with any patent rights. Provisional Patent Applications may be appropriate under certain circumstances. Once a Provisional Patent Application is filed, a regular patent application must be filed prior to the expiration of 1 year from the provisional filing date in order to claim the benefit of the provisional filing date. Beware of services which purport to offer you "provisional patent protection" or a "provisional patent" (neither of which exist) for a low cost.

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When should I use a "Patent Pending" designation and other patent marking? You should not mark a product "Patent Pending" until a patent application, either provisional or regular, related to the product has been filed. Once a patent application has been filed with the U.S. Patent and Trademark Office, discuss the "Patent Pending" designation with your patent counsel. If a provisional application has been filed, the "Patent Pending" designation may be used, however, it must not be used after 12 months subsequent to the filing date unless a regular patent application has been filed. After a patent has been granted, a designation such as "Patented" or "U.S. Patent No." followed by the patent number should be used on any product protected by the patent. Seek advice of patent counsel regarding the placement and sufficiency of such a label. Substantial rights can be lost if such labeling is not properly applied. "Patent Pending" status does not afford any rights to the patent applicant. Only an issued patent can be enforced.

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How can I seek patent protection outside the United States? A U.S. patent grants rights to an inventor only within the United States. If foreign protection is desired, it is of utmost importance that this be brought to the attention of your patent counsel as soon as possible. Most foreign countries have "absolute novelty" requirements under which a patent application must be filed prior to disclosure or sale of an invention. There is no such thing as an international patent; patent rights are strictly national, and must be obtained in each individual country. However, if protection is desired in several countries, there are various routes which can be advantageous such as an international application through the Patent Cooperation Treaty (PCT). As long as the international or foreign patent application is filed within one year of the U.S. filing date, the vast majority of countries will grant the applicant the benefit of the U.S. filing date under the Paris Convention. A foreign filing license granted by the U.S. Patent and Trademark Office (usually granted automatically) is required in order for a U.S. resident to file a patent application abroad.

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What are some recent changes in U.S. Patent Law? There are numerous provisions in the U.S. Patent Laws which have recently been enacted. There are too many details to describe here, however, some of the changes of interest follow in abbreviated form.

(1) Prior User Rights: In certain situations, effective November 29, 1999, prior use of a method of doing business will serve as a defense to infringement.

(2) Publication: For patent applications filed after November 29, 2000, publication of the application will follow 18 months after the effective filing date unless a request not to publish is submitted upon filing (and certifying there has not been and will not be a foreign filing in a country which publishes), or the application is first abandoned.

(3) Provisional Rights: For published applications, certain provisional patent rights (not to be confused with provisional patent applications, which are not published) will be afforded to patentees for the time period between publication and issuance.

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For further information, visit the U.S. Patent and Trademark Office web site, or Contact Us.

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