What do you need to know?
This outline should cover the basics for what you need to know to get started building your IP (that means Intellectual Property) portfolio. A patent is just one tool in that intellectual property toolbox to build your brand and protect the innovative aspects of your company.
Here is what I cover in this post:
What is a patent?
A patent protects new and useful products, processes, machines, or compositions of matter or new ornamental appearances of a product.
A patent is a property right granted by the United States government that permits the patent owner to prevent others from making, using, selling, or importing the patented invention into the United States. Each government grants its own patents, and will provide similar rights for their respective jurisdictions.
What are the types of patents?
There are a number of tools in the IP TechBox in order to provide alternatives to protect the innovation and design of a company's products or services.
Utility Patent
The utility patent provides protection over inventions that are useful. These can be processes, machines, or compositions of matter. Think of widgets and devices as well as ways to do something like manufacturing a product or method of using a product. A patentable invention may include, for example:
a new and useful widget,
using a new or old widget in a new way, or
a new way to make a new or old widget.
The utility patent includes a description of the invention using words and figures. The invention is ultimately defined by the claims, however. These claims are what the invention actually "is", and will be the basis to determine what others cannot do. These claims are an itemized list of features, such as component parts or process steps. Once registered, if a competitor provides a product or service that has or performs all of the parts of any of the patent claims, then the patent will give the patent owner the right to challenge the competitor's actions.
Design Patent
The design patent provides protection over the ornamentality of a product. This is essentially how a product looks. The design aspects will not protect functional attributes, but a functional attribute may still have aesthetic selections that are protectable. A patentable invention may include, for example:
the weaving of a material selection for a product,
the iconic or shapely design of a product housing or body,
unique shapes for packaging or containers; or
the appearance of icons or screen displays on a user interface.
The design patent includes figures of different perspectives of the ornamental features of the product and a general description of what is and is not part of the invention. The invention ultimately is defined by the figures. Simplistically, a competitor product will be considered as covered by a design patent if a customer of the product believes the competitor protect is the same as that illustrated in the figures. Once registered, if a competitor provides a product that has the same appearance as that of the design patent, a patent owner may have the right to challenge the continued sale and marketing of the competitor's product.
Provisional Patent Application
A provisional patent application provides a temporary filing before proceeding with a utility patent. The provisional application is not examined by a patent office and does not get registered as a patent. Instead, the patent owner has to file a utility patent application within a year of filing the provisional application to obtain a patent registration.
The provisional application is used to file a patent application quickly, such as if the patent owner wants to tell the public about their product; for example, by attending a trade show, or launching a product. The provisional application is used to obtain a filing date quickly and essentially get in line for patent registration at the USPTO. An important aspect of an early filing date is to set the date for determining whether your invention is novel and not obvious (see what is patentable? below), and what information can be considered as those questions are answered.
What is patentable?
There are a number of requirements that are necessary to obtain a patent. An important requirement is that the invention is new (does not exist already somewhere else) and not obvious to create based on what already exists. Therefore, even if you have a new process or way to use an old device or if your product has a unique design, then a patent may still be available to you as a new and not obvious process. There are specific legal requirements to determine what is obvious based on what inventors already know. Therefore, a patent attorney should be consulted to assess the value of proceeding with a patent application.
Another important requirement is that the invention is fully described so that someone that knows the technology is able to make and use the invention. This requirement is important to determine when the patent application should be filed. If the invention is not finalized enough that it cannot be created based on the description provided in the provisional patent application, then it may be too early to file the application. However, filing a patent application does not require the invention to have been made and tested before it is prepared and filed. The description requirement of a patent application is also important when the invention is a software application. It is beneficial to include specific algorithmic steps to perform functions of software in order to support the patent application. Therefore, the invention should be complete enough to provide this kind of detail. The disclosure requirement should also be considered when deciding to file a patent application or keep an invention a trade secret.
When should a patent be filed?
The United States and many foreign countries are under a first to file system. This means that it does not matter when an invention was actually made (conceived), it matters who filed for the patent application first. An archaic myth that an inventor can write down an invention and mail the description to themselves to receive a priority position of other later inventors is false. Therefore, it is advisable to file a patent application as soon as possible, especially if the invention is in a fast-paced technological area. In addition, many foreign countries will count ANY information in the public as "prior art" (the information available to determine whether the invention is new and not obvious, see What is Patentable?), even including information released by the inventor about the invention. Therefore, it is a good idea to get the patent application filed before any information is shared about the invention with the public. Disclosure to the public may include marketing, sales, offers for sale, among many other things.
There is always a balance to file as soon as possible, while still finalizing details of the invention that could lead to additional valuable improvements. If the invention is still evolving, the provisional patent application is a good alternative. The provisional patent application may be used to secure a filing date (i.e. get in line at the USPTO), while still permitting additional innovation related to the same invention. The application should be filed as soon as there is a complete description of the invention, in that, there has to be enough information in order to teach someone else how to make and use the invention. However, once you meet the threshold, consider a provisional patent application in order to obtain an early filing date for the parts that are invented. If the invention is already fully developed, then a utility patent can be filed directly without a provisional application first. It is usually preferred to go directly to the utility patent application so that the application gets examined by the United States Patent and Trademark Office sooner, and the application can progress to registration that much sooner. If additional development is not foreseeable for the invention, then filing a provisional application is usually only advisable to move quickly for a filing date and permit the disclosure of the invention or to manage costs.
How long is a patent good for?
Generally, the utility patent is enforceable for twenty (20) years from the first filing date, and 15 years from registration for a design patent. The term of a patent may be shortened or extended under different circumstances. In addition, utility patents require payments of maintenance fees in order to keep the patent registration enforceable. If the maintenance fee is not paid, then the patent registration will lapse.
What about protection in other countries?
Many companies are interested in selling their products in other countries or looking to exit the industry by selling their company to a competitor or partner that may be located in or interested in sales in other countries. A patent application may be filed in any other country that has a patent office or uses a patent office of another country.
A PCT patent application is a utility patent application that is filed in the United States that acts as a placeholder application for other countries. The countries that are available through the PCT process are provided in the links below under additional information. The PCT patent application allows a patent owner to file a single patent application and obtain a filing date but select the countries many months (generally 18-30 months) later. This allows patent owners to defer filing costs for many years or keep options open as the company determines their markets or areas of interest. Maintaining an international application portfolio is very expensive. Therefore, critical thought should be given to how to manage a global portfolio. The PCT application is a cost effective way to keep options open, while minimizing costs for a portfolio for a period of time.
What is the process for getting a patent?
The process starts by determining whether you have an invention that you want to patent. A patent attorney can assist in assessing whether the invention is available for patenting, the likely scope of protection that may be attainable for an invention, or whether the invention should be kept as a trade secret.
Once the decision to proceed with the patent application is made, then the invention needs to be described. The description includes the details of the invention as well as one or more drawings illustrating the invention. The drawings may be flow charts, component parts, or any figures that can assist in understanding the invention. Once prepare the application is filed with the United States Patent and Trademark office. If the application is a provisional, then the application will have to be converted into the utility patent application within twelve (12) months from the filing date. Once converted, or if originally filed as a utility or design patent application, the application is assigned to a patent examiner. The patent owner, either directly or through their attorney of record, has a dialog with the examiner to come to an agreement about the features of the invention that are patentable (i.e. new and not obvious). The claims of the patent application will be amended to reflect the agreement between the patent owner and the examiner to cover the unique aspects of the invention. The patent owner then needs to pay the issue fee, and the application is registered. If the patent owner is trying to get more protection by claiming the invention in broad terms,
When to use "patented" or "patent pending"?
As soon as a patent application, whether provisional, utility, or design, is filed that covers a product or service, a patent application owner can state that the invention is "patent pending" in the jurisdiction of that filing. Once the patent application is registered, then the patent owner should include on the packaging or at the point of sale of the product or service that the invention is "patented" and identify the patent registration number.
Where can I find other resources?
The United States Patent and Trademark office provides very good resources to provide similar information to what is provided here, as well as additional resources.
You can find additional resources here:
For additional basic information: Patent essentials | USPTO
For maintaining a patent: Maintain your patent | USPTO
For calculating a patent term: Patent term calculator | USPTO
For marketplace of patents available for licensing: USPTO IP Marketplace Platform
For USPTO patent searching: Search for patents | USPTO
For Google searching: Google Patents
Countries participating in PCT: States Party to the PCT and the Paris Convention and Members of the World Trade Organization (wipo.int)
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