Patents FAQ
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A: A patent is a government granted property right in an invention. In the Untied States, this property right is granted only to the inventor and grants to the inventor the right to prevent others from making, using or selling the invention within the boundaries of this country.
Q: Why does the government grant patents?
A: The United States Constitution grants to Congress the power to promote the progress of science by granting to inventors for limited times the exclusive right to their discoveries. Although inventors do benefit from the grant of patents to them, the main purpose for granting patents is to encourage inventors to go public with their inventions. After the patent expires, the invention then becomes public information and my be used by anyone for the betterment of society as a whole.
Q: Are all types of inventions patentable?
A: No, certain types of inventions can not be patented. For example, any invention that is not new or novel can not be patented. Simple discoveries of truths existing in nature are not patentable. Obscene inventions can not be patented. Inventions that threaten national security will not be patented. Inventions that are not useful, such as so-called perpetual motion machines are not patentable. Also, inventions that are simply an obvious combination of existing technology will not be granted a patent.
Q: Are there different types of patents?
A: Yes, there are three different types of patents granted in the United States.
The first type of patent is a Plant Patent and is granted for asexually reproducible plants, including spores, mutants, hybrids and newly found seedlings, but excluding tuber propagated plants and plants found in an uncultivated state. The most common types of plants for which Plant Patents are granted are rose bushes and fruit trees.
The second type patent is a Design Patent. Design patents protect the ornamental or decorative aspect of an object, not its function. The purpose for granting a Design Patent is to encourage the decorative arts in improving the appearance of articles of manufacture in order to increase their salability and to satisfy the aesthetic sense of the purchaser. The most common articles for which Design Patents are secured include lamps, hats, household articles and furnishings, games and toys, and jewelry.
The third type of patent is a Utility Patent. Utility Patents protect the way something functions or the utility of the invention. This is the most common type of patent granted in the United States, the most valuable in many situations and the most expensive to obtain of the three types available. The most common types of inventions for which Utility Patents are granted fall into the general categories of machines, articles of manufacture, methods and compositions of matter.
Q: How does an inventor obtain a patent?
A: A patent may be obtained by an inventor by filing a patent application with the United States Patent and Trademark Office and successfully prosecuting that application to issuance of a patent. Not all patent applications result in the grant of a patent.
Q: Does an inventor need an attorney to help in obtaining a patent?
A: This is a hard question since inventors are legally allowed by the Patent Office to prepare and file their own patent applications. However, even though inventors are allowed to file their own applications, it is generally not wise for them to attempt to do this without the assistance of either a patent attorney or a patent agent, the other two types of people besides the inventor who are allowed to file patent applications with the United States Patent and Trademark Office.
Q: What is the difference between a patent attorney and a patent agent?
A: A patent attorney is an attorney who has a technical background and who has successfully passed the patent bar examination and been admitted to practice before the Unites States Patent and Trademark Office on patent matters. A patent agent is not an attorney, but is a person with a technical background who has successfully passed the patent bar examination and been admitted to practice before the Patent Office. Although patent agents are allowed to practice before the Patent Office, because they are not licensed attorneys, they will not be able to advise the inventor on related legal matters, such as trademarks and copyrights, and are unable to assist the inventor in enforcing and protecting the patent once it is granted.
Q: How do inventors find a patent attorney or patent agent to represent them?
A: The United States Patent and Trademark Office maintains a list of patent attorneys and agents that practice in each state. This list is available from the Patent Office, from any Patent Depository Library (such as the one located at Stillwater Oklahoma), from the local or state bar association, or from the public library.
Q: What is the life of a patent?
A: Currently, Utility Patents or Plant Patents will expire 20 years from the date of original filing of the patent application, provided maintenance fees are timely paid. If maintenance fees are not timely paid. Utility Patents and Plant Patents will expire prematurely. Design Patents are issued for a term of only 14 years.
Q: What does Patent Pending mean?
A: Patent Pending means that a patent application has bee filed on an invention, but the patent has not yet issued. If the patent application is issued, is withdrawn, is abandoned or is finally rejected, the patent is no longer "pending". It is advisable to put a Patent Pending notice on an invention during the time that the associated patent application is being prosecuted before the Patent Office.
Q: Does Patent Pending give an inventor any property rights?
A: No, an inventor has no actual property rights in or protection of their invention until a patent is issued for the invention.
Q: If an inventor develops an invention while the inventor is an employee of someone else, does the employer have any rights in the invention?
A: Maybe. The employer may own the invention if the employee had previously sign an employment contract that required an assignment of the employee's patents to the employer. Also, even is there is no such employment contract and the employer doesn't own the invention, the employer may be entitled to shoprights in the invention. Shoprights grant an employer a non-exclusive license to use the invention of its employee, provided the invention was developed on company time, using company property or under other circumstances where the employer could assert an interest in the invention.
Q: What are the mistakes most frequently made by inventors:?
A: The most frequent mistakes are dealing with Invention Development Companies, blindly relying on disclosure documents for patent protection, and exceeding the one year time limit on public disclosure prior to filing a patent application.
Q: What are Invention Development Companies and why is dealing with them a mistake?
A: Invention Development Companies are companies that advertise their services for inventors ,including for example, conducting patent searches on inventions, obtaining patents on inventions, performing product research, development, manufacturing and marketing. Many of these companies obtain large payments of money from inventors and then do not perform the promised services adequately. Generally, even if the services are performed, the work is done by contractors to the Invention Development Company and the inventor ends up paying the Invention Development Company more money than the services would have cost the inventor had the inventor dealt with a reputable local patent attorney or agent. Once these companies have the inventor's money, the companies frequently close down and reopen under different company names. This makes it hard to locate the company to which an inventor paid the money and even more difficult to obtain a refund if the inventor is displeased with the services of the company.
Q: What is the Disclosure Document:?
A: Before this question can be answered, the prior practice needs to be understood. The United States grants patents to the first inventor of an invention, not the first person to file a patent application for that invention. Therefore, it is important for an inventor document the date that the inventor first had the complete idea for the invention, i.e. the date of conception. In the past, inventors have tried to document their date of conception by mailing themselves a letter containing the details of their invention. The letter, bearing the dated postal stamp, when then kept unopened as proof of the inventor's date of conception. The problem with this type of proof is that the courts do not always accept these letters as proof of the inventor's date of conception.
Today, there is a better way to document an inventor's date of conception. That better way is to file a Disclosure Document with the Patent Office under the Disclosure Document Program. For a nominal fee, an inventor may file a Disclosure Document with the Patent Office. The Disclosure Document is given a Disclosure Document Number at the Patent Office and the inventor is notified of this number. The Patent Office will retain the Disclosure Document for two years and if a patent application that references the Disclosure Document is not filed at the Patent Office within those two years, the Disclosure Document is destroyed. If such a patent application is filed within the period, the Disclosure Document will be placed in the file with the patent application and will serve as proof of the inventor's date of conception.
Q: Must inventors file their patent application before they tell anyone about their invention?
A: The answer to this question depends on the country in which patent protection is sought. Each country has its own laws and rules relating to public disclosure.
In the United States the answer to this question is "No". In this country, inventors may talk with people about their invention and do other types of public disclosure for one year prior to filing their United States patent application. However, if this one-year grace period is exceeded, the patent laws prevent an inventor from ever obtaining a patent on that invention.
In most foreign countries, the answer to this question is "Yes". The general rule is that most foreign countries require that inventors file their patent application in those countries before any public disclosure of the invention. There are some limited exceptions to this general rule; these exceptions have been created via treaties between the various countries.
Q: Must an inventor obtain a patent in each individual country for which patent protection is desired?
A: Yes, each country has its own patent system . To obtain patent protection in a country, a patent must be obtained in that country. The only exception to this country-by-country rule is the European Patent that provides patent protection in approximately 23 European countries via one patent application and one patent.
Even though a patent is obtained in a foreign country, that country may not provide the same level of patent protection that is provided by the laws of the United States. The law of the individual countries must be consulted to determine the patent protection provided in foreign countries.
Q: What if I have a question not answered here?
A: Submit your question to Molly McKay.