A US patent is a property right granted by the US government to all of the actual, first inventor(s) of an invention under the US constitution and statues passed by Congress that grants the inventors the right to exclude others from making, using, selling, or importing the invention for a specific period of time. It does not grant the right to make, use, sell, or import the invention to the patent holder(s) since patents can overlap and end up being mutually exclusive (e.g. where a first patented product uses a second patented product as part of the first patented product the first patent could not be utilized without the second patent holder's permission).
There are three types of patents:
A utility patent is the type most inventors obtain for their invention and it can be issued for a:
- Process (method)
- Article of manufacture
- Composition of matter
- Improvements of any of the above
A design patent can issue only for a specific ornamental design and cannot be used to protect a functional element.A plant patent can issue for a sexually reproduced plant.
A utility patent can cover a process, a method, a machine, an article of manufacture, a composition of matter, or improvements in any of these things.
Several things cannot be patented even if they fall into the above categories including:
- Laws of nature
- Abstract ideals
- Literary works
- Physical phenomena
- Offensive inventions
- Inventions that aren't useful including things considered to violate the laws of science such as perpetual motion machines and perpetual energy generation.
A utility patent is enforceable for a period from its issue date as a patent and expiring 20 years from the earliest non-provisional patent application filing date claimed by the patent. It should be noted that a provisional patent application never issues as a patent under any circumstances and does not start the 20 year period.
What are the steps of getting a patent application filed?
Briefly the steps involved in getting a patent application filed at the US patent office involve the following:
- Contact Passé Intellectual Property and discuss your invention using our free, confidential, no obligation consultation service with a patent attorney to determine costs and risks
- Engage Passé Intellectual Property to perform a patentability search and opinion to determine potential patent scope and likely hood of Patent Office approval
- If the patentability opinion is positive, order the writing of a patent application. This preparation process takes about 60 to 120 days depending on the complexity of the application and how many drafts are produced. A rush service is available for urgent situations. We will then prepare an application for filing of from about 15 to about 250 pages
- Prepare the Patent Office paperwork for filing a patent application, about 1-2 hours paralegal work for a provisional application and about 4-5 hours work for a non-provisional (regular) patent application including an Invention Disclosure Statement.
- Electronically file the patent application with the Patent Office including paying the Patent Office filing fee
- Provide you with all filing information including a filing receipt, filing serial number giving you patent pending status within 24 hours of completion of filing the application.
Passé Intellectual Property provides a free, no obligation, initial consultation with a patent attorney. We discuss the entire process, including the costs for your unique invention. Contact us at firstname.lastname@example.org or 919-256-8196.
A patentability search involves searching the public world wide records for published patents and patent applications at the US and foreign patent offices, searching the internet, and in some cases literature articles for any public disclosure(s) relating to the invention to see if the client's particular invention is novel, non-obvious, and useful within the statutory meaning of those terms. A review of any relevant disclosures that are found is completed and an opinion of an attorney is given to you as to the likelihood of obtaining meaningful patent coverage and of what scope is obtainable for the invention in view of what was found. In most cases the search and an oral patentability opinion runs about $1,200. It can be less where something negative is found quickly and is usually more where a literature search of databases is necessary (although it is usually unnecessary to search literature for inventions that don't normally appear in literature articles).
There is no law requiring that you have completed a patent search or receive any kind of patentability opinion prior to the filing of a patent application. However, without a search, the patentability of the invention and the scope of a patent you may be entitled to receive cannot be determined. Without the search, the content of what you would be entitled to receive would only be a wild guess. A mistake in scope can easily lead to a complete loss of any patent rights or rights that could have been broader. No prior searching is a recipe for an expensive failure.
A utility provisional patent application is the most misused element of the US patent system and the largest cause of the loss of patent rights for inventors. A provisional application is a temporary patent application that only lasts 12 months from its filing date. A provisional application is never reviewed or examined during its 12 month lifetime and it never issues as any kind of provisional patent. A provisional application requires the filing of a non-provisional patent application (also called a regular patent application) which is fully supported (has the same content) by the provisional application within the 12 months of the provisional application filing date or the provisional filing date and all benefits from the provisional application are lost. When the regular application is reviewed (on average 24 months after filing the regular application), the examiner will review the provisional application for completeness and for support for the regular application. If either are missing, the provisional is invalidated and all benefit is lost.While a provisional application requires the same content for scope, making and using an invention as a regular application and must fully support the regular application to prevent being invalidated by an examiner, a provisional application allows content presentation, including drawings, in an informal manner.
A provisional application is occasionally a good tactic but it usually is not a good choice unless certain conditions exist as discussed below. Considering that a provisional application whose content is compliant with all the rules (i.e. is well written) requires a thorough and experienced understanding of patent law and the writing of patent applications, its preparation should never be considered or attempted without at least advice of a professional.
The Provisional Application Trap
The big trap of the provisional application system is that the US Patent Office allows anyone to file literally anything as a provisional application and initially be given a filing date and assigned a serial number (and thus given "patent pending" status). The Patent Office has allowed this because of the informal nature of a provisional application. However, the Patent Office accepting your initial filing and you being allowed to keep the provisional application filing date, patent pending status, and the protection that the provisional application provides are two different things. It is easy for someone to believe that because you have a filing date and serial number, that you are protected until a regular application is filed and that the date of filing of the provisional application is irrevocable once issued. It is also easy to believe a provisional with minimal information at worse will give some protection and that missing items can be provided in the regular application.This is simply NOT the case and a provisional application requires specific minimum content to prevent invalidation. Since the Patent Office does not review a provisional application for that required minimum content or compliance with the rest of the rules for provisional patent applications during the 12 months the provisional application is pending, the danger is that you will not find out till well after filing of a regular application that your initial provisional application filing date is irrevocably lost and your patent rights are either seriously impaired or lost altogether long after there is any chance to correct.
It is a patent myth and completely erroneous that a short provisional application (less content than a regular application) can be filed and that such an application would provide you any protection whatsoever while waiting to file a regular application. Therefore, it is also wrong that there is money to be saved by writing a shorter provisional application. The money saving, if any, in using a provisional application comes from the lower filing fee, less formal Patent Office paperwork, and the ability to use informal drawings and an informal style to the content of a provisional application. Although, it should be noted that the provisional application's informal style often leads to more information being necessary in the provisional application rather than less to provide enough content. This occurs much like the collecting of research information for publishing a paper. While the information collected is usually an informal collection of information, it is much longer than the final well written article based on the collected information. More often than not the safest method for writing a provisional application is to use the formal style for the text so that nothing is missed and perhaps leaving only the drawings in an informal (hand drawn) style. However, since when filing a provisional application, the regular application and all the filing fees and formal drawings must still be paid and filed within a year's time, it is always the case that the total cost of obtaining a patent using a provisional as a first application is higher than filing a regular application as a first patent application.
What REALLY needs to be in a Provisional Application?
Both the Patent Office and the Supreme Court state that in order for you to keep the filing date of a provisional application and to use the provisional application as a priority document for the content of a later filed regular application, a provisional application must contain the following content in both the provisional and non-provisional applications:
- A written description of the complete invention, complying with all the requirements of 35 USC § 112 first paragraph including how to make and use all embodiments of the invention as claimed; and
- Any drawings necessary to understand the invention and complying with 35 USC §113.
If content complying with either of these rules is missing or incomplete in a provisional application, then the filing date of a provisional application will be lost forever. It should be noted that this content requirement is identical for both a provisional application and a regular application. See the US Patent Office web site for a detailed explaination of the legal requirements at www.uspto.gov/web/offices/pac/provapp.htm.
While no formal "claims" are required for a provisional application according to some web sites, many attorneys (including this office) feel that at least one claim needs to be filed in a provisional application. This is because the rules cited above require, among other information, that the content of any patent application contain a complete description of how to make and use every embodiment of the claimed invention. Without a "claim" of the invention in the provisional application, it is hard to see how one could ever comply with that test. We recommend that all provisional applications have at least one broad claim but prefer they contain a complete set of claims.
When is it good to file a provisional application?
One benefit to filing a provisional application is that the expiration date of a patent that issues from a regular application claiming priority to the provisional application is 21 years from the provisional date rather than just 20 years from a regular application filed as the first application. However, since the examination process is delayed for a year with a provisional application, the total time an issued patent remains enforceable is the same regardless of which type of application you file first. The only difference is that the start date and end dates are just shifted by a year. Therefore, if it is better that you obtain an issued patent sooner, then you should file a regular application first. If you would rather have the patent issue a year later but get that year added to the end, a provisional application should be considered. Again, we recommend the provisional application look just like the regular application with all its formalities. Passe Intellectual Property frequently files a provisional application with little or no modification compared to the regular application since the provisional application was written in a formal style with all the content necessary for the regular application filing.
One other time that you might consider filing a provisional application is when there is a fixed urgent deadline for publishing of a technical description, a talk, or an article is about to occur, AND one or more foreign patent applications will be filed. A copy of the article or talk could be filed, however, the informal provisional application should be followed up with a complete provisional, or a regular application as soon as possible since its only value in these cases is to prevent your publication from being used against you and not to obtain an initial filing date. This is one of the instances where filing a provisional application with more information (albeit informally) than a corresponding regular application is probably critical.
The last time a provisional application might be considered is when the initial cost savings (which in certain instances can run from a couple hundred dollars to as much as a thousand dollars) which comes from a lower filing fee, less filing paperwork to be completed by a patent professional, and informal drawings (not requiring a draftsman) is worth it for the first year. This has to be balanced against the fact that after no more than a year the regular application and all its associated costs for filing and formal drawings must be paid in addition to the provisional patent application costs, thus increasing the total cost of filing over filing a regular application alone.
What should i do next?
The provisional patent application is clearly an area fraught with complexity and dangers. If you wish to have a more detailed discussion of provisional applications and how they should or shouldn't be used with your particular invention, or if you already have a provisional application filed and are wondering what to do next, we recommend talking to us using our free, no obligation consultation service with a patent attorney at info@passeIP.com or 919-256-8196.
While the patent office allows you to file anything as a provisional application, the patent rules, laws and court cases are clear that unless a provisional has the same content as a regular application (albeit informally presented) it is not entitled to keep its serial number and filing date and all protection from the provisional application will be lost. See: "What is a provisional utility patent application?" for a more complete explanation.
Several things will happen if your provisional patent application does not meet the minimum content required of all patent applications both provisional and regular. There is also risk of other catastrophic things occurring.
- Permanent loss of the provisional filing date.
- Permanent loss of all US patent application protection including patent pending status until an adequate provisional or regular application is filed.
- Permanent loss of all foreign patent rights if the invention is published (by you or anyone else) or offered for sale in any way before an adequate provisional or regular application is filed.
- All publications before you file an adequate provisional or regular application can be cited against your adequate US application and possibly prevent you from obtaining patent coverage.
- Someone else could beat you to the patent office with the same invention.
Each case and circumstance is different. We recommend that there be a well reasoned discussion with a patent professional before deciding which approach will best serve your business needs. If there is any doubt, always file a regular application.
This is very simple. You get immediate "Patent Pending" status on the filing date of a properly written provisional patent application or regular patent application.
If you have filed a well written provisional or regular patent application you have patent pending status. You can now begin the business steps of either licensing your invention or selling your invention in the marketplace. If you have filed a provisional patent application you will still need to file a regular patent application within 12 months of the filing date of the provisional application. In addition, regardless of which type of patent application you filed first, you must begin the process of filing for foreign patent protection within one year of your first filing date if you are seeking protection outside the US.
Your provisional application is neither reviewed nor examined. Your patent application is only placed in the queue for examination once it is filed as a regular patent application. The patent office says the average wait for the examiner to pick up your regular application the first time is about 2 years, however, depending on the technology involved in your invention, it can be anywhere from about 6 months to 5 years or more. Once the patent office reviews your application, 99% or more of the time your application will require one or more written discussions (Office Actions) with a patent examiner about various issues relating to patentability before there is an allowance (Still only 80% of all applications written by patent professionals and less than 1% of self written applications are ever allowed).
An issued US patent only provides protection within the United States. You must file in each country that has a patent system if you wish to obtain patent coverage elsewhere. While there are well over 150 countries that have a patent system, most people limit the foreign filing of patent applications to the top few countries that represent the largest markets for their invention.
You do not have to file in the selected non-US countries at the same time as your first US patent application but you must begin the patent process within 12 months of that first date (earliest of your first well written provisional or regular application) or you will lose all rights to foreign patent protection. You have two choices to begin the process. The first is to file a national application in each of the countries you are interested in. the second is to file a PCT application which in the countries it covers delays by 18 months the requirement to file a nationally based patent application. If you follow the rules properly your foreign patents will benefit from your earliest US filing as if they were filed on the same date.
Foreign filing is an important decision in the patent process if sales are contemplated by your or a licensee outside the US. A through discussion with a patent attorney should be completed before proceeding to file outside the US and to make sure all your foreign rights are preserved.
The Patent Cooperation Treaty (PCT) patent application is a temporary patent application which preserves your right to file a foreign national patent application in countries which participate in the treaty for an additional 18 months before filing a national application if the PCT application is filed within 12 months of your earliest US patent application filing (either provisional or non-provisional). That means you would not have to file a national application outside the U.S. for a total of 30 months from your initial filing (priority date). The vast majority of countries that have a patent system participate in the PCT system (Taiwan the most notable exception). The PCT can even be used to delay the filing of a regular US patent application off of a provisional application, if filed properly. While a PCT patent application does not issue as a patent, the application is examined and a search report is provided which includes a general opinion as to patentability from a patent examiner. While not obligated, many patent examiners in the U.S. and other countries follow the results of the PCT opinion since it saves them the trouble of doing the work themselves. The requirements for a PCT patent application are similar to a regular US application and in most cases your U.S. patent application can be filed as a PCT application.
Your patent application or issued patent is just one step to making money with the patent system. You will either have to market your invention yourself or license your invention to someone who can. Regardless of which way you choose to proceed, it is always best to surround yourself with experienced people. Passe Intellectual Property can help you explain to investors, potential licensees, or anyone else you need about the value and coverage of your patent rights. We can also provide references to other experienced professionals you may need along the way. The licensing or marketing of a patent or product is time consuming and best done by yourself or someone you can add to your company or team with marketing (rather than legal) experience. Care should be taken to avoid invention help/marketing companies that advertise quick, easy, or cheap solutions to patents, marketing, or licensing, especially on the internet. The Patent Office and the Justice Department have repeatedly reported that many of these companies are essentially worthless and frequently take innocent inexperienced inventors for thousands of dollars with little or no patent or marketing results. A patent gives you a market advantage but you must take advantage of it yourself.
Patent attorneys are required to pass a rigorous bar exam separate from the one they take to obtain their law license in order to practice before the US Patent Office. The practice of patent law is the only legal specialty requiring a separate licensing exam to be able to practice their specialty. The exam requires the understanding of literally hundreds of pages of laws and regulations covering the practice of patents as well as knowledge of the procedural rules published in the manual of patent examining procedure (MPEP) used by the Patent Office to examine, review, and accept or reject your patent application. In addition, they must be familiar with the particular language used to word patents since over time certain words have come to have specific legal definitions different than their everyday meanings. Most attorneys spend their first year or more of practicing patent law reviewing issued patents and answering Patent Office actions before being allowed to write their first patent application. Even then, their first few years are completed under the tutelage of a senior patent attorney who reviews their work.
The Patent Office keeps a list of all patent professionals licensed to practice before the Patent Office who are in good standing. You should make sure that you dealing directly with a patent attorney and your application is being prepared by a licensed professional who has sufficient experience and skill and is willing to provide you with references. You should have a direct discussion with your patent attorney prior to commencing work to make sure the individual and yourself can work together and that the attorney understands your invention.