Patent Law

The words of the statute state: Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title. 35 U.S.C. 101.

Provisional

Provides 1-year of “patent pending” status. Also provides the applicant with a filing date for U.S. and International Utility applications. Fewer requirements allows for faster turn-around and filing date, along with cheaper fees. However, because future applications depend upon this application, disclosure is key.

Non-Provisional

Full utility application in the United States. This application is reviewed for substance by the patent office and either officially granted or denied. Once granted, this patent is enforceable for 20 years from the application date. 

Patent Cooperation Treaty

This is an international patent application. However, there is no such thing as an international patent. Accordingly, this application serves as a placeholder for future patent applications in the individual countries selected by the applicant. 

Design Patents

Unlike the utility patents described above, a design patent covers the way something looks, rather than its function. In some instances, a product may have a particular function and a particular look. In such a case, both patents may be considered. In other instances, the function may not be patentable, so a design may be the best form of protection. Design patents are valid for 15 years from the date they are granted.

To find out if someone has already patented your idea, you can search the United States Patent & Trademark Office (PTO) database here. Alternatively, you can contact me, and for a fee, I will search various databases and give you a written opinion.

Very Important

Many foreign countries have no grace period on filing once an invention has been disclosed. In other words, once the invention is disclosed and no patent has been applied for in one of these countries, the patent is forfeited. In contrast, the U.S. has a one-year grace period. This means that if your invention is disclosed before you file for a patent, you have one year to file, before forfeiting your patent rights.

Types of Patents

  1. Design: purely ornamental (expires 14 years from the date of filing).
  2. Utility: most common (expires 20 years from the date of filing).
  3. Plant: new variety of asexually produced plant (expires 20 years from the date of filing).

Provisional patent vs. Non-Provisional patent applications

The PTO began offering Provisional applications as a way to lower the cost of the first filing by an inventor. However, these applications expire after only one year, and therefore a non-provisional patent must be applied for before the expiration of the term in order to further your rights. Provisional applications are beneficial in many circumstances. For example, if an inventor is unsure of the potential market, he may not want to use the time and money to file for a full patent. Instead, he files a provisional application, marks the invention as Patent Pending, and attempts to market the product. If the product fails in the market, the inventor does nothing more and is out a smaller amount of money and time. If the product has a strong reaction in the market, he now has the incentive and possibly more capital to use to obtain a non-provisional patent. However, if it is certain that a non-provisional patent will be applied for, it is more cost effective and less time consuming to apply directly for the non-provisional, rather than file both.

Important Things to Consider

Once an invention is disclosed or offered for sale, a patent application must be filed within 12 months for U.S. protection. A patent granted in the U.S. does not give world-wide exclusivity. However, protection may be sought in various countries using the established international system, known at the Patent Cooperation Treaty (PCT), or individual filings. For more information, click here to be linked to the PTO. A patent may take years to obtain, and the fees are not cheap. Once a patent is issued, you still have to pay maintenance fees to the PTO at 3½, 7½, and 11½ years. In the end, the cost of a patent can be as low as $5,000 but don’t let that number scare you, as many patents are worth substantially more than that. Talking with investors is a great way to learn the potential of your invention. Remember, however, to be careful of the information disclosed in these meetings, as you may lose your rights to the patent. If you have any questions, feel free to contact us for a consultation.