- Published: 15 January 2020 15 January 2020
By James L. Kwak, Partner, Standley Law Group LLP
Standley Law Group LLP receives many calls each month from inventors interested in seeking patent protection for their new ideas. Many of these callers have never applied for a patent and they have many questions about the process. The following FAQs and responses answer many of the questions first-time inventors have.
1. What are the ways I can protect my invention?
Generally, the ways to protect an invention are to: 1) file for a patent; or, 2) keep it as a trade secret. In some situations, a trade secret is not an option because the product will be in the public domain or it is easily reverse engineered. In other words, trade secrets only protect ideas that can be maintained in secrecy (e.g., a recipe, manufacturing process, etc.) Trade secret protection, however does not protect against the independent development of the invention by others. Patents do protect against any unauthorized use of the invention, whether the infringer copied the invention or independently developed it. For this reason, patents are generally considered the best way to protect new inventions.
Trademarks can be used to protect a brand name (e.g., Coca-Cola®, Starbucks®, McDonald’s®) and copyrights can be used to protect creative works of authorship (e.g., songs, books, articles, etc.), however these methods of protection do not protect against the unauthorized use of the idea behind the invention. For example, a copyright to software will protect the line-by-line copying of the code but will not protect against the independent (non-copying) creation of similar code by another.
2. What is patentable?
- Generally, any new, nonobvious, and useful process, machine, article of manufacture, composition of matter, and improvements thereto can be protected by a utility patent.
- Design patents can also protect the distinct ornamental configuration or “look” of a product.
3. What is a patent?
A patent is a government granted, legal right to exclude others from making, using, selling, or importing your invention in the U.S. If all government regulations are followed, the life of a patent can last up to 20 years from the date the patent application was filed with the U.S. Patent Office. Does a U.S. patent protect the invention in foreign countries?
No, a U.S. patent only provides protection for your invention in the United States. Foreign protection must be applied for separately. However, if an inventor files a patent application in the U.S., the inventor has one year to file for protection internationally, for example, by filing an international (PCT) patent application that claims priority back to the U.S. patent application.
5. What are the costs for filing a patent application and obtaining a patent in the United States?
The costs for obtaining a patent can be broken down into two main categories:
- The cost to prepare and file a patent application with the U.S. Patent Office, and
- the cost to “prosecute” the patent application at the Patent Office (i.e., cost to review and respond to patent examiner’s office actions/objections during examination of the patent application). Prosecution costs will not be incurred until after the patent application is filed and it is examined by an examiner at the Patent Office. The first examination by an examiner may not take place for many months or a year or more after filing the patent application, thus spreading out the cost for obtaining a patent.
The cost for obtaining a patent varies based on several factors. These factors include:
- The complexity of the invention (complex inventions require more work in preparing a patent application);
- The description and figures the inventor provides to the patent attorney (the more thorough the description, the less work is needed to prepare a patent application which reduces costs); and
- the extent of the prior art technology.
In general, the cost for preparing a patent application may typically range from between $5,000 to $15,000. Prosecution costs incurred after filing the application will vary based on the extent and closeness of the prior art technology cited by the examiner.
The costs to protect your invention in foreign countries varies based on the country or countries applied in. A patent in each foreign country may cost anywhere between $5,000 to $18,000, generally. It is not inexpensive so inventors are wise to select foreign countries very selectively. Some inventors who obtain foreign patents choose to pursue countries where the invention will be likely to have high sales rather than where the invention may be made.
6. Should I file for a patent application on my invention in view of the costs?
The decision to file for a patent application, like many decisions, comes down to a risk vs. reward analysis. In other words, the cost and effort required to obtain a patent needs to be weighed with the potential rewards of obtaining protection for an invention that may be commercially successful. There are many ways to exploit a successfully obtained patent:
- A patent may be used to stop others from making, using, or selling the invention;
- A patent (or even a pending patent application) may be sold for value to another party interested in buying it; and
- A patent may be licensed to one or more other parties to use it, in exchange for their payment of royalties to the inventor/owner of the patent.
Obtaining a patent for your invention is not a guarantee of financial success. If there is little or no market for the invention, for example, an inventor may not benefit sufficiently from sales of the patented invention to recoup the cost of obtaining a patent. However, if the invention is commercially successful and well-received, and the requirements to obtain a patent have been met, obtaining the patent can offer much needed protection against unauthorized users.
7. Who can file for a patent application to an invention?
Generally, the only entity who can file for a patent application to an invention, is an inventor (individually, or jointly with other joint inventors who conceived parts of the invention) or an entity who the invention has been assigned to (e.g., company employer).
An inventor is somebody who has contributed to the conception of the invention. A person who merely reduces the invention to practice (after learning of the invention from the inventor) is not a co-inventor. For example, a draftsman who learns of the invention from the inventor, then prepares a professional drawing is not considered an inventor under the law.
Improperly naming (or not naming) inventors on a patent application may lead to the patent being found invalid for failing to name all the true inventors, so it is important to name the correct inventors, and no more, and no less.
8. Does an inventor have to build a prototype of the invention prior to filing for a patent?
No, there is no requirement that the invention be made or sold prior to filing for a patent application. Although a protype of the invention is not required, protypes and detailed drawings of the invention will help the patent attorney or agent prepare a patent application for filing with the U.S. Patent Office.
9. What is the process or general timeline of filing a patent application?
- The first general rule is to keep your invention in confidence until you file a patent application. This ensures that somebody will not learn of your invention and beat you to the Patent Office by filing before you. If you have to disclose your invention to others prior to filing the patent application, only do so if the party you disclose the invention to signs a nondisclosure agreement (agreeing to keep your invention in confidence). If the inventor publicly discloses their own invention, in the United States they have a one-year grace period to file a patent application on their invention, however for the reasons provided above, it is safest to file the patent application before publicly disclosing the invention. Also, be aware that many foreign countries have laws which require that an invention not be publicly disclosed before a patent application is filed in the inventor’s home country, so it is wise not to publicly disclose your invention before filing a patent application. Furthermore, under the U.S. laws currently in place the winner of a contested dispute over an invention is the person who filed first at the U.S. Patent Office. So, there are many good reasons to file early.
- Whether or not to have a search performed to see if an invention is new is a choice left to each inventor. Some inventors choose not to spend the additional money to have a search done prior to filing a patent application on their invention. Other inventors prefer to do a search before filing a patent application. The law does not require that inventors have a search done before they file a patent application. Patent examiners always do a search after an application is filed as part of the patent process. You may wish to ascertain whether somebody else has invented and publicly disclosed the same or a substantially similar invention, prior to filing a patent application. This can involve doing a search of a patent database (e.g., U.S. Patent Office patent database, Google patents database, etc.) and/or other public sources (e.g., Google search, library/periodical search, etc.). If the same invention is already in the public domain before you file, you will be precluded from obtaining a patent. Although a prior art search is not required before filing an application, you may wish to have one done so you know what the state of the art is and if your invention is already known. Inventors can try to do their own searching. If you are not comfortable with searching, it is advisable to hire a professional patent attorney to do a search for you. The level and cost of searching will vary depending on the extent of the search conducted. For example, you may wish to have a less expensive, quick search done that is not as comprehensive as a broad search. A more expansive prior art search (and more expensive) can be commissioned if desired or when situations warrant it. For example, if the inventor is about to spend major dollars on prototyping and manufacturing the invention, the inventor may wish to invest more into a more comprehensive prior art search. No search, no matter how extensive, is ever perfect. The world has too many prior publications for any searcher to ever review all of them. It is possible in any search that a pertinent reference will be overlooked. Nevertheless, searches remain a valued tool to help an inventor assess the state of the prior art in the relevant technological field of the invention.
- The next step is to prepare and file a patent application with the U.S. Patent Office. It is recommended that a registered patent attorney be retained to prepare a patent application that meets all the requirements set forth by U.S. laws and regulations. Either a provisional or nonprovisional patent application may be filed. A patent attorney can explain the differences between these types of patent applications so you can decide what is best for you in a given situation.
10. What happens after I file my patent application?
- Filing a patent application makes it “patent pending” and the inventor can publicly disclose the invention at this point without fear of losing rights to the invention to an after-filed patent application or after-filing public disclosure.
- The U.S. Patent Office will eventually assign a patent examiner to the application who will conduct a prior art patent search and issue an examination report (called an “office action”) that either rejects the patent claims or allows them. Most first office actions on an application are rejections of some sort but inventors should not be discouraged since that is true of almost all first office actions. This first office action may take a long time to receive since the Patent Office is very busy. Examination at the U.S. Patent Office can be accelerated under certain circumstances (older age, health, etc.).
- After receiving an office action from the examiner, the applicant has three months (extendable to six months) to respond to the examiner’s office action. Generally, the response will address the examiner’s rejections and attempt to persuade the examiner to allow the patent claims that were rejected and/or the applicant can amend the claims in an effort to work around the examiner rejections. It may take a few rounds of correspondence (and multiple office actions) before an allowance of a patent is obtained.
- The cost for responding to an examiner’s office action will vary based on various factors, such as:
- the number of patent claims involved;
- the prior art found and cited by the examiner (the closer the prior art, the harder it will be to argue around the examiner’s rejections); and,
- complexity of the invention.
Other Resources on the Web regarding patents:
- https://www.uspto.gov/patent (U.S. Patent Office Website, with links to explanation of the patent process, and searching patents and patent application filed).