Patent Application FAQ

An inventor must prove that he or she has an invention that is new, useful, and not obvious compared to other prior technology.

Yes, there are design patents and utility patents. Design patents cover the look or “ornamental” appearance of an article of manufacture, whereas utility patents cover the concept or the idea itself. Utility patents can be directed toward methods/processes or toward an apparatus. For example, method claims in utility patents might be used to protect chemical processes to create drugs. On the other hand, apparatus claims would typically be used to protect the structure of a mechanical device.

Patents can cover mechanical devices, methods of performing a process (such as manufacturing), software, and even certain living organisms such as plants or genetically modified organisms.

To be a patent attorney a person must take and pass the federal patent bar examination as well as a bar examination of at least one state in the United States. To be eligible for the patent bar the applicant must have an advanced scientific background and pass comprehensive federal background checks.

Yes. It is a good idea to perform a patent search before investing in a patent application. A patent search is useful to determine if the technology has previously been patented, and also to figure out what scope of protection may be available for a given technology. A competently performed patent search will also assist a patent attorney in crafting a good patent application and the broadest possible claims.

Yes, absolutely. Once a patent has been filed, there is usually no reason not to proceed with marketing and sale of a product. By filing an application, you will be “patent pending” typically for several years, so there is not much reason for delaying marketing activity.

Yes, but only for 18 months. A patent application is confidential for 18 months after filing, but then will publish. There is a procedure to file any non-publication requests, but using this procedure can jeopardize international rights and should be considered carefully. In some cases, this may be useful if only a U.S. market is contemplated, or if the applicant wishes to preserve the ability to keep the technology as a trade secret if the U.S. application is unsuccessful.

A design patent lasts 14 years from issue. A utility patent the last 20 years from filing.

A provisional patent application is a procedure that will allow an applicant to receive “patent pending” status for 12 months. A provisional patent application is best viewed as a placeholder for whatever technology is disclosed in the application. Provisional patent applications, however, will never turn into an actual patent unless the applicant files a corresponding utility patent application within 12 months that claims the benefit of the provisional filing date. Provisional patent applications are never evaluated by the patent office for patentability and they do not have the claims that ultimately define an invention in an issued US patent.

An applicant must first file a patent application. Once a patent has been filed, the applicant is “patent pending.” The applicant will receive a filing receipt. In some cases, the patent office will issue a “restriction requirement” asking the inventor to elect certain claims to proceed on in the application. This happens if the patent office believes the inventor has tried to claim too many inventions in the same application. Once an election is made, the application proceeds towards examination.

Currently, typical timeframe for a substantive evaluation by an actual examiner at the patent office is in the range of 18 to 24 months. An examiner will eventually issue an “office action” which may allow, reject, or object to the claims as presented. The patent attorney will then respond to the office action and will typically argue the rejections and/or amend the claims to place the application in a better condition for allowance. It is not uncommon for one or two office action/response volleys to occur.

If the patent office agrees that the inventor is eligible for a patent, then it will issue a “notice of allow ability” and the application will proceed toward issuance. The applicant will have to pay an issue fee.

Note: this is only a very basic explanation of the typical United States patent process. There are a variety of nuances, strategies and alternative procedures available to an applicant to file additional patent applications in the United States and in foreign countries.

No. A United States patent will only protect you in the United States. If you want protections outside of United States you will eventually have to file for patent protections in those desired territories. There is a procedure using the Patent Cooperation Treaty (“PCT”) where you can file one application which preserves your rights for 30 months to file outside of the country in many different nations of the world. We frequently help applicants to file a PCT, and then we work with our foreign associates to help secure patents in a variety of countries or territories, including the European Patent Office (“EPO”).

A micro-entity is a new status that an applicant can claim for filing at the patent office if his or her income falls below an established level of $150,162 per year (2012). The status will allow the applicant to enjoy reduced filing fees and these can be significant. However, the new status is complicated and may be potentially dangerous to elect if the applicant intends to file multiple applications; if there are multiple inventors (who do not qualify); if the applicant is likely to have a change in income; or if the applicant intends to license the technology to an entity that will not qualify for the status. To receive the status, the applicant has to make a variety of statements about income under penalty of perjury and if the patents are ever litigated, it will potentially open up the inventor/applicant to invasive inquiries about personal income statements and assorted IRS filings. Caution is in order.