Have you ever come up with an invention and just didn’t know where to go from there? Maybe you’ve thought of a new apparatus, compound, or method, and are now considering filing for a patent. The patent process may seem complicated and daunting, but once understood, it can be an exciting journey. This article is for those looking to know more about U.S. patents, what they are, and how to get one.
What is a U.S. patent?
A patent is a right granted by the United States Patent and Trademark Office (USPTO). A patent gives the owner of the invention the right for a limited time (20 years from filing) to exclude others from making, using, selling, offering to sell, and importing an invention into the United States. In other words, if you get a patent granted, you can then prevent others from using the invention. After a patent expires, anyone is free to use the invention. A patent is considered intellectual property, and therefore may be transferred like other property between two people or entities.
There are three different kinds of patents that are granted by the USPTO, i.e. utility patents (covers what something is or does), design patents (covers the non-functional appearance of an object), and plant patents (covers new species of plants). This article will deal only with utility patents.
What kind of inventions are patentable?
Only certain kinds of inventions can be patented, and these include a machine, article of manufacture, composition of matter, or a process (see 35 USC §101). Scientific theories, mathematical formulas, discoveries, or abstract ideas, for example, cannot be patented.
Requirements for patentability
An invention is patentable only if it is new and not obvious over what is already known. More specifically, for an invention to be patentable, it cannot be “anticipated by” (see 35 U.S.C. §102) or “obvious over” (see 35 U.S.C. §103) what is known. Both of these thresholds of anticipation and obviousness must be satisfied. Therefore, although an invention may be new (i.e. it has not previously been invented), it may still not be patentable if it were considered obvious to modify what is known to arrive at the invention.
As an example of the anticipation and obviousness analysis, one could consider the spork. When the spork was first invented, it may have been new (i.e. not anticipated under §102) because only the spoon and fork existed at the time. However, the spork might still not have been patentable if it were found obvious to combine the spoon and the fork to arrive at the spork. On the other hand, it may not have been considered obvious to combine the spoon and the fork to arrive at the spork, and therefore the spork may have been patentable (see U.S. Patent No. 147,119 (1874))
How long does a U.S. utility patent last?
A U.S. utility patent typically lasts 20 years from the filing date. A U.S. patent is only enforceable in the U.S.A. If patent protection is sought in other countries, then separate patent applications need to be filed in each country.
Who enforces a patent?
You are required to enforce your own patent through litigation or through other less-extreme means such as a cease-and-desist letter. Please consult with an attorney before sending such a letter, as the infringer can file a preemptive lawsuit attacking the validity of your patent.
Do you need a patent to protect your invention?
If you want to prevent others from making, using, selling, or importing your invention, then you need a patent to do this. Otherwise, your invention can be used by anyone.
Do you need a patent attorney to help prepare the patent application?
A patent application is a very technical document and the USPTO has varied and complex formatting, language, and information requirements for these applications. An experienced patent attorney (i.e. intellectual property lawyer) can provide invaluable insight and help in meeting these requirements and attaining the broadest possible patent coverage on your invention.
While it may be possible to file your own patent application, this is not advised since a mistake on your part can significantly restrict or prevent patent coverage for your invention. Filing a patent application on your own may result in no patent being granted, or if granted, the protection of such a patent may be overly narrow, thus decreasing the value of such a patent. Therefore, it is highly recommended that you retain the services of patent counsel.
What about a provisional patent application?
Provisional patent applications are an optional, less-expensive first step into the patent process compared to filing a regular patent application. A provisional application is a document that is filed with the USPTO. The provisional application is not reviewed for patentability by a patent examiner, and therefore it cannot be granted or be issued as a patent. A provisional patent application is used to establish a “priority date” for an invention, and gives you a year to try to promote, make, sell, or otherwise commercialize the invention. Within that year, if the invention is deemed by you to be worthwhile, a regular (non-provisional) patent application may be filed. The regular patent application must be filed within one year from the priority date, and then the regular patent application will have that same priority date as the provisional application. A provisional patent application does not have all the formal requirements associated with filing a regular patent application, and thus preparation and filing costs of the provisional application are lower than a regular patent application.
What common issues may preclude a patent from being granted?
“Public disclosure” more than one year before filing a provisional or regular patent application will preclude a patent from being granted. Public disclosure can manifest itself in many forms, and therefore consultation with a patent attorney is highly encouraged before discussing with or showing your invention to others.
What is the process for getting a patent?
- Filing: A regular patent application is filed with the USPTO. If formal requirements are met, the application is assigned to a patent examiner for examination.
- Review: The patent examiner reviews the application for patentability, using the priority date of the application as a starting point to search back for “prior art” (already existing technology) that anticipates your invention or makes your invention obvious. This patentability analysis focuses on the “claims” in the patent application, which is a listing of the subject matter on which protection is sought.
- Office Action: The examiner will issue an Office Action, which is a document outlining whether or not the invention is patentable. The Office Action will issue within about 22 months from filing the application. The Office Action may include an allowance and/or a rejection of one or more of the claims.
- Response: Within three months, and up to three additional months with a fee, a response to the rejection must be filed with the USPTO answering all the rejections of the claims. The response can include arguments and/or amendments to the claims for overcoming the rejections.
- Final Office Action: If the examiner is not convinced by the response to withdrawn the rejection, the examiner will issue a Final Office Action rejecting the claims.
- Appeal/RCE: The Final Office Action can be answered with an Appeal to the Patent Trial and Appeal Board (PTAB) for review of the examiner’s rejection, or a Request for Continued Examination (RCE) can be filed with the examiner.
- Allowance: If the application is granted, then a patent will issue with the allowed claims. The scope of the patent depends on the allowed claims.
- Issuance: Once the issue fee is paid, the patent will issue in due course.
How much does it cost to get a patent?
There are several required and optional costs associated with the patent process. These may include getting a patentability search and opinion, provisional application drafting and filing, non-provisional application drafting and filing, responding to an office action (rejection), filing a Request for Continued Examination (RCE), filing an appeal, and paying an issue fee among others. These costs change over time and can vary depending on your locale and attorney. The costs include official USPTO fees (see the USPTO fee schedule for the current schedule of fees) as well as attorney fees.
If you want to file a patent application, you should budget at least $8,000-$10,000 as of 2023. In case of a rejection from the USPTO, then you will need to prosecute the application to allowance (i.e. attempt to get the application granted as a patent). To complete the patent process, you should budget a total of $15,000-$25,000 as of 2023. After grant, there are maintenance fees due to keep the patent in force. These fees are due at years 4, 8, and 12 after issuance. Each subsequent maintenance fee is higher than the previous one (see the fee schedule above).
How long does it take to get a patent granted?
The typical time from filing the application to patent grant is about 22-30 months.
For more information or to seek counsel from our intellectual property law group, please reach out to request a consultation or call us at 216-696-1422.
