Kevin Mark Klughart
PhD, PE, JD, MIP, LLM
Patent Attorney / Engineer
What does a patent cost?
See the separate discussion on Patent Pricing.
How long does it take to get a patent?
See the separate discussion on Patent Timeline.
Can a copyright protect my idea or invention?
NO! In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work. Thus, inventions (including the ideas they incorporate) are explicitly excluded from copyright protection.
What are my chances of getting a patent?
While no patent attorney can provide any guarantee that your invention is patentable or will result in an issued patent, it is clear from recent trends that it is getting much harder to get the USPTO to issue a patent on any given patent application. The following graph should be instructive in this area:
As you can see the allowance rate has dropped dramatically in the last 7 years. There is no good reason for this other than to say the USPTO is making it harder on inventors to get allowances. Most patent practitioners will agree that first Office Action allowances are now much rarer than they used to be and that almost without exception each first Office Action includes a rejection on obviousness grounds (35 U.S.C §103).
Can I protect my idea by mailing it to myself in an envelope?
NO! The urban legend which states that protection for an idea may be obtained by reducing it to writing and mailing it to yourself is COMPLETELY FALSE, and may in some cases may detrimentally impact the patentability of an idea/invention. THE ONLY SAFE WAY TO PROTECT AN IDEA IS TO FILE A PATENT APPLICATION ON THE INVENTION.
Can I protect my idea by filing a Document Disclosure?
NO! Document disclosures have been discontinued by the USPTO. Document disclosures did not provide a priority filing date and have been supplanted by PROVISIONAL PATENT APPLICATIONS, which do provide an internationally recognized priority date but are not examined by the USPTO. Provisional Patent Applications MUST be followed up within one year of filing with a regular Utility Patent Application or they become abandoned.
Can I protect my idea without filing for a patent?
Generally, NO! While there are some ideas that can be protected via trade secret, if your the invention idea can be reverse engineered by inspection of the product or process, then generally trade secret protection will not provide sufficient coverage to protect your idea. Absent the possibility of trade secret protection, patent protection is your only viable alternative.
Do I have to build my invention to get a patent?
NO! You can file a patent application on your invention if you fully describe the invention so that someone of ordinary skill in the art can make, use, and operate the invention as intended. All patent applications must include your BEST MODE of the invention, but do not necessarily have to identify the BEST MODE as such in the range of embodiments detailed in the patent specification.
Do I have to do a patent search before filing for a patent?
NO! You are not required to do a patent search before filing for a patent. The USPTO will automatically perform a patent search when you file your patent application. However, I do suggest that individual inventors perform a patent search themselves before pursuing the patent process. These searches can be performed using the USPTO website, Google, and other commercial websites such as Delphion. By performing the patent search before consulting an attorney or professional search firm, the inventor minimizes his/her costs as these personal searches can be performed with little or no cost to the inventor.
The rationale for this type of search is that if you find that your invention has already been patented, then there is no reason to spend money to file for a patent. Furthermore, a patent search may reveal prior art which limits the scope of the claimed invention or suggests additions to make the invention patentable. In either case, the purpose of a patent search is to define the risk calculus associated with filing for the patent. If little prior art is discovered in the search, the chances are better at an issued patent. If the art area is flush with other inventions, the chances of obtaining a patent are lower with a higher probability of costly patentability arguments that must be made to the USPTO.
Some inventors want a professional patent search to be done before the filing of the patent application. This can be performed by a patent attorney or a professional search firm. You can expect this type of search to generally cost somewhere between $1000-$4000, depending on the technology area and complexity of the search. While there may be some fixed-fee search firms out there who claim to perform searches for $300-$500, I haven't been impressed with many of the results from the firms providing rock-bottom pricing in this area. As with most things, you get what you pay for, and a good search will cost you a good bit of money to have done properly.
The pricing of a professional search can approach a significant percentage of the cost of a full patent application, and in many circumstances may exceed the cost of a patent application. Thus, the individual inventor may in many cases be better off spending the money that would have gone to a search on filing the full Utility Patent Application, in which case the USPTO will do a full search during the examination process. Note that the USPTO does NOT perform a search on Provisional Patent Applications, as they are not examined, but rather held by the USPTO for one year.
One final note regarding searches - YOU MUST DISCLOSE ALL RELEVANT SEARCH RESULTS TO THE USPTO WHEN YOU FILE YOUR PATENT APPLICATION. Anything material to the patentability of the invention (whether pro or con) must be disclosed to the USPTO in an Information Disclosure Statement at the time of filing or shortly thereafter.
How can I perform a simple patent search on my invention?
While a full tutorial on the nuances of patent searching is beyond the scope of this website, your goal in performing a search using the USPTO website, Google, and other commercial websites such as Delphion is to quantify the risk that your invention has not already been disclosed/patented by someone else. To do this I generally perform a keyword search and then after finding a patent in the general category of the invention I look to the "U.S. Classification" indicated on the patent cover sheet and search the classes/subclasses listed for all other related patents. This is a good method to begin with without the expense of a formal search.
Are some art areas impractical to search?
YES! Some art areas have so many patent applications pending in their examination queue that it is impractical to perform a search with any reasonable degree of confidence. This is because some art areas have 4-6+ year backlogs that prevent many applications from being available for search.
Another reason for this searching problem is that patent applications that are only targeting U.S. patent protection need not be disclosed or published at the 18-month mark, as many of these patent applications are filed with NON-PUBLICATION requests. These patent applications are not searchable until they issues as patents.
Can I write and file my own patent application?
Yes, but based on my personal observations over the years I believe your chances of preparing a properly constituted patent application are not very good! Given the complex legal case law history and patent-specific language associated with the preparation of patent applications there are a number of minefields that inventors must traverse in order to prepare patent applications themselves. Furthermore, it is possible for an inventor to file a patent application thinking that the underlying invention is protected, only to find out that the patent application is missing one or more critical elements. By the time the patent application is examined by the USPTO the invention will probably have been disclosed to the public for more than one year, making correction of the patent application after the fact IMPOSSIBLE.
As an example of the elements that must be included within a patent application, 35 U.S.C.
Given the downside of filing a flawed patent application that can extinguish your patent rights because of its flaws, I strongly suggest using a qualified patent attorney or agent to prepare and file any patent application.
How long do I have to file a patent application?
You must file a patent application within ONE YEAR after the invention is commercialized or disclosed to the public or LOSE THE RIGHT TO PATENT PROTECTION. This "commercialization" trigger date includes publication of the invention idea, sale, offer for sale, public use. Note that the "offer for sale" trigger includes situations where the invention has yet to be reduced to practice but is "ready for patenting".
Note that this ONE YEAR statutory grace period applies to United States patents ONLY. Other countries generally require that a patent application be filed BEFORE public disclosure or commercialization or the right to a patent is lost.
The nugget to retain from this is that IT IS ALWAYS BEST TO FILE SOME SORT OF U.S. PATENT APPLICATION BEFORE COMMERCIALIZING YOUR INVENTION.
How long can my patent be enforced?
The patent terms (from the date of patent filing) for various patent application types are as follows:
As for all patents, the patent cannot be enforced until it is issued, which is generally several years after the patent application is filed. If the patent application takes more than three years to examine, the patent term is extended beyond the 20 year limit by the delay in excess of three years. Note that Utility Patents require payment of a MAINTENANCE FEE at 3, 7, and 11 years to keep the patent in force. These fees are indexed to inflation and cannot be paid in advance.
Who owns rights in an invention?
By law, the patent inventors hold all rights in United States patents. As detailed in 35 U.S.C. §262:
"In the absence of any agreement to the contrary, each of the joint owners of a patent may make, use, offer to sell, or sell the patented invention within the United States, or import the patented invention into the United States, without the consent of and without accounting to the other owners."
This provision of patent law escapes most inventors and can result in significant legal issues for small startups in which a number of individuals are named inventors on a given patent. Since each inventor is a joint owner of the patent, they are fee (absent some external written contract) to lease or sell interests in the patent to others and not pay the other inventors any proceeds from these sales.
This situation is directly opposite to that incurred in copyright law in which joint authors of a work may sell interests in the work to others but are obligated in a suit for accounting to compensate other joint authors in the work. For patents, there is no method of forced compensation to other inventors absent a signed written contract. For this reason IT IS ABSOLUTELY IMPERATIVE THAT JOINT INVENTORS ENTER A WRITTEN CONTRACT TO DETERMINE PATENT OWNERSHIP RIGHTS.
This situation can be significantly complicated by external events in the lives of inventors, including but not limited to co-habitation, divorce, bankruptcy, death, and tax liens. Given that there are several states which recognize common law marriages and/or community property with respect to marriages, in many cases IP ownership contracts must incorporate consideration for the legal spouses of the inventors.
Can my spouse own rights in my invention?
Depending on where you live, the answer may be YES! In Community Property states (AZ, CA, ID, LA, NV, NM, TX, WA, SI), state law dictates the initial ownership of patent rights and as such this may impact patent ownership in a manner that is unexpected. This complication rears its head in divorces, partnership agreements, patent transfers, licensing, and patent litigation. As such, I recommend you contact a patent attorney familiar with these issues if you are an inventor in a Community Property state. Note that this issue becomes even more complicated if the Community Property state is also one that recognizes common law marriage.
As a patent attorney, I am constantly amazed at the number of contracts, invention disclosure forms, invention assignment agreements, and the like that fail to take this issue into consideration when they are drafted. Be advised that this is a potential minefield for both inventors and individuals/entities that they deal with regarding their inventions and/or patents.
Who is a patent inventor?
A patent inventor is anyone who materially contributes to any portion of a CLAIM in the issued patent.
By law, all patent inventors MUST be listed in the patent application. Failure to include ALL inventors in the patent application may result in the patent being invalidated if it is ever litigated. Generally speaking, if a person is mistakenly included as in inventor when in fact the person did not materially contribute to a claim in the issued patent, the patent may be upheld as valid. However, omission of an individual as an inventor in an issued patent is fatal to enforcement of the patent, even if the omission was by mistake. It is instructive to note that one of the first issues investigated by defendants to a patent infringement suit is the identity of all true inventors of the patent that is being litigated. Thus, any omissions in the list of inventors is usually uncovered at an early stage in the patent litigation process.
At the time a patent application is filed, ALL true inventors (those contributing to any element of any CLAIM) must be included in the patent application. Note, however, that patent claims are often modified during the prosecution of a patent application, and this often requires modification of the list of true inventors, thus requiring constant modification of this list as the patent application is examined by the USPTO. It is generally the patent attorney's duty to ensure that the inventor list is correct, but all inventors should be diligent in ensuring that the identity of all true inventors is correct throughout the patent application and issuance process.
What other property rights exist in a patent?
By law, patents have the attributes of personal property. As stated in 35 U.S.C. §261:
"Subject to the provisions of this title, patents shall have the attributes of personal property. Applications for patent, patents, or any interest therein, shall be assignable in law by an instrument in writing. The applicant, patentee, or his assigns or legal representatives may in like manner grant and convey an exclusive right under his application for patent, or patents, to the whole or any specified part of the United States."
Note that not only issued patents but patent applications have property rights associated with them and can be assigned/sold to other parties. Note that patent assignments are not valid unless registered at the USPTO. Finally, be aware that international PCT Patent Applications which reference a U.S. parent patent application also have property rights associated with them.
Can I change my patent application after it is filed?
Generally, NO. While obvious typographic errors can be corrected after filing, NO NEW MATTER MAY BE ADDED TO THE PATENT APPLICATION AFTER IT IS FILED.
For this reason in many cases Provisional Patent Applications can be useful in the timeline of the patent application process. Provisional patent applications are not examined by the USPTO, but rather serve as a series of applications which prove earliest date of inventorship. This enables an inventor to file an initial Provisional on the invention concept and follow this up in subsequent months with additional information and/or improvements to the basic invention. This scenario is very useful and cost effective when the invention is in its initial stages and is subject to a rapid series of improvements. Note, however, that a regular Utility Patent Application must be filed within one year of the EARLIEST Provisional Patent Application in order to perfect protection of the invention described in the previous Provisional Patent Applications.
Does a U.S. Patent protect my idea internationally?
NO! The rights granted by a U.S. patent extend only throughout the territory of the United States and have no effect in a foreign country. An inventor who wishes patent protection in another country must apply for a patent in a specific country or in regional patent offices. Inventors may wish to consider the filing of an international application under the Patent Cooperation Treaty (PCT). An international (PCT) application generally has the same effect as a regular national patent application in each PCT-member country. The PCT process simplifies the filing of patent applications on the same invention in member countries, but does not result ini a grant of "an international patent" and does not eliminate the need of inventors to file additional documents and fees in countries where patent prosecution is desired.
Almost every country has its own patent law, and an inventor desiring a patent in a particular country must make an application for patent in that country in accordance with its particular laws. Since the laws of many countries differ in various respects from the patent law of the United States, inventors are advised to seek guidance from a patent attorney with legal contacts in specific foreign countries to ensure that patent rights are not lost prematurely.
Inventors also are advised that in the case of inventions made in the United States, the Director of the USPTO must issue a license before an inventor can apply for a patent in a foreign country. The filing of a U.S. patent application serves as a request for a foreign filing license. The inventor's patent application filing receipt contains further information and guidance as to the status of the license for foreign filing.
See the separate discussion on Patent Costs & Fees for information regarding the cost of international PCT patent applications.
Does a U.S. Patent application permit delay in filing internationally?
It depends on the foreign country. Some countries (for example Canada) will not recognize the priority date of a U.S. filing with respect to publications of other inventors within the country after the U.S. filing and before formal filing within the foreign country. Thus, inventors who wish to have coverage in foreign countries are strongly urged to contact an attorney competent in overseas filings to determine the proper course of action. THIS WARNING IS ESPECIALLY TRUE FOR INVENTORS FILING PROVISIONAL PATENT APPLICATIONS.
When should I begin marketing my invention?
You can safely disclose your invention AFTER YOU HAVE FILED A PATENT APPLICATION. I suggest that inventors interested in licensing their invention aggressively market their invention after they file their first patent application. This advice is especially important for those filing Provisional Patent Applications which must be followed up within one year with a Utility Patent Application and/or a PCT Patent Application in order to use the original Provisional filing date. This one year period permits the inventor the opportunity to test the commercial market with the invention concept to determine if additional funds should be expended on a Utility and/or PCT filing.
When can I mark my invention as "PATENT PENDING"?
You can mark your invention as "PATENT PENDING" after you have filed either a PROVISIONAL Patent Application or a UTILITY Patent Application. This marking may ONLY be applied to the invention while the patent application is pending, and must be removed if the application is abandoned or withdrawn. Once the patent actually issues, you should mark the article if possible using the issued patent number.
When may I begin enforcing my patent?
PATENTS ARE ONLY ENFORCEABLE AFTER THEY ISSUE. Thus, simply filing a patent application does not provide any rights to enforce the invention claimed in the patent.
My invention is being infringed NOW! What can I do?
Since PATENTS ARE ONLY ENFORCEABLE AFTER THEY ISSUE, you cannot maintain a patent infringement suit without an issued patent. However, if you have a pending patent application and it is being infringed, you can petition the USPTO to expedite the examination of your patent application so as to move it to issuance on an expedited basis.
What is willful patent infringement?
Generally, patent infringement is defined by statute in 35 U.S.C. Section 271:
The damages awarded for patent infringement are set by statute in 35 U.S.C. Section 284:
Sometimes. The USPTO at one time permitted a patent application to be expedited for examination based on a number of factors. However, the hurdles for this process have been increased substantially to the point that it is not economically practical for most individual inventors to pursue expedited examination, unless they are willing to live with a patent pricing structure which generally doubles the cost of the patent.
However, there is one exception to this general rule and that is Petitions to Make Special based on applicant's age or poor health. Applicants 65 and over can obtain special handling based on their age by filing this petition with a copy of their birth certificate. This petition is automatically granted and generally guarantees a first Office Action within one year of the date of filing of the patent application. This is in contrast to normal USPTO examination timeline which takes from 2-4 years for the first Office Action to be issued by the patent examiner.
Note also, that if you learn that your invention is being infringed after the patent application is filed but before examination has commenced, you can file a petition (with fee) to have the patent examination process expedited.
What is a SMALL ENTITY?
The USPTO provides for a reduction in fees to SMALL ENTITIES which are defined in MPEP 509.02. Generally speaking, these include individual inventors and/or organizations who have not assigned their patent rights to others who are not small entities. The size of an organization qualifying for small entity status is detailed in 13 C.F.R. 121.801 through 121.805, and generally includes organizations with 500 or fewer employees (including affiliates).
What is the difference between a Provisional and Utility Patent?
PROVISIONAL Patent Applications (PPAs) provide a filing date for the invention as well as a date of constructive reduction to practice (assuming they are complete in their disclosure). However PPAs are NOT examined by the USPTO. They are held for one year, during which time the inventor can file a regular UTILITY Patent Application (UPA). These UTILITY Patent Applications can reference the PPAs to establish a priority date (assuming they are filed within one year of the PPA), and are examined by the USPTO. PPAs are useful to put a stake in the ground to define first date of inventorship, and are useful when the ideas in the patent are subject to rapid change over the months following the disclosure.
Additionally, PPAs do not require formal drawings as do UPAs. However, I always suggest that PPAs include formal drawings to ensure that there is no ambiguity as to the nature of the disclosure in the PPA. PPAs are about 1/4 the cost (in fees) to file compared to a UPA. Also, PPAs do not require any claims, although it is good practice to include one claim in the PPA to permit the application to be converted to a UPA in emergency situations. Finally, PPAs do not require an inventor declaration as do UPAs.
What is the danger in filing a Provisional Patent Application?
PROVISIONAL Patent Applications (PPAs) must contain a full disclosure of the claimed invention. Just because the filing fee is reduced and there is no requirement for claims doesn't mean that the DISCLOSURE of the invention can be abbreviated or incomplete. Thus, an inventor might file a PPA and fail to properly disclose the invention and subsequently lose some international protections by later disclosing the invention publicly (without having a prior US priority date). Additionally, any changes to the PPA in the subsequently filed UPA can be considered "new matter" not entitled to the filing date of the Provisional Patent Application.
Thus, Inventors are warned to avoid any firm or individual who merely accepts their invention disclosure and files the identical content as a Provisional Patent Application. Nine times out of ten the PPA is defective and may do more harm than good for the Inventor in the long run. Avoid these firms and individuals at all costs!
What is the best way to establish FIRST inventorship?
As compared to other countries, the United States is a First-to-Invent country, which means that an inventor is entitled to a patent if he/she is the first to invent the invention (and subsequently make diligent efforts to get it patented) rather than the first person to file for the patent. Thus, it is possible for Inventor A to make an invention, work on it for some time, and during this time for some other Inventor B to also create the invention and subsequently file for patent protection on it before Inventor A does so. In this scenario Inventor A gets the patent in the United States. However, in most other countries Inventor B wins the patent because he/she filed first.
Much has been written about what it takes to prove that you are the first inventor. While notarized laboratory logs signed by the inventor and an associate are good evidence, statistics indicate that conflicts between filed patent applications among different inventors are resolved 95% of the time based on WHO FILED A PATENT APPLICATION FIRST. Generally speaking, THE BEST METHOD TO PROVE YOUR PRIORITY OF INVENTORSHIP IS TO FILE A PATENT APPLICATION. All other methods have significant risks associated with them.
Are invention development firms trustworthy?
I receive many inquiries as to the legitimacy of commercial invention development firms. While I cannot comment on any particular firm, please be advised of the following:
■ The USPTO has received numerous complaints on some commercial invention development firms. This information can be reviewed by inspecting the USPTO website.
■ By disclosing your invention to a commercial invention development firm, you may inadvertently be disclosing your invention to the public, triggering a potential future statutory bar to patentability.
■ Whether you use an invention development firm or not, your invention will not be protected without filing a patent application. The cost of this process is generally above and beyond the fees charged by the invention development firm.
Thus, an individual inventor should use caution when dealing with any commercial invention development firm. While there are reputable firms that are useful to the individual inventor, there are also a number that are to be avoided.
Kevin Mark Klughart
Registered Patent Attorney, USPTO
3825 Leisure Lane, Denton, TX 76210-5589
tel: 800-353-1211 / 940-320-0580 - fax 940-320-0581