Protecting New Products with Patents
If your business is in the business of innovating, it is essential that you protect new products by taking out a patent. Patents are granted by the U.S. Patent and Trademark Office (USPTO) to inventors, giving them the right to prevent exploitation of their inventions by others. U.S. patent law specifies what may be patented and establishes the USPTO as the administrator of the law. The full process of patenting a new invention is time-consuming and expensive, and it may require the services of a professional patent attorney or patent agent, so do be realistic about the commercial viability of your idea before you start the ball rolling. The information below offers some general guidelines, but for specific advice about how to protect your invention, visit the USPTO web site or consult a patent professional.
A patent for an invention is the grant of a property right to the inventor, issued by the USPTO. Generally, the term of a new patent is 20 years from the date on which the application for the patent was filed in the U.S. In some special cases, the term begins on the date an earlier related application was filed, subject to the payment of maintenance fees. U.S. patent grants are applicable only within the U.S., U.S. territories, and U.S. possessions. Under certain circumstances, patent term extensions or adjustments may be available.
The right conferred by the patent grant is, in the language of the statute and of the grant itself, "the right to exclude others from making, using, offering for sale, or selling" the invention in the U.S. or "importing" the invention into the U.S. What is granted is not the right to make, use, offer for sale, sell, or import, but the right to exclude others from making, using, offering for sale, selling, or importing the invention. Once a patent is issued, the patentee must enforce the patent without any aid from the USPTO.
There are three types of patents:
- Utility patents may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or compositions of matters, or any new useful improvement thereof.
- Design patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture.
- Plant patents may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant.
You own your invention. Like any other form of property you own, you may sell your invention or rent it out. Remember that your patent protection is limited to the countries to which the patent applies.
Many inventors attempt to make their own search of prior patents and publications before applying for a patent. This may be done in the Patent Search Room of the USPTO, and in libraries located throughout the U.S., which have been designated as Patent and Trademark Depository Libraries (PTDLs). An investor or his or her patent attorney or agent may make a preliminary search through the U.S. patents and publications to discover if the particular invention or one similar to it has been patented previously. This search may not be as complete as that made by the USPTO during the examination of an application, but it can provide a preliminary indication that the invention is or is not patentable.
In the U.S., there are two types of patent application: non-provisional and provisional.
A non-provisional application includes:
- a written document that offers a specification (description of and claims for the invention)
- an oath or declaration
- a drawing depicting the invention, if required
- the filing fee.
A provisional application for patent—offered to inventors by the USPTO since June 8, 1995—is designed to provide a lower cost filing for a first patent in the U.S. and to give U.S. applicants parity with foreign applicants. Provisional application provides the means to establish an early effective filing date in a patent application and permits the term "Patent Pending" to be used in connection with the invention. Claims and an oath or declaration are not required for a provisional application. Provisional applications may not be filed for design inventions.
Provisional applications are not examined on their merits. A provisional application will become abandoned by the operation of law 12 months from its filing date. The 12 months are not counted toward the 20-year term of a patent granted on a subsequently filed non-provisional application, which relies on the filing date of the provisional application.
Different fees apply to these applications. Research fees on the USPTO web site to ensure that you are paying the lowest possible fee for your circumstances.
The application for patent is not examined by USPTO until all required parts, completed according to regulation, are received. If any application is filed without all the required parts correctly completed for obtaining a filing date, the applicant will be notified of the deficiencies and given a time period to complete the application filing (a surcharge may be required). The filing date of the application becomes the date of the complete, correct submission. If the omission is not corrected within a specified time period, the application will be returned or otherwise disposed of, and any submitted fee will be refunded less a handling fee.
A patentee who makes or sells patented articles, or a person who does so for the patentee, is required to mark the articles with the word "Patent" and the number of the patent. This mark is a protection for the patentee, who may not recover damages from a patent infringer unless the infringer was duly notified of the infringement and continued to infringe after the notice.
The marking of an article as patented when it is not patented is against the law and subjects the offender to a penalty. Some persons mark articles with the terms "Patent Applied For" or "Patent Pending." These phrases have no legal effect, but only inform others that an application for patent has been filed with the USPTO. False use of these phrases or their equivalent is prohibited. The protection afforded by a patent does not start until the actual grant of the patent.
Don't tell anyone other than trusted colleagues or professional advisers about your invention before filing an application. If you must discuss your invention with others before filing, always have these parties sign properly written confidentiality agreements.
Basic advice from the USPTO is freely available from the web site, which also provides a searchable directory of patent attorneys/agents by state. Be sure to research qualifications and reputation before you agree to any professional terms, however; if you can get a personal recommendation from a colleague or friend, so much the better. If patents are key to your business, you may wish to make use of a patent watching service, which will report on the patent activities of your competitors, as well as all other activity in your field in foreign countries.
A regular U.S. patent application typically takes three to eight weeks to prepare and file. The USPTO will take from 6 to 24 months to complete the initial examination of a patent application. After the initial patent examination, the patent examiner and the inventor (or his agent) may enter into discussion to clarify any questions regarding the invention, which may take another six months to a year. If the U.S. patent examiner can be convinced that the claimed invention is able to receive a patent, then a patent commonly takes one to three years to issue after the filing of the original patent application.
U.S. Department of Commerce.
Pressman, David.
United States Patent and Trademark Office: www.uspto.gov