WHAT IS A PATENT?

A patent is a legal monopoly granted to an inventor by the United States government. For the term of the patent, the inventor may exclude others from making, using, offering for sale, or selling the patented invention. The patent grant is a negative right. Patent owners do not necessarily have the positive right to exploit their patents, for example, where use of the patent would infringe another’s patent or break the law.
The legal monopoly permits the owner to operate without substantial competition and charge whatever the market may bear. The patent owner has up to twenty years without competition to develop a market.
The patent owner may also license the patent to others in exchange for a royalty. The license may be exclusive or non-exclusive. It may be limited in geography or time. The flexibility of licensing makes it ideal for small inventors seeking to profit from their patents.
The patent owner may sue infringers, who make, use, offer for sale, or sell the patented invention without permission. Damages for infringement include lost profits. A finding of willful infringement also permits the recover of attorneys’ fees and a tripling of the damage award.

WHAT TYPES OF PATENTS ARE AVAILABLE?

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Three types of patents exist including utility patents, design patents, and plant patents. 

A utility patent may be granted for any useful, new and non-obvious process, machine, manufactured article, or chemical composition.  Notably, ideas alone, such as scientific theories or mathematical formulae, are not patentable. The term of a utility patent is twenty years from the date on which the patent application was filed.

A design patent may be granted for any useful, new and non-obvious ornamental design for a manufactured article.  A design patent protects the way the article looks.  In contrast, a utility patent protects the functioning of the article. An article may be covered by both utility and design patents.  The term for a US design patent is fourteen years from the date of the patent grant.

A plant patent may be granted for the invention or discovery AND asexual reproduction of a distinct, new plant other than a tuber or a plant found in the wild.  Means of asexual reproduction include cuttings, layering, budding, and grafting but do not include growth from a seed.  The current term for a US plant patent is twenty years from the date on which the patent's application was filed.

WHAT ARE THE BENEFITS OF A PATENT?

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A patent owner has a government-granted monopoly on the invention for the term of the patent. A monopoly permits the owner to operate without substantial competition and charge whatever the market may bear. The patent owner has up to twenty years without competition to develop a market.

The patent owner may also license the patent to others in exchange for a royalty. The license may be exclusive or non-exclusive. It may be limited in geography or time. The flexibility of licensing makes it ideal for small inventors seeking to profit from their patents.

The patent owner may sue infringers, who make, use, offer for sale, or sell the patented invention without permission. Damages for infringement include lost profits. A finding of willful infringement also permits the recover of attorneys’ fees and a tripling of the damage award.

SHOULD I CONSIDER A PATENT FOR MY INVENTION?

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Not every invention that could be patented should be patented. Inventors usually seek patent protection if they believe the patent is likely to be profitable. Profit may be realized from an offensive or defensive use of the patent. Offensive use means the making, using, selling or licensing of the patented invention. Defensive use means barring competitors from using the patented invention, thereby crippling their marketing position.

A market study is necessary to determine profitability. Patent attorneys generally do not provide such services as this can conflict with attorney-client relations. A professional market study is possible, but inventors can investigate on their own. For example, an inventor might check trade associations, trade shows, manufacturers, retail or wholesale outlets, advertisements, publications, etc. Other tools include Internet search engines and business directories, such as the Thomas Register or SuperPages.com.

The inventor should look for inventions that attempt to fill the same consumer need as the invention.  Compare known devices with the invention, including distribution means, possible sale price, cost of production, number and size of potential competitors, distinguishing features of the invention, such as size, appearance, safety, and consumer appeal. Such information may be helpful in assessing patentability of the invention.

If you do not find any similar inventions, is it because you are looking in the wrong place?  Or because no one else has thought of your invention?  Or because it would cost more than most people would pay?  Ask yourself honestly: if this was someone else's invention and you saw it on a store shelf, would you pay for it?  How much?  Answers to these questions can help you determine whether it is at least possible for you to make money, and to get a rough idea of how much.

IS MY INVENTION PATENTABLE?

A patent may be granted on anything, which is useful, new and not obvious. All three elements must be present for patentability. Usefulness is a relatively low hurdle and essentially means “not useless.” To be new, the invention must not be publicly known or described. No single reference may include all elements of the invention. Obviousness is determined from the perspective of a person of ordinary skill in the relevant art. Several references may be combined to render an invention obvious. The Supreme Court has held that an invention is obvious is it combines known elements in a known way to produce an expected result.
A search of prior art references can provide a basis for assessing patentability. References may include any printed publication, such as patents, magazines, journals, newspapers, marketing brochures, etc.
Clearly, no search can guarantee the discovery of all references but even a quick search can often identify problematic references and provide a possible scope of a patent, which might be granted on the invention. The scope of a search should depend on the risk of having the invention later found unpatentable. A more thorough search will bolster the validity of the issued patent.

WHO CAN I TELL ABOUT MY INVENTION?

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State and federal rules of professional responsibility prohibit patent attorneys from disclosing communications with their clients. Penalties for breaching this confidence include disbarment and a civil lawsuit by the client alleging malpractice. Ethical concerns may be directed to the United States Patent and Trademark Office of Enrollment and Discipline at (703) 305-9104.

Other than an attorney, the safest course of action is to tell no one about your invention until you have filed a patent application. The Patent Office only issues a patent for an invention that was not already known to the public. Disclosure of your invention to third parties could bar you from ever obtaining a patent on your invention.

If marketing, manufacturing or licensing concerns compel you to disclose your invention, you should have a signed non-disclosure agreement with the party, who will be receiving the disclosure. The agreement is at least some evidence of the parties’ intention to keep the invention confidential; however, enforcement of a confidentiality agreement often is difficult in practice.

An alternative to a confidentiality agreement is the filing of a provisional patent application. Disclosures after filing will not impair patentability. The applicant has a one-year "grace period" to determine marketability of the invention, identify manufacturers or licensees, and obtain financing.

HOW DO I START THE PATENTING PROCESS?

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You should contact a competent patent attorney, who will guide you through the process. Consideration for choosing a patent attorney include fees and experience.

The attorney will discuss the invention with the inventor. An invention disclosure form is often helpful.

A complete, logically organized, written description of your invention in all its possible forms is extremely helpful. The description must include drawings if drawings would be helpful in understanding the invention. At this stage, the drawings may be hand drawn. Be sure to include the benefits of your invention compared to the existing technology and the best mode of practicing your invention.

A good description will produce the best patent coverage for your invention and reduce the attorney’s preparation time, thereby reducing costs.

HOW MUCH WILL A PATENT COST?

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My fees are modest compared to most law firms, which typically charge at least $250 per hour for inexperienced first year associates and over $400 for partners with my level of experience.

In addition to a filing fee, an applicant should expect to respond to at least one office action from the Patent Office. The applicant must respond to the office action or the application will be abandoned. The cost of a response varies with the office action and can range from a few hundred to a few thousand dollars.

For utility patents only, the Patent Office requires periodic payments to maintain enforceability of the patent. Maintenance fees are due at 3.5, 7.5 and 11.5 years.Currently, these fees are $565, $1,425 and $2,365 for small entities.  These fees typically increase each year.  No maintenance fees are due for design or plant patents