Patent FAQ (Frequently Asked Questions)
The following information is offered by Knox Patents: Kulaga Law Office, PLLC, as general information relating to patents issued by the United States Government through the Patent and Trademark Office. Please consult a patent attorney for detailed advice regarding specific situations and circumstances.
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What is a Patent?
A patent gives the patent owner a limited monopoly for what is claimed in the patent. A patent embodies a property right granted by the Government of the United States of America. That right is for the owner “to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States” for a limited time in exchange for public disclosure of the invention when the patent is granted.
What types of patents are there?
Patents issued in the United States are either a Utility Patent, a Design Patent, or a Plant Patent.
Utility patents protect the functional aspects of an invention and are enforceable for 20 years after the filing date. Utility patents include a written description of the invention, including how the invention is made and used. The features of the invention must also be illustrated in drawings. Most importantly, a utility patent includes claims that define what the patent protects.
Design patents protect the aesthetic design or appearance of an invention and are enforceable for 14 years after the patent issue date. Because a design patent protects the aesthetic appearance of an invention, the drawings are the claims defining what is being protected. Generally, it is best to prepare the design patent after the production prototype is completed so as to capture the design that is planned on being sold.
Plant patents protect invented or discovered, asexually reproduced plant varieties. There are few plant patents. Knox Patents does not prepare plant patent applications.
What are the requirements for a patent?
The two primary requirements for having a United States patent issue are that the invention be novel, that is, never been done before, and that the invention not be obvious, based on what has been done before. These two requirements are closely examined by the Patent and Trademark Office during the examination of a patent application.
There are other requirements that need to be noted. Effective March 16, 2013, the United States has a First to File system instead of the previous First to Invent system. The first to file system significantly changes how prior art affects patent applications. Prior art is information that describes, individually or collectively, an invention before a given date. Almost everything publicly known before a patent application was filed is considered prior art.
An inventor cannot get a patent if there was a public use or an offer for sale before a patent application was filed. The new patent law is somewhat ambiguous and there may be situations where there is a grace period. An inventor cannot get a patent if a public disclosure by the inventor was made more than 12 months before a patent application is filed, although, typically, it would be best if a patent application is filed before any public disclosure.
What is a micro entity?
The America Invents Act of 2011 changed the fee structure for patent fees by creating a Micro Entity category. Micro entities are eligible for an additional 25% reduction for certain patent fees compared to the reduced fees paid by small entities. Unfortunately, the PTO also increased the fees, so there is only a small net decrease realized for many of the new micro entity fees.
To qualify for the reduced fees of a micro entity, the inventors and any assignee must qualify as a small entity, have filed no more than four US patent applications, and had an annual gross income for the previous year that is less than a Maximum Qualifying Gross Income.
A small entity is defined as one: (a) whose number of employees, including affiliates and subsidiaries, does not exceed 500 persons averaged over the previous 12 calendar months; and (b) that has not assigned, granted, conveyed, or licensed (and is under no obligation to do so) any rights in the invention to any person who manufactured the invention and could not be classified as an independent inventor or to any concern which would not qualify as a non-profit organization or a small business concern.
To qualify as a micro entity, each inventor and assignee must have an annual gross income for the previous year that is less than the Maximum Qualifying Gross Income defined by the PTO. As of March 19, 2013, the Maximum Qualifying Gross Income is $150,162. For individual inventors, their annual gross income is the total income amount that would be reported on the previous year's IRS form 1040, line 22, Total Income, for only the inventor, not the household.
A Certification of Micro Entity Status must be signed by each inventor and filed when making a reduced payment to the PTO. Before making subsequent payments at a reduced micro entity rate, all inventors must verify their eligibility as a micro entity. The additional reporting requirements for paying fees at the micro entity rates typically results in increased attorney fees.
What is a patentability search?
A patentability search is a search for prior art that would indicate that invention is not patentable because the invention is either not new or obvious. Prior art includes issued patents, published patent applications, and other material published or available to the public. Because of the volume of information that may be prior art, the typical patentability search is limited to searching issued patents and published patent applications in a database created by the United States Patent and Trademark Office (PTO). Because of the sheer volume of patents and published applications (around 8,500,000) and the fact that patents are issued every week and applications are published every week, the PTO, during examination of a patent application, may well find prior art not located during a patentability search, which was necessarily performed before the PTO examiner performs the examination search.
Why should I have a patentability search performed?
A patentability search is valuable for several reasons. First, it gives the inventor an idea as to the likelihood of obtaining a patent and the state of the art surrounding the invention. Second, it helps the patent attorney determine the bounds of the invention and aids in the preparation of the patent application. Third, the results of the patentability search are given to the PTO and helps to focus the PTO examiner in the right direction during examination of the application. As a government employee, the PTO examiner appreciates having an initial patent search submitted with the patent application.
What is an infringement search?
An infringement search is a search for enforceable patents that claim all or a portion of a product, process, or method. The purpose of such a search is to determine the risk of being sued by a patent owner for manufacturing, performing, distributing, or selling a product, process, or method. An infringement search typically requires much more effort than a patentability search because patent claims must be reviewed for the details of the subject matter.
What is a right-to-use search?
A right-to-use search is a search for patents that claim some aspect of a product, process, or method. The purpose of a right-to-use search is to give a manufacturer, distributor, or retailer an indication of whether the product, process, or method is in the public domain, and, therefore, there is a right-to-use the product, process, or method without fear of being sued for infringement. A right-to-use search typically requires much more effort than a patentability search because patent claims must be reviewed for the details of the subject matter.
What about filing a patent application?
In order for a patent to issue, a patent application must be filed with the PTO. There are two types of utility patent applications: a provisional application and a non-provisional patent application. A provisional application is required to include only the invention disclosure and drawings. There is no requirement to file a provisional application for a patent, but a provisional application is useful for establishing a priority date of the invention. In order to obtain a patent, a non-provisional patent application must be filed.
What is a provisional application for patent?
A provisional application for a patent is an application an inventor is permitted to file to establish a priority date with the PTO. A provisional application will not be reviewed by the PTO and it will never issue as a patent. An inventor can say the invention is patent pending after filing a provisional patent application. In order to rely upon the priority date established by a provisional application, a non-provisional patent application must be filed within 12 months of the filing date of the provisional patent application. A provisional application allows an inventor to fully disclose an invention in order to avoid losing any patent rights. For example, if an offer for sale was made almost a year ago, a provisional application can be quickly prepared for filing before the 12 month period expires.
Provisional applications do not require claims, but they must include a complete disclosure of every feature that will be claimed in a future non-provisional patent application. Accordingly, provisional applications are somewhat less expensive to prepare and file than a non-provisional patent application. Also, a provisional application can be prepared in less time than a non-provisional patent application for the same invention.
What is a non-provisional patent application?
A non-provisional patent application is a patent application that is filed with the PTO for review. In addition to the written description and any required drawings that are also required in a provisional patent application, a non-provisional patent application includes claims. Upon a satisfactory review by the PTO, a non-provisional patent application will issue as a patent. An inventor can say the invention is patent pending after filing a non-provisional patent application.
What is the duty to disclose?
An inventor has a duty to disclose any relevant and material prior art to the PTO within 3 months of becoming aware of such prior art. This is an important duty because failure to comply with the duty can result in the patent owner losing all patent rights for what is called committing a fraud against the PTO or, as attorneys would say, inequitable conduct.
Submitting the results of a patentability search to the PTO, along with any other prior art, such as articles and news reports, satisfies the inventor's duty to disclose. There is no duty to search, but if a search is made, there is a duty to report those results to the PTO.
What happens after a non-provisional patent application is filed?
After receiving a non-provisional patent application filed by an inventor, the PTO will perform a preliminary review to unsure all required documents have been received by the PTO. The PTO will send a Filing Receipt to the inventor if the application has been properly submitted. Occasionally, a patent application may be filed without paying the fee or without all the required signatures. In such a case, the PTO will send a Notice to File Missing Parts and the inventor is given an opportunity to complete the submission of the patent application.
The PTO adds the patent application to their list of applications to review. Currently, the PTO takes between 6 and 24 months, or more, before beginning the examination of a non-provisional patent application. If the PTO examiner believes the patent application cannot be issued as a patent, the PTO sends the inventor an Office Action documenting the reasons for rejecting one or more of the claims. The inventor is allowed 3 months to respond, plus an additional 3 months to respond upon payment of an extension fee. Patent attorneys call responding to the PTO examiner patent prosecution, but is it more like a negotiation with the PTO examiner.
If the PTO examiner believes the patent application is allowable, the PTO sends the inventor a Notice of Allowance and Issue Fee(s) Due. After payment of the Issue Fee to the PTO, the patent will issue.
What happens if the PTO rejects the claims in my patent application?
The PTO typically rejects at least one claim in most patent applications. A properly drafted patent application seeks to obtain as much protection as possible for the inventor. The PTO examiner is trying to ensure that the patent claims are not too broad. Compare a patent application to selling a car. If the first person to look at the car buys it for the asking price, maybe the seller was not asking enough for the car. The patent should have claims with broad protection, so the PTO examiner should not be too eager to grant a patent without some negotiation.
After the PTO examiner rejects one or more claims in the first Office Action, the inventor is permitted to respond. The PTO examiner then considers the response and may reject the claims a second time with a Final Office Action if the examiner is not convinced. In order to avoid a second rejection, it is often helpful to speak or meet with the PTO examiner to negotiate a set of allowable claims. Inventors are given three months to respond to an Office Action. A three month extension can be obtained after payment of a fee.
If the PTO examiner is persistent in rejecting the claims, an Appeal can be made to others in the PTO to reconsider the examiner's rejections. The examiner is then required to justify the rejections to others in the PTO.
When is a patent application published?
A non-provisional patent application is published by the United States Government 18 months after the filing date of the first patent application filed (either a provisional or a non-provisional patent application). An inventor can request that a patent application not be published if the inventor does not wish to pursue foreign patent protection.
What happens when a patent is issued?
If the PTO mails a Notice of Allowance, the inventor is given 3 months in which to pay the Issue Fee to the PTO. Between 1 to 2 months after payment of the Issue Fee, the PTO will issue the patent and send the inventor a Letters Patent.
What happens after a patent is issued?
After a patent issues, the inventor is required to pay periodic maintenance fees (renewal fees). The fees are due 4, 8, and 12 years after the patent issues, and the inventor is permitted to pay 6 months in advance and has a 6 month grace period to pay the maintenance fee plus a grace period surcharge.
What is a continuation application?
A continuation application is a patent application that is filed after an initial non-provisional patent application and it continues the prosecution of the initial or previous application. The continuation application can be a continuing patent application, a divisional patent application, or a continuation in part (CIP) application.
Unfortunately, the PTO changed the rules in August 2007 and has limited the number of continuation applications that can be filed. These new rules require reconsideration of past strategies that relied upon filing numerous continuation applications.
What is a continuing application?
A continuing application is a patent application filed after an initial, or parent, non-provisional patent application. The continuing application does not include any new subject matter relating to the invention, but can include new claims describing the invention. If the claims for both applications are found allowable, the inventor will have two patents issued.
Because of the fee structure of the PTO, it may be desirable to split the claims for an invention between two applications to minimize the filing fee. One tactic or strategy is to file a first, non-provisional patent application with a relatively narrow set of claims, and, after the PTO has examined that application, file a second application for the other claims, which include the broader claims. Such an application would be a continuing application.
Also, if the PTO examiner continues rejecting one or more claims of an application, a continuation application allows the claims to be resubmitted for further review and examination.
What is a divisional application? Or, what is an election / restriction requirement?
A divisional application is one that is filed after an initial non-provisional patent application is filed and in which the PTO examiner says that the initial application has claims for two or more different inventions. A patent can only claim a single invention. If the PTO examiner believes that more than one invention is being claimed, the PTO examiner will require an election of claims, or make a restriction requirement. Currently, the PTO has increased the number of restriction requirements to inventors. Therefore, election / restriction requirements are becoming more common.
In such a case, one possible response is to delete the claims for one of the inventions from the parent application and file those deleted claims in a second, divisional application. If the claims for both inventions are found allowable, the inventor will end up with two patents.
What is a continuation in part (CIP) application?
A continuation in part (CIP) patent application is one in which further development occurs on an invention after the initial, non-provisional (parent) patent application is filed. New subject matter is added to the parent application and the new patent application is called a CIP application. As long as the new developments in the invention are added to a patent application that is still pending, then the parent application will not be cited against the inventor by the PTO examiner. A pending patent application is one that has not been issued or abandoned.
If a patent application claiming the new developments is not filed while the parent application is pending, then the PTO examiner may use the parent application against the inventor by stating that the new developments are not novel or are obvious in view of the parent application.
What about protecting the invention outside the United States?
First of all, a United States patent will protect an invention from others making the invention in a different country and then importing the product into the United States. Therefore, if the market an inventor is trying to protect is in the United States, foreign patent protection may not be necessary.
If an inventor wishes to market and protect an invention outside the United States, a patent application must be filed for each country in which protection is desired. One alternative to immediately filing patent applications in every desired country is to file a patent application under the Patent Cooperation Treaty (PCT). A PCT application must be filed within one year of filing any patent application for the invention and allows the inventor 30 months after the first filing date to file patent applications in countries outside the United States.
An inventor should be mindful that the patent laws for other countries differ from the patent laws of the United States. Accordingly, practices acceptable in the United States may prevent an inventor from obtaining patent protection in another country. If foreign patent protection is desired, a patent attorney should be consulted. In many cases, the United States based patent attorney will work closely with a patent attorney in the country of interest to secure the inventor's patent rights.
Disclaimer: The above information is offered as general information that may or may not be applicable to specific situations. The reader is cautioned to obtain the advice of a patent attorney before acting on the basis of the above information.