What is a patent?
A patent is a limited duration monopoly granted by the government to an
inventor in return for disclosing the invention to the public. In the
US, this means that the patent holder can prevent anyone from making,
using, selling or advertising for sale the invention for 20 years from
the date of first filing. There are similar patent systems in many
different countries. To have patent rights in any country, an
inventor (or owner of the invention) must obtain a patent in that
country.
What types are there?
In the US, there are utility patents, design patents and plant
patents. Most of this discussion will be about utility patents
because they are what most inventors are concerned with. Design
patents protect the way things look, or their appearance, while plant
patents protect certain varieties of plants. A typical invention,
mechanical, electrical, computer, software or business method will
involve a utility patent. There are also provisional applications.
These are discussed below.
What can be patented?
To obtain a United States utility patent, the invention must be of the
class of things that can be patented, an apparatus, process, or
article of manufacture. This list now includes software and business
methods. In addition, the invention must be useful. Almost
everything that falls in the allowed class is useful. Some other
countries require the invention to have industrial applicability.
What else is required?
To be patentable in the US, the invention must be novel and
non-obvious. This means that the invention has not been known or used
by others in this country, or patented or described in a printed
publication anywhere, and that the differences between the subject
matter of the invention and the prior art must not be such that the
subject matter as a whole would have been obvious at the time of the
invention to a person having ordinary skill in the art to which the
invention pertains. Other countries have varying requirements, but
most are similar to this.
What is prior art?
The term prior art means any patent, publication, or description of
any kind that was in the public domain at the time of the invention.
To determine patentability, a patentability search is usually
performed. A simple search might just look for US patents. A complex
search might look for patents all over the world and also include
literature.
What is a Provisional
Patent application
A provisional application is an application that is usually used to
tie down a filing priority date fairly quickly. The USPTO fee is only
$80 (for a small entity applicant); however, to be effective as a date
holder, the provisional should contain a complete disclosure of the
invention. One advantage of a provisional is that informal drawings
can be used. A provisional application is NEVER examined by the
patent office and can NEVER become a patent. If a regular utility
application is filed within one year of the provisional filing date,
the regular application can claim priority from the provisional (that
means that if a piece of prior art appears with a date that is after
the provisional is filed, but before the regular application is filed,
it is possible to use the provisional to show that you are earlier
than the prior art.
What does an application look like?
To obtain a patent in the US, an application must be filed with the
United States Patent and Trademark Office in Washington D.C. The
application must disclose the invention in such a way that a person
skilled in the art to which the invention pertains is enabled to
practice the invention without undue experimentation. This is the
inventor's part of the bargain: the invention must be given to the
public and not kept secret or hidden. Usually a patent application
contains a description section called a specification with several
figures and a set of claims. Claims are special sentences that stake
out the legal bounds of what will be protected. Claims must be
drafted by someone experienced in patent law because every word of a
claim is very important as is the relationship between words. Here is
an example of a claim for a bolt:
A fastener comprising:
a cylindrical metal shaft with a partially threaded first end and
second end;
a hexagonal head on said second end of said shaft, said head being of
larger diameter than said shaft.
There are numerous other ways to draft this claim (of course a bolt
has already been invented). Notice what the claim does: 1) it states
that the invention is a fastener. This means that the field of art
would probably be that of fasteners and a person of ordinary skill in
the art could be somebody who made fasteners. 2) It states the shaft
is cylindrical - this could mean that if somebody was using a square
bolt, they might not infringe this claim. 3) It states the head is
hexagonal - somebody with an octagonal head might not infringe this
claim, and so forth.
A professional patent practitioner (attorney or agent) would probably
draft several different claims in a typical patent application to
cover some of the things I pointed out. Of course, the specification
would explain what the bolt looked like, possible materials it could
be made out of, what partially threaded means, etc. Notice that the
claim is fairly generic - it does not state what material the bolt is
made out of; it does not state how long the bolt is; and it does not
state how big around it is. It also does not say anything about the
threads (pitch, etc.). This vagueness is put in for a reason; the
more that is said in general, the weaker the claim. For example a
claim to a "red car" is weaker than a claim to just a "car". A claim
to "a red car with front wheel drive" is weaker yet. The strongest
claim is just a "car" - that includes every car. This is said to be a
broad claim.
Broad and narrow claims?
A patent practitioner will generally try to draft both broad claims
and narrower ones. It is harder to get broad claims allowed by the
patent examiner than it is narrow or weaker claims. This is because
the broad claim is giving more protection to the inventor than the
narrow claim. The process of getting claims allowed (and a patent
issued) is called patent prosecution. It requires considerable skill
and experience for a patent practitioner to obtain a strong patent from
a patent office.
How long does it take to get a patent?
The quick answer for a US patent is between 2 and 5 years. There is a
9 month to 2 year wait for the first action from the patent office
depending on what field the invention is in. After that, there are
responses, possibly continuations, and sometimes appeals. If a good
patentability search has been run before filing, and the invention is
mechanical, a patent can usually be obtained within 2-3 years. I can
give you a better idea on exactly how long it will take after I have
reviewed your invention and run a patentability search.
Searches
The first step in contemplating a patent should be to run a
patentability search. I usually recommend a keyword type search in
the USPTO, Europe and Japan. This type of search is usually a balance
between search cost and completeness. Still, I have found that this
type of search usually turns up most relevant prior art patents in the
mechanical and electrical arts. For computer software inventions,
more searching is required, because a lot of computer prior art
appears in publications rather than patents. For business methods,
there are still relatively few patents, and there is little in the
literature. These types of inventions require an attempt to determine
if the business method has been known or used before.
The Process
After a search is complete, and I feel that the invention is
patentable, I will begin to write up the patent application. This
includes figures and claims. This process takes about two weeks.
When you, the inventor, and I both agree it is ready, I will file it
with the USPTO. About 2 weeks after filing, I will receive a postcard
back with the filing serial number. Within the next 3 months, I will
file what is called an "information disclosure" with the patent office
telling them of all the prior art we found in the search. We then
simply must wait.
After 9 months to 16 months for mechanical inventions to up to about 2
years for computer inventions I will receive the "first office
action." This action usually rejects all the claims. At this point
the examiner has run an independent search and also looked at all the
prior art we sent in. I will write up a response to this action which
will probably be called an amendment. We may amend or change the
claims somewhat, and we will argue why we should have the claims
allowed (so we can get the patent).
After about 3 more months, the examiner will send a "final office
action" either allowing some claims (that will become the patent) or
rejecting all the claims again. If we feel we have strong enough
claims allowed, we will at that point take the patent on those
claims. If not, or if no claims are allowed, we will either appeal
the decision, or file a continuation application (that might contain
some changes or updated material). With a continuation, we go through
the waiting again. With an appeal, I am able to get the examiner to
change his or her mind in about 30 percent of the cases and allow the
claims. In the other cases, the appeal process takes from 1.5 - 2
years. In some rare cases, we might have to further appeal to the
Court of Appeals for the Federal Circuit. The alternative is to file
another continuation and keep going with the process. If I truly
believe the invention is patentable, I will pursue the case for as
long as you want me to until we get the patent.
What will all this cost?
There is no easy answer to this. The quick answer is between $2000
and $5000 for a US patent. This depends very much on how long the
process goes on. That depends on what prior art the examiner finds
that we didn't; sometimes how hard-headed the examiner is; and whether
you want to add new features to the invention during the application
process.
What makes a strong patent?
A strong patent is one you could assert against anybody who might try
to infringe your invention. Only a strong patent will bring good
royalties. Pretty much only the claims count when measuring strength.
You must have strong claims! This usually means several very broad
independent claims, and a number of more specific dependent claims.
A large number of claims of all different scopes is very powerful
against an adversary because if they infringe any claim, they infringe.
the patent.
For a device or apparatus, it is my opinion that, in general, a strong
patent will have at least 3-4 broad independent claims of different
types. There should be at least one means plus function type claim,
one apparatus claim that does not use the word "means", one method
claim, and one narrow independent claim that exactly describes the
embodiment of the invention that will probably be sold. In addition,
a strong patent should have many dependent claims. I suggest 15-30
dependent claims. The invention must be such that an attorney can get
broad claims over the prior art (references that are found during the
search). A patent with a large number of broad claims is something to
respect. If the prior art will not allow broad claims, the inventor
may want to consider whether spending any money on patenting is
worthwhile.
Is it possible to add claims after a
patent has issued?
Yes. There is a process called reissue where an inventor can go back
to the patent office and get more or different claims allowed.
However, to broaden claims, the reissue application must be filed
within two years of issue.
If you own a patent with only a few claims, or with very narrow claims
(usually long lists of elements), and you are still within the two
year window, I highly suggest you go back to reissue to make your
patent stronger if you have any plans to license or of sell your
invention.
What about international
protection?
This is a large subject, but let me just say quickly: you must get a
patent in any country you want protection in. Sometimes you can cover
entire regions with one application (like Europe and Africa); however,
ultimately you must file in every country. To get broad protection,
costs about $5000-$10,000 per country outside the US.
You can claim priority back to you initial US filing provided you file
internationally within one year of the US filing. You can tie down priority
in over 100 countries with a single PCT (Patent Convention Treaty) filing.