Simply, a patent protects an invention, preventing others from making, using or selling the invention as claimed by the patentee for the term of the patent. In the United States, patents are granted by the United States Patent and Trademark Office (USPTO) after it has examined an application submitted by or on behalf of the patentee and determined that the invention claimed in the application is useful, novel (new) and not obvious.

The process of applying for and obtaining a patent is complex, oftentimes consuming and challenging. Many people mistakenly assume that a patent application is a form to be filled out, somewhat akin to an employment application. Nothing could be further from the truth. In fact, patent applications are extremely complicated legal documents written from scratch and best prepared by an experienced patent attorney. A typical patent application is 10-20 pages long, includes several sheets of drawings and takes an experienced patent attorney 15-35 hours to prepare and file.

After preparation and filing, the process of an invention working its way through the patent office typically takes two or more years, and a significant portion of the time is expended while the application sits in a queue waiting to be assigned to and examined by a patent examiner in the USPTO. A significant amount of interaction and back and forth with the examiner is typically required before he/she will agree to allow an application to issue as a patent. An experienced and qualified patent attorney is indispensible in shepherding the application and ensuring the patentee gets the broadest possible protection for the invention.

What is a patentable invention?

For patent law purposes, an invention is a new and useful machine, article of manufacture, composition of matter or process. Most people realize that most new and useful tangible things are considered inventions but many don’t realize that processes or methods of doing something are also often patentable. For instance, software is usually patented as a method performed on a computer or other electronic device. Improvements to known or existing machines, articles of manufacture, compositions of matter and processes are also considered inventions and are also potentially patentable.

Artistic works (such as paintings, sculpture and photographs) and works of authorship (such as writings and musically compositions) are not typically considered inventions and are not patentable but are protectable under copyright. Abstract ideas, discoveries and products of nature are also not considered inventions and are not patentable. However, determining whether something is an invention versus an abstract idea, discovery or product of nature can be a difficult and daunting task, something the courts and the Patent Office are seemingly always wrestling with.

To be patentable, however, an invention must also be novel and non-obvious. Novelty just means the invention is new or that no one has ever publically used or publically disclosed an invention identical to the subject invention.

Whether an invention is obvious or not is a bit more difficult to ascertain. Simply put, as enunciated by the courts, to be patentable, an invention must not be obvious to a person of ordinary skill to which the invention pertains. The foregoing statement can be and is interpreted many different ways by different people. Suffice it to say, much of our time in shepherding a patent application to issuance is spent negotiating with Patent Office examiners on this very issue.

Are there different types of patents?

There are three different types of patents that may be obtained, depending on the nature of the invention. A utility patent protects the functional or useful aspects of an invention and is typically what most people think of when they think of a patent. Design patents protect the aesthetic and non-functional qualities of an otherwise functional article. By way of example, an electric car having a new and unique electric motor would be protectable under a utility patent, whereas the styling of the car’s body would be protectable with a design patent.

Plant patents protect asexually reproduced plants. Very few plant patents are filed relative to the other types and someone seeking to protect a plant is best to seek out a patent attorney that specializes in this area.

On occasion, people have contacted our firm concerning provisional patents. There is no such patent. Rather, U.S. patent law permits an inventor to file a provisional patent application. A provisional patent application permits an inventor to quickly establish priority rights to an invention over others, but it has a limited one-year pendency and will never issue into a patent. To obtain a patent from a provisional application, an inventor must file a regular patent application for a utility patent within one year of filing the provisional application.

Should I file for patent protection?

If your desire is to directly or indirectly capitalize on your invention, the answer in most instances is yes.

Simply put, with a patent, you can prevent others from making, using or selling your invention. Without a patent on your invention, others are legally permitted to copy and incorporate your innovation and invention into their products and services without any obligation to compensate you.

If you intend to manufacture and/or sell your invention directly, being the only entity legally permitted to do so can give you a significant and real advantage in the marketplace allowing you to charge a premium for your product over technologically inferior products offered by the competition. In contrast, without a patent, when the competition copies your product, you have to compete on price, distribution and marketing brawn, things in which larger more established companies often have the advantage. In a nut shell, patent protection helps level the playing field and allows the small player to compete with the well-heeled large corporation.

If you intend to sell or license your invention to a company and derive revenues therefrom, a patent gives you a tangible vehicle to accomplish this. Without a patent (or at the least a pending patent application), you have no rights to sell or license, and there is nothing stopping an interested company from making your invention without providing you any compensation.

Patents are not for everyone. In some circumstances, where the relevant market for a product or service is small, a patent may be unnecessary and disproportionally expensive relative to the potential revenues obtained through marketing and selling the product or service embodying the invention. Of course, if as a result of your new innovative product or service, the market grows, without a patent you will be less able to deter competition from competing directly with you.

Should I have a patentability search performed?

For most inventions, the answer is yes. A patentability search is not an end all that will definitively determine whether patent protection is available for your invention, but it will give you a very good idea concerning the chances of obtaining patent protection and the potential breadth of protection available to you. Of important consideration, over half of clients who have a search performed on a particular invention do not proceed with having us draft and file an application. In this sense, a search can save you thousands of dollars that would have been spent pursuing a patent on an invention where obtaining patent protection is unlikely.

Should I file a provisional patent application first?

In March of 2013, the United States became a first to file country meaning the first inventor to file for patent protection on a particular invention beats anyone else who independently invented the same thing but filed after. It no longer matters who invented first. Accordingly, it often makes sense for an inventor to file a patent application sooner rather than later otherwise he/she runs the risk of being beaten to the punch.

Provisional patent applications lack the requirement for claims and are more informal documents than their non-provisional counterparts. Accordingly, they can be prepared and filed more quickly for a substantially lower cost, helping ensure you are first in line.

Whereas in the past, an inventor was encouraged to keep a notebook and other documentation from the date of conception of an invention through to the development of a working prototype or design wherein he/she could use the documentation to predate later, now none of that really matters. The best course of action of those with any concern or apprehension that someone else may file first is to file a provisional application as soon as possible after conception of the invention.

What are my first steps?

No matter where you are in the inventing or product design process, give us a call and set up a free, half-hour consultation. Given the first to invent paradigm, it is never too early to consider and understand your options.

For further information on this area of law – and others – click on the Resources tab and go to the L & L Extra Info page.