What is a patent?

A patent for an invention is the grant of a property right to the inventor, issued by the United States Patent and Trademark Office (USPTO). The right conferred by the patent grant is “the right to exclude others from making, using, offering for sale, or selling” the invention in the United States or “importing” the invention into the United States. 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 aid of the USPTO.

How does the patent application process work?

Generally there are three steps involved in getting a patent. First, a background search of other inventions will tell you whether you are the first to come up with your invention. The second step is the drafting of the actual application. Typically, this is done with consideration of the search results in mind, and with some degree of interaction between client and attorney regarding the specifics of the invention. With an application on file, you can and should label your product as "patent pending." Third, the patent office and patent attorney will negotiate the scope of the patent. This typically can include phone calls between attorney and examiner, as well as written arguments to the patent office.

How long does the patent application process take?

Typically from the time the patent is on file, it takes between 18 and 36 months for a patent, if allowed, to issue. Some technical areas, such as computer programs, can take longer.

Am I guaranteed to get a patent?

In a word, no. The patent office will not grant patents for a number of reasons, the most common being that the patent was not “new” or was “obvious” in light of the current state of the art or previous inventions. Thus, it is important to have a thorough search of the available prior art before going forward with the application process.

Who may apply for a patent?

Only the true inventor can apply for the patent. If necessary, an assignment can then transfer full or part interest in the patent to anyone else.

Can I perform a patent search?

Before having an attorney or patent search firm conduct a search on your invention, you may want to do some investigation yourself. Some inventors have saved themselves the need to hire a patent lawyer by finding on their own that unfortunately someone else has developed their invention first.

Do I need to do a patent search at all?

To get a patent, there is no requirement that a search be performed. You could simply file the patent application and wait and see how the patent office replies, however, in the interest of drafting strong patents, the search results are generally an integral part of the application drafting process.

How long do I have to file my patent?

In order to further scientific progress and innovation, there is a limit to how long an inventor may wait before filing. Generally, you have one year from the time your invention is complete before you must file. However, the point at which the invention is “complete” varies, so if you are unsure, it is best to speak with a professional.

If another inventor has the same idea or invention, who gets the patent?

Currently in the United States, an inventor who files a patent application first can still be denied a patent if another inventor developed the idea first. However, in most other countries, and likely soon in the United States, the first inventor to file an application is given the patent, even if that inventor was not truly the first to invent. To protect yourself in case of future litigation, it is always very important for an inventor to maintain detailed documentation of all dates relevant to the development of the invention.

Can I tell anyone about my idea?

It is strongly advised that all inventors keep their invention confidential until a patent application is filed. Not only is there a risk of having a competitor copy your idea, you also may surrender patent rights in the United States and abroad. If a disclosure is necessary, you are encouraged to enter into a confidentiality agreement with whomever needs to know.

Do I need a prototype in order to file a patent application?

No. In the past, the patent office required an actual prototype on file with every patent. However, when the patent office burned down on February 25, 1837 this rule was re-thought, and inventors are no longer required to submit a prototype. Instead the invention must be reduced to practice--an ill defined legal concept essentially meaning that the inventor has developed the invention to a point where the invention could be described in words or pictures to the extent that anyone in the inventor's field of technology would be able to take those writings or pictures, and make the invention.

Is my patent valid in other countries?

A U.S. patent only provides protection of your intellectual property in the United States. Thus, if foreign protection is needed, it must be applied for separately. The scope of protection should thus be decided between client and attorney, based on the estimated value and market of the intellectual property at stake.