Brown & Michaels
Frequently Asked Questions
A patent is a grant by the U.S. Patent and Trademark Office of the right to stop others from making, using or selling an invention in the United States for a limited period of time. Taking this one point at a time:
Utility Patents and Plant Patents are valid for a period starting on the date the patent is issued by the Patent and Trademark Office, and ending, at the latest, 20 years after the US filing date of the earliest non-provisional application upon which the patent is based. There are maintenance fees to be paid during the life of a utility patent, and if they are not paid on time the patent will expire earlier than the maximum 20-year-from-filing term. After the patent expires, the invention is available to all.
Design Patents are valid for a period of 14 years from the date of issue. No maintenance fees are due on design patents.
This section sets forth the general rule, applicable to most patents issued in the last few years. Patents which were filed after May 29, 2000, may have their terms extended for USPTO delays. Patents issued before June, 1995, and still in existence at that time, or which were pending at that time, are subject to different rules, and there are other special rules and exceptions which may affect the term of a patent. For more information, see our page "How do I figure out if a patent is still in force?"
No, it cannot be renewed. Nor can one pick up the rights to an expired patent. Once a patent expires, the invention is in the public domain.
Can I have my patent's term extended?
Some patents have had their terms extended, by private laws in Congress, or by a section of the Patent Law which provides for restoration of patent term lost due to government regulatory delays. In almost every case these were drug patents, where the testing and approvals required by the FDA ate up almost all of the patent term. For nearly all inventions, extension is not an option.
Utility Patents cover:
Plant Patents cover certain plants.
Note: Since 1952, when the current Patent Act went into effect "everyone knew" that methods of doing business were not patentable. However, in late 1998, the State Street Bank case was decided, in which the Court stated that not only were methods of doing business patentable, but that they always had been. The effect of this decision was a flood of patent applications dealing with implementation of business methods, from methods of writing patents to methods of selling products and services. The 2005 case In Re Lundgren extended the limits even further, ruling on an application to patent a method of paying managers.
Most recently, the courts have been cutting back on the scope of what methods are patent-eligible. The Bilski case at the lower court level set out a "Machine or Transformation" test, which said that in order to be patentable a method had to be tied to a specific machine or affect a transformation of something. The case was appealed up to the Supreme Court, which decided in late 2010 that the "Machine or Transformation" test is acceptable, but not the only exclusive test, and that other methods might also be patentable, as long as they did not claim abstract concepts. The USPTO and method applicants are now struggling through determining just what that means, and further court cases are inevitable.
There are three major requirements for patentability: The invention must be novel, useful and not obvious.*
Usually a novelty search is required. The are two parts to such a search: a literature search (catalogs, web sites, magazines, etc.), which the inventor or patent attorney can perform, and a search of issued patents and published applications, which you should have a patent attorney do.
Can I do my own patent search on the internet? You can do a preliminary search of your invention on the U.S. Patent and Trademark Office's web site, among others, which can supplement, if not replace, a conventional search. Such a search is limited in several ways:
There is a Google Patents (beta) search engine available, which, at least theoretically, is keyword-searchable for any patent in the database. Drawing images are available without the need for additional viewer plug-ins, and the entire patent can be downloaded in PDF format. In practice, however, our experience has been that keyword searching in this system is not particularly reliable - the text for older patents is apparently created by OCR of blurry scans, and often results in gibberish. It's worth a try, though.
If you need help interpreting the patents you find, see our "How to read a patent" pages.
In the end, it is a good idea to check out your idea on the web and on the available free databases. If you find a "knock out", that's that. If you don't, however, these resources are no substitute for having an experienced professional doing a manual search.
Not necessarily. A patent is the right to stop others from making, using or selling your invention. It does not necessarily mean you have the right to make, use or sell it yourself.
Someone else may have a patent which will stop you from making, using, or selling your invention (called a "dominating patent")
Can I still get a patent even if my invention has been written up in Popular Mechanics and I've been selling it for some time?
Maybe. You must apply for a patent within one year of the first publication, public use or sale. If "some time" is longer than a year, you cannot get a patent anywhere. If it is less than a year, you can get a patent here in the United States (assuming the invention is otherwise patentable, of course), and in a very few other countries. It is a better idea to apply before the first application or sale, as most countries do not allow this one year grace period.
It depends. The value of a patent depends on how "broad" the coverage is, as defined by the patent's claims (see our "how to read patent claims" page). If the invention claimed in a patent represents only a small advance over what went before it, the range of products the patent may cover is also small. On the other hand, if your invention is wholly new, then the range of equivalents is equally large. Most inventions fall somewhere between these extremes.
The determination of the breadth of a potential patent is a matter of analyzing the extent of the "prior art" and the range of things which might be covered under the patent. You should consult a patent professional for advice on the breadth of your invention.
Can I protect myself by sealing a description of my invention in an envelope and mailing it to myself?
No. The mythical "postmark patent" offers no protection whatsoever. Having someone sign your written description as a witness would accomplish the same thing - documenting your date of conception of the idea.
NOTE: The whole subject of the "postmark patent" and documenting the date of conception was based upon the fact that historically the US patent law has always been based on "first to invent" - that is, in case of a conflict between two applicants, the patent would be awarded to the first person to invent the invention. Also, the "novelty" requirement of patentability was tied to the date of invention, which would allow you to get around a reference by proving you invented before it was published or filed. So, it was important to document when you actually invented, which, in turn, meant proving conception and reduction to practice.
The America Invents Act of 2011 changed all of that. As of March 16, 2013, the US law changed from "first to invent" to "first inventor to file". After that date, what matters is when you filed your application and whether you were an inventor at all. If two inventors apply for a patent on the same invention, the first in the door at the USPTO will get it. Of course, you still have to be an "inventor" - there are "derivation proceedings" to account for the situation where the first to file copied the idea from the second to file.
This makes it much more important than ever to file at least a provisional application at the earliest possible date, so as to be that "first to file". Instead of proving conception and reduction to practice, what you will want to document is when you came up with the idea (so as to prove you didn't derive it from someone else) and who you told the idea to and when (so you could prove they derived from you, if they file first).
You might find our Invention Disclosure Form to be helpful in preparing a detailed written description. It doesn't provide any protection, either, but it will help you get your thoughts in order when you contact a patent attorney (our firm, we hope), and you'll save the stamp it would have cost to mail it to yourself.
No, it does not. You may stop others from making something overseas and selling it here, or making it here and selling it overseas, but you cannot stop them from making and selling it entirely in foreign countries. If you want patent coverage in other countries, you will have to file your US patent application each of the countries, and the application will be examined and issued as a patent separately in each country.
It is important to do such filing within a year of your US filing date if you are planning to do any foreign filing (six months, for design applications), so that you can claim the benefit of your US filing date in those countries. Note that most countries other than the US do not have any "grace period" for publication before filing the patent application, so if you had described your invention before you filed your US application you would not be able to get a patent in those countries.
There is no such thing as an "international patent" (although there are "regional patents" in Europe, the former Soviet Union, and certain African countries).
The Patent Cooperation Treaty or "PCT" allows you to file an "International Application" in the US Patent Office (if you are an American citizen or resident). This reserves your right to file in a number of foreign countries for up to 30 or 31 months from your first filing, but you must eventually file separately in each country in which you want protection.
Note that the rules on what is patentable and what actions will bar patenting vary from country to country. For example, "business methods" which are routinely patented in the US are not patentable in most countries in Europe or through the European Patent Office. Many countries have restrictions on patenting of medical procedures, as well.
We can provide an estimate of foreign costs once you have decided in which countries you are interested. As is true for most US patent attorneys, we are only licensed to practice in the US. When you are ready to begin filing foreign applications, we can make arrangements through correspondent patent attorneys in each country.
No. The price of the so-called "patent monopoly" is that you must tell the world how to practice your invention. If you are manufacturing your invention yourself, and its operation depends on something difficult to reverse engineer, you might want to protect it by a trade secret rather than a patent.
The disadvantage of Trade Secret protection, however, is that once your trade secret is no longer a secret you have no protection. You also run the risk that someone else may later get a patent on your secret process, and will file suit to stop you from practicing the method.
Since Thomas Jefferson examined the first US patent application in 1790, applications had always been kept secret - even the fact that they were filed was considered confidential. However, that is no longer true. The American Inventor's Protection Act of 1999 (AIPA) required publication of all non-provisional patent applications filed after November 29, 2000, and allowed publication of earlier-filed pending applications on request. The first 47 applications were published on March 15, 2001, and applications have been published every Thursday since then.
When is an application published? Eighteen months after the earliest filing date in the application's chain of parentage ("priority date"). That means that if you file a Provisional Application, and wait the full year before filing your utility application, the utility application will be published six months after filing.
How are applications published? Applications are published in electronic form, only. Published applications are available on the USPTO website, on the same search page (although not in the same database) as issued patents. Once an application is published, the complete file history of correspondence between the inventor and the USPTO will be available online on the Patent Application Information Retrieval (public PAIR) system.
What is published? The initial publication is usually the application as filed. That means that amendments are not usually included in the published application, unless they were filed with the application. It is possible to request additional publication of an application after amendments, upon payment of another publication fee (see below), and sometimes this may be of value. You should consult with a patent professional (preferably one at Brown & Michaels) if you have any questions about publication.
Can I stop the publication of my application? If the application has not been filed in any foreign country which publishes applications (most countries do), or through the PCT, and you have no intention of filing in any country which publishes applications (or PCT), you may request that the application not be published - but you must do so at the time you file the application. It's not enough to be unsure if you want to file foreign or not - you have to swear that you have no intention of doing so. If the situation later changes, and you decide to file PCT or foreign, you must inform the PTO immediately - if you do not do so, the US application automatically becomes abandoned (and if the PTO does not notice and allows a patent to issue, the patent will be invalid).
Can I have my application published sooner than 18 months? Yes. You may request early publication.
Why would I want to have my application published? In the past, patents only had effect on infringement which occurred after the date the patent was issued. With the publication of applications, this, too has changed. A "reasonable royalty" may be obtained for infringing use between the publication and the issuance of the patent, if (a) the infringer had actual knowledge of the publication, and (b) the claims in the issued patent are "essentially identical" to the published claims. Note that you still have to wait until the patent issues before you sue for damages, but at least you can get some royalty for the intervening time between publication and issue. This means that it is now more important than ever to present a range of claims in your original application, so that some, at least, will remain from publication to form a basis of a claim for pre-issue royalty.
Does it cost anything to have my application published? Of course. The PTO does next to nothing for free. There is a $300 publication fee, which will need to be paid along with the issue fee. There is also a fee for requesting early publication. If you want early publication, you'll have to pay both fees, plus legal fees to convert and prepare the application in Electronic Filing (EFS) form.
For a relatively simple mechanical invention, you should allow at least $7,500 including all costs from search to issued patent, although this is just a ballpark estimate. Electronics, computers, biotech and other more complex inventions can be expected to cost more.
Our Budget Estimator for Patents outlines procedures, PTO fees and our fees in more detail. We (and most other patent firms) base our charges on an estimate of how long a task will take to complete (or, if you prefer, on actual hourly billings), so the more detailed and complete your write-up is, the less time (and money) it takes to turn it into a finished patent application. In most cases, our clients prefer a fixed "project fee" for each stage in getting a patent application. We can provide you with an estimate for a project fee once we've had a chance to review your disclosure.
Yes, if your home country extends the same privilege to U.S. citizens (almost all do).
In many (if not most) cases, inventors file a patent application in their home country first, and then file a United States patent application based on this earlier foreign filing. In fact, many countries require their citizens to file in their country before filing elsewhere, or at least to apply for permission before filing elsewhere. This is to allow the government the chance to decide that the invention should not be filed in foreign countries for national security reasons. Most of the time, the permission is routinely granted. The US has the same requirement for US citizens or residents who want to file in foreign countries - it's called a "foreign filing license". If you are considering making your US patent application the first patent filing on your invention, you should check with a patent attorney in your country to make sure that will not cause any problems under your country's laws.
If you file in your home country first, and if you file a corresponding application here within one year of your foreign filing date (six months, for design patent applications), your home-country filing date will count as your US filing date if your country is a member of a number of "convention" countries, or has a specific treaty with the USA. You may also be able to file an application through the Patent Cooperation Treaty, which you can then file in the US up to thirty months after your priority date.
Patent Cooperation Treaty (PCT) Applications for non-US Applicants
In most cases, if you are not a US citizen or resident you will not be able to file a PCT application in the US - you will need to file your PCT application in the country in which you reside or are a citizen, or in the International Bureau in the Hague. If your country is not a member of the PCT you cannot file a PCT application at all.
Once you've filed PCT in your home country, however, you will be able to file a US application ("National Phase") based on the PCT application at any time before 30 months from your first filing date, and get the benefit of the priority filing date.
Brown & Michaels will be able to help you file your US National Phase application when that time comes - we have worked with many overseas clients and their home-country law firms.
For specific information on your situation, consult with your local patent attorney or contact Brown & Michaels.
A Provisional Application is a way to file a patent application without some of the formalities involved in the usual patent process. It's somewhat cheaper initially, because of the lessened formality, but it does not substitute for a conventional utility patent application. A filing date is assigned the application, but it will not be sent to an Examiner, or reviewed in any way by the Patent Office. No patent will ever issue on a Provisional Application. You must file your conventional application within a year of your Provisional filing date, claiming priority of the Provisional Application, or the application will lapse and you will receive no benefit of the earlier filing date. (Provisional Applications may be converted to Utility Applications on request of the inventor, although this is not a recommended procedure).
Note that you cannot file a provisional application on a design - you must file a conventional design patent application in the first place.
Before you decide whether or not a Provisional Application is appropriate in your case, please review our provisional application page.
No. Not only is it inadvisable, it's impossible. The Disclosure Document program was eliminated, effective February 1, 2007.
The Disclosure Document program was started in 1969. It was a way for the Patent Office to take the disclosures people were sending them anyway, and charge for filing them. They were kept on file for two years, then discarded, unless the inventor filed a utility application within the next two years referring to the Disclosure Document. At most, a Disclosure Document might have served as evidence of a date of conception of the invention. Unlike a patent application, it did not give you a filing date or set the date of invention. To complete the process of invention for the purpose of proving you were "first to invent", you would still have to file a patent application or prove that you had actually built the claimed invention.
In the Final Order eliminating the Disclosure Document Program, issued on November 3, 2006, the USPTO noted that only 0.04% of the three million patents issued after the program began in 1969 ever referenced a Disclosure Document. As to the use of a Disclosure Document to help prove date of conception, the PTO noted that Disclosure Documents were used only about once a decade in interference proceedings, of which 90-300 are declared each year, and such proceedings still required other evidence to prove date of invention.
The function of the Disclosure Document, to the extent that it had one, has since 1995 been performed by the Provisional Application for Patent. (see above).
Nothing more than that you have a patent application on file at the U.S. Patent and Trademark Office.
You may mark a product "Patent Pending", if you have filed a patent application (including a Provisional Application) which would cover at least a part of the product, and that application has not been abandoned or withdrawn. There is no legal requirement to mark a product with "Patent Pending", but many feel that there are competitive advantages to doing so.
Note that it is against the law to mark a product "Patent Pending" if you do not have a patent application on file.
Once your patent issues, you will want to mark the product with the patent number.
No! Why? Check out the references on our Invention Marketing Company Page
Prof. Tom Field at the Franklin Pierce Law Center has two excellent papers on his web site which might help:
"So You Have an Idea," a guide to help independent inventors make an assessment of their situation. This paper discusses the process of evaluating an invention, avoiding pitfalls, and why people did not beat a path do the door of the inventor of a better mousetrap.
"Seeking Cost-Effective Patents" - "Some inventors misconstrue Emerson's dictum and believe that patenting an invention will cause the world to beat a path to their door. Others, who appreciate that it is often easier to patent than to sell an invention, believe patents increasingly cost more than they are worth. This booklet will show how both views are wrong. Patents do not guarantee market success, and they and other forms of intellectual property can easily be worth more than they cost."
That's all fine, but I'm sure my idea is worth billions. What do I need to do to make money from my idea?
See our "I have a great idea" page.
Back to the Patents page.
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