Patent FAQ

A patent is an official document that confers rights to the inventor of a new and useful invention.  A patent is also a contract between an inventor and the United States government, which provides an inventor with a limited monopoly for a period of years in consideration for the inventor disclosing a new invention to the public through a published patent.  The limited monopoly granted by a patent is the right to exclude others from making, using, selling, and offering for sale the invention covered by the patent and importing the patented invention into the United States.  Without a patent, anyone can make, use, and sell your invention without your knowledge, without your permission, and without paying you any money.

Three basic types of patents are available to inventors: (1)utility patents, (2)design patents, and (3)plant patents.  A utility patent protects the structure and function of a device and methods and processes, a design patent protects the ornamental features of an article of manufacture and a plant patent protects new species of asexually reproduced plants.  In the United States the current term of a utility patent is 20 years from the date it was filed with the United States Patent and Trademark Office.  A design patent in the United States enjoys a term of 14 years from issuance, and plant patents last for 17 years from issuance.

To be patentable an invention must be a new, nonobvious, and useful process, machine, article of manufacture, composition of matter, or an improvement to any of the foregoing.  In addition to utility patents for any of the foregoing categories of inventions, patent protection is also available for the ornamental design of an article of manufacture and to asexually reproduced plant varieties.

Laws of nature, physical phenomena, abstract ideas, literary works, and inventions that are either not new or useful are not patentable.  Literary works such as dramatic, musical, and artistic works can be copyright protected.  Inventions that are offensive to public morality are also not patentable.  An invention is only patentable if it is none of the foregoing, new, nonobvious, adequately described or otherwise enabled in a patent application, and claimed by the inventor in a patent application in clear and definite terms.

A patent search is a search of the prior art, namely, that which is known and already invented.  The determination of whether to file a patent application often depends on the outcome of a patent search.  A patent search is usually important because it can not only save an applicant the expense of filing a patent application on subject matter already patented or within the public domain, but also afford an applicant an opportunity to invent over the subject matter discovered from the search.  A patent search can also make an applicant aware of potential infringement issues.

A patent search is a search of all previous public disclosures (prior art) including, but not limited to, previously published disclosures and patented inventions anywhere throughout the world.  Although a patent search of the prior art before filing an application for patent is not required, it is advisable to do so.  A registered patent attorney or agent is a useful resource for performance of a patentability search.  After an application is filed, the Patent Office will conduct a search as part of the official examination process.  Conducting a thorough patent search is difficult, particularly for the novice.

Patent searching is a learned skill, and we use a professional patent searcher for all of our patent searches.  He searches directly at the United States Patent Office, which, in our opinion, is the best way to do patent searches.  After we receive the results of the patent search, we review it and prepare a written opinion of whether the invention is patentable in view of the patents found from the search.  If the invention is patentable, we indicate why and the scope of protection a patent may afford an inventor.

There are a variety of useful online resources available for simple patent searching.  One useful resource is http://gb.espacenet.com/espacenet/gb/en/e_net.htm, which is an international search site providing patents from around the world.  It is believed to be the best search site on the web.  Adobe Acrobat Reader, which can be downloaded for free, is necessary to view patents at this web site.  Another useful resource for patent searching is http://www.uspto.gov, which is the United States Patent and Trademark Office web site.  There are a number of other sites for conducting simple patent searches, but we believe these to be the best and most useful.  Online patent searching is fun and useful to a limited extent.  Even if nothing is found from an online search, which would prevent an inventor from patenting an invention, it is advisable to conduct a thorough patent search in order to be sure that the invention is patentable and it is advisable to do this through competent legal counsel.

No.  However, perhaps the most important issue for an inventor when deciding whether to invest in pursuing a patent is whether the invention is capable of being patented.  A competent patent search can often answer this question by providing insight into whether the invention sought to be patented is an advancement over the prior art, namely, that which is already known or patented.  There are no drawbacks with a patent search, and it is usually a prudent first step to take in the pursuit of a patent.

An application should be filed as soon as possible after the completion date of the invention.  An invention is complete when the inventor can provide a description that would enable one of ordinary skill to make and use the invention.  A patent application must be filed within one year of the date that the invention becomes known or used by others, or offered for sale.  If the invention is still in the early developmental stage, and you are not yet ready to file a patent application, the USPTO offers the Document Disclosure Program.  A disclosure with the Document Disclosure Program is not an application for a patent and does not provide any patent protection for an invention.  Although such a disclosure is accepted as evidence of the date of conception of the invention, it may not provide the basis to establish an earlier filing date for any later filed patent application on the invention.

The complexity of an invention governs the cost of a utility patent application.  Less technical inventions cost less to prepare and process through the United States Patent and Trademark Office than more complex inventions. 

The cost of obtaining a utility patent relates to preparing and filing the patent application, prosecuting the patent application through the Patent Office, issuing the patent and maintaining the patent.  At Parsons & Goltry, most utility patent applications cost approximately $3,500.00 to $8,000.00 prepare and file.  For the most part, obtaining a utility patent for an invention, to include a patent search, preparing and filing the patent application with the Patent Office, prosecuting the patent application through the Patent Office and issuing the patent, costs approximately $10,000.00-$14,000.00 over about a two year period of time.

Design patents generally cost between $2,000.00 and $3,000.00 to obtain.

A provisional application is a preliminary application that permits an applicant to secure an early filing date to preserve rights to an invention.  The provisional application includes a specification describing the invention, any necessary drawings and the filing fee. 

At Parsons & Goltry most provisional patent applications cost between $1,500.00 and $3,500.00 inclusive of the application preparation fee, the government fee, informal drawings and express mailing.

The provisional utility application must be converted into a regular or non-provisional utility patent application within one year of the date it was filed, or all will be lost.  Therefore, the first action is to mark the anniversary date on your calendar.  Do not forget to do this.

In order to obtain maximum protection for an invention, the conversion from provisional utility application to regular utility application should be done by a registered patent practitioner, whether a registered patent agent or a registered patent attorney.  The practitioner will need approximately six to eight weeks to have the official patent drawings prepared, draft the utility patent application, and attend to the filing.  It is recommended that you conference with the practitioner at least two months before the anniversary date of the filing of your provisional utility application.

Note that 35 USC § 102(b) states, in part, “[a] person shall be entitled to a patent unless the invention was…described in a printed publication…or in public use or on sale…more than one year prior to the date of filing an application for patent…”  In other words, if a regular utility patent application is not made within one year of the filing of a provisional utility application and also claims the benefit of the earlier-filed provisional utility application, it is considered that the inventor has dedicated the patent rights to the public.  Allowing a friend or relative to use the invention constitutes public use.

Use the intervening time between the filing of a provisional utility application and the filing of a regular utility patent application as judiciously as possible to investigate the commercial potential of your invention.  SCORE® counseling and assistance is available for this purpose.

For a commercially successful product, invention is usually made at three times.  The first time is “off the drawing board” or when the invention is first conceived.  A provisional application for patent should be filed immediately to avoid costly and, perhaps, devastating problems.  The priority date is established in the records of the United States Patent and Trademark Office and all products, literature, and documents, including engineering drawings, should be marked “Patent Pending” or “Pat. Pend."  However, before a provisional utility patent application is filed, it is strongly recommended that you seek the counsel of a registered patent practitioner because it may be either not possible or not advisable to file a provisional patent application.

Further invention is usually made during the research and development stage as the inventor experiments, tests and perfects the invention.  Good records should be kept of the modifications to the invention and to alternate embodiments of the invention, which must be presented to the patent practitioner for inclusion into the regular utility patent application.

After the inventive product is on the market, customer feedback is received.  It is very probable that the inventor may make further changes at this time to enhance the marketability of the product.  Again, records should be kept and the modifications presented to the patent practitioner well before the first anniversary of the public disclosure.  These additional modifications can be protected with the filing of a patent application, whether a provisional patent application or a regular utility patent application, that claims priority back to the earlier-filed provisional utility patent application.

There is no way to control how an Examiner examines a patent case and assesses the prior art.  At Parsons & Goltry, we have complete control over our role prosecuting patent cases, which is to show the Examiner why an invention is different from the prior art.  Furthermore, our job is to get each inventor the best and most comprehensive patent protection possible.  To do this almost always results in an initial rejection of the claims of a patent application.  However, this is almost always no cause for alarm and is just the first step toward the issuance of a well-constructed patent.

After it is shown to the United States Patent and Trademark Office that a proposed invention is new and novel over the prior art, the Patent Office will allow the patent application disclosing and claiming the invention.  At this point, an issue fee must be paid for the patent application to mature into a patent.  After a patent issues, periodic maintenance fees must be paid to the government to keep the patent active.  Design patents do not require maintenance fees.

In some countries, the one-year time period discussed above is extendable for up to eighteen (18) months by first filing a utility application with the Patent Cooperation Treaty (PCT) Office within one year of the original United States filing date.  The PCT patent application must eventually be converted to a national patent application for any participating PCT country where an applicant wishes to pursue patent rights.

A patent is necessary if you want to prevent others from making, using, and selling your invention.  Without a patent, anyone can make, use, and sell your invention without your permission, and without paying you any money.

An invention is a conception of an idea that is diligently reduced to practice.  The date of an invention diligently reduced to practice is the conception date.

Conception is the mental formulation and disclosure by an inventor of a complete idea for a product or process.  It is important to understand that the idea must be of a specific “thing,” not just a desirable end or result.  The idea must also be sufficiently complete so that anyone of ordinary skill in the art could make and use an invention based on the conceived idea.

After conceiving an idea, the inventor must generally make a conscious effort to reduce the conceived idea to practice, whether by filing a patent application disclosing the invention or building the invention.  This “conscious effort” to reduce a conceived idea to practice is diligence.  There is no single objective standard for establishing diligence.  Rather, the determination of whether an inventor diligently reduced an invention to practice is made on the basis of the specific facts and circumstances surrounding the inventor’s activities relating to reducing the invention to practice after conception. 

It is important to understand that an inventor is not required to rush or take the most efficient path toward reducing a conceived idea to practice.  Also, after an inventor has achieved an actual reduction to practice, the inventor need not show diligence from the actual reduction to practice date to the filing date of a patent application because an inventor is under no duty to file a patent application promptly.  However, it is recommended that an inventor file a patent application as soon as possible after making an actual reduction to practice.

A constructive reduction to practice is the filing of an application for patent disclosing the invention.  The patent application must provide an enabling disclosure of the invention.  A disclosure is enabling if it enables those of ordinary skill in the art to practice the invention. 

An actual reduction to practice occurs when the invention is constructed and sufficiently tested to prove its usefulness for its intended purpose.  A process is reduced to practice when it is successfully performed.  A machine is reduced to practice when it is assembled and used.  A manufacture is reduced to practice when it is completely made.  A composition of matter is reduced to practice when it is completely composed.

For additional useful information about patents, please go to the Frequently Asked Questions About Patents section at the United States Patent and Trademark Office web site.

Below is a list of some of the most recent patents that have issued through our firm.