A Basic Guide to Patenting Your Invention
This Guide provides an introduction to patents. It explains What a Patent Is, cautions that You Should Not Give Your Invention Away, and shows you How to Get Started and how a Patent Attorney Can Help You Evaluate Your Invention. After you decide to patent your invention, this Guide describes how your Attorney Prepares Your Application and how the U. S. Patent and Trademark Office Will Examine Your Application, and even What the Patenting of Your Invention Will Cost. This Guide also discusses how to postpone the costs of protecting your invention until you have tested your marketing and venture capital opportunities. In the U.S., you can file a Provisional Application. While the costs of obtaining Foreign Patent Rights are generally high, you can use the provisions of the Patent Cooperation Treaty to delay for up to 30 months the significant costs of filing corresponding applications in foreign national and regional patent offices.
A U.S. Patent is a grant to an inventor by the United States government of the right to exclude others for a limited time from making, using, selling or offering to sell the patented invention. The period of exclusivity granted by a patent is the reward for providing new ideas to society. A patent protects an invention for twenty (20) years from the date of filing and is not renewable. Those patents filed on or before June 8, 1995 have a life of seventeen (17) years from the date of issuance.
Patents are granted for inventions covering, for example, new processes, machines, manufactures and compositions of matter. Most computer-related inventions can now be patented. Patents cover all inventions, regardless of their form. These inventions include systems (hardware and software), circuits, mechanisms, industrial designs, components, chemical compositions and processes.
A U.S. patent is a negative right in that it does not grant a right to do something. There will be circumstances in which your invention infringes another's patent, and you will need to obtain the permission of the other patent holder. An example is where your invention uses another's patented invention but adds to or improves that invention.
A patent offers its holder several significant advantages. First, it may be used offensively. The patented invention may be sold or licensed, or others may be excluded from using your invention. Secondly, a patent may be used defensively to ward off the patent claims of others. In certain patent-intensive industries having a patent portfolio may provide the basis for a defensive strategy. In infringement litigation, you can counter-sue another company suing on its patent. Similarly, opposing patent claims may be settled by cross-licensing the asserted patent rights, whereby litigation may be avoided.
A patent consists of a specification, drawings and claims. The specification is a written description of the preferred embodiment of the invention. The law requires that the specification contain sufficient detail to enable someone skilled in the pertinent technology to make and use the invention without undue experimentation. The drawings are typically prepared by a patent draftsperson based on sketches, blueprints or other materials supplied by the inventor. The claims define the legal boundaries of the patent grant. Much like a deed to land, which describes the metes and bounds of real property, the claims define the limits of the protected invention. If the claims are too narrow, they will not afford sufficient protection for the invention. If the claims are so broad as to include what is already known, they will likely be held invalid when tested in court and afford no protection whatsoever.
In order for a patent to be issued, the invention must be useful, novel (new) and non-obvious. Most inventions readily meet the usefulness requirement, which is a hurdle, for example, for new chemical compounds having no specific end use. Generally, the novelty requirement means that the invention has not been known before.
In addition, a U.S. patent application must be filed within one year after the first offer for sale or first public use on a non-experimental basis in the United States, or first appearance in a written publication anywhere in the world describing the invention to others. The one-year period commences on the date of the earliest of these events to occur. Furthermore, where it is desired to preserve the right to obtain a patent in many foreign countries in which no one year grace period exists, a U.S. patent application must be filed before the first public disclosure of the invention anywhere, in effect negating the U.S. one-year grace period. Generally, most foreign countries allow no grace period after an invention becomes public through the publication anywhere in the world of an article or offering the invention for sale to the public in a foreign country, but rather require 'absolute novelty'.
The non-obviousness requirement for patentability in the United States is satisfied if the invention would not have been obvious to a person of ordinary skill in the pertinent technology at the time the invention was made. Many inventors often fail to recognize the patentable nature of their ideas and erroneously concluding that a new method or device is obvious on the basis of hindsight reconstruction. In other words, once they become aware of the solution, their ability to readily understand it leads them to conclude that it is obvious. Many inventors fail to take appropriate steps to protect their ideas and, thus, never enjoy the commercial advantage that a patent would have provided. Patent applications filed in the United States must also clearly and completely describe the invention.
How To Keep A Record Of Your Work
The three most important things an inventor needs to do in order to protect his or her inventions are to keep records, keep records and keep records.
Whatever records you keep, and the level of their detail, depend on what is appropriate for your invention. However, contemporaneous work records could be important if your work results in an invention. This is important because the burden of proof is on you if you ever have to prove to the U.S. Patent and Trademark Office (USPTO) that you, indeed, are the inventor.
If there is any chance that you could be inventing something, keep whatever records are most appropriate to your work. For example, a software engineer could keep magnetic tapes of new programs; a financial manager might save floppy disks showing new algorithms for financial analysis; and a mechanical engineer would save early sketches and engineering drawings of the device to be made. To prevent loss of your patent rights, these records must be kept at the time of the invention, not reconstructed later. An invention could be attributed to someone else if you don't keep adequate records, because a second inventor who kept better records could have a stronger claim in the eyes of the USPTO.
Invention records are typically kept in a daily notebook. When you believe you are inventing something new, keep detailed notes of your daily work on the invention. The following guidelines will help you keep your notebook:
- Keep a daily record. Sign and date all entries yourself.
- Write the details yourself. Don't delegate this work to anyone else.
- Record everything that can support your claims: all notes, charts, calculations and similar details.
- Keep everything in chronological order. If you enter any information out of chronological sequence, annotate the date and reason that it's out of order.
- Use ink instead of pencil. If you have to delete anything, it's better to cross out than to erase.
- On a joint effort, keep one notebook if possible. Each contributor should initial or sign his/her entries. If you must keep separate records, add as many cross-references as possible.
- Establish corroboration. If you think that your work may lead to an innovation of any kind, have the notebook signed and dated by a witness. The witness should be someone who is not a co-inventor, but who understands the material. Have a witness sign and date every page as 'Read and understood;' this corroboration can be done daily or weekly, depending on the pace of the project.
- If you work online, the procedure is different. Anything you think is an invention should be marked and witnessed with another person's ID as an 'electronic signature' that the invention has been witnessed. For example, a comment in the code could read: 'Witnessed by [user ID], [project ID], [date].' Also print out hardcopy and have the hardcopy signed and witnessed.
- Attach to your notebook any notes, transcripts, reports, tapes, charts, illustrations, plans or plots that could support your claim that an idea is yours.
- Save the notebooks. Store completed notebooks in a safe place.
The idea that you can give away your patent rights may surprise you. Yes, you will forfeit all U.S. patent rights unless you apply for a patent within one year from the first publication, public use or offer for sale of the invention, whichever comes first. Most other countries do not allow any grace period. Timing is particularly important if the product or process is to be sold or used outside your company; unless applications are filed before an offer for sale or outside use, the rights to a patent in most foreign countries may be forfeited. Once you have lost your patent rights by failure to timely file a patent application, your competitors are free to take and exploit your invention.
You and your company may be excited about your discovery and anxious to share it with your professional colleagues. Don't disclose your invention too hastily through publication in journals or at professional seminars, trade shows, and other places where a competitor could learn of your invention. Consult with your Patent Attorney before presenting or publishing your work, including demonstrations at shows or to potential customers, so that your Patent Attorney can take the necessary actions to protect your rights to the invention. Product announcements or releases, including all publications disclosing your invention, must be timed and publicized so as not to jeopardize your patent rights. Typically once you have filed your application in the USPTO, you are free to publicly disclose and market your invention. Remember, don't give away your invention.
The research or development of the invention does not have to be completed before the application process for a patent can begin. Don't be concerned if you are acting too soon; let your Patent Attorney decide. It's better to act too soon than too late. If in doubt, prepare a description of the invention. If the invention will result in a new or improved product, you should consider patenting your invention.
Completion of the Invention Disclosure, a copy of which is attached to this Guide, is designed to provide your Patent Attorneys with a sufficient description to evaluate your invention. Make the Invention Disclosure as complete as possible. Assume that the people reading it are technically competent, though not necessarily in the specialty of the invention. Use the standard terminology of the specialty. Explain or define any new or unfamiliar terms or concepts.
An Invention Disclosure that is signed and dated by both the inventor(s) and witnesses also provides valuable evidence of the date of the invention. Such evidence may be useful in disputes with third parties regarding who was first to invent the method or device. Attach available drawings and written descriptions to the Invention Disclosure. In addition, the inventor or inventors are requested to identify the closest relevant prior art, in the form of publications, patents or commercial use of which they are aware.
The Invention Disclosure should include both the date of conception and the date of reduction to practice of the invention. 'Conception' in this context refers to the mental aspect of conceiving the invention. The term 'reduction to practice' is used to describe the actual making of the invention by building a device and then testing it under conditions that closely simulate those expected to be encountered in the intended utilization of the invention. It is also important to identify anyone to whom the invention has been disclosed either orally or in written form. Publication of an article, book or publication is a disclosure to others.
Prompt completion and submission of the Invention Disclosure is essential in order to prevent forfeiture of U.S. and foreign patent rights.
Submit the Invention Disclosure as quickly as possible to your Patent Attorney. A carefully and thoughtfully prepared Invention Record makes it easier for consideration of its commercial value and for your Patent Attorneys to give a patentability opinion. The decision to file rests on a variety of technical and business considerations. The potential value of your invention must be evaluated. The fact that a new or improved product incorporates your invention is a significant indication of the commercial value of your invention. Another consideration is cost; a single patent costs at least $5,000 to $10,000 (and probably more), plus the time of many individuals.
Another consideration is whether your invention is novel and unobvious in view of the relevant prior patents and technical literature, i.e., the prior art. Most times, it is advisable to conduct a search of the prior art in order to at least identify the most relevant prior disclosures to your invention. Such searches are typically conducted through the classified records of the USPTO and available data bases. The most relevant patents found during the search are studied in order to determine whether the invention as a whole is new and whether it might be non-obvious. A search may be unnecessary if the inventor is so familiar with the already existing patents and literature in the field that his or her contribution is known to be new. The search results will be evaluated by your Patent Attorneys, who will provide an opinion as to the scope of the available patent protection. Based upon that opinion, the decision to file an application will be made depending on whether the available scope of the available patent protection justifies the costs of preparation and prosecution of a patent application in the USPTO.
Often, it is advisable also to conduct an infringement search of the unexpired U.S. patents to identify any patent whose claims may be infringed by your invention. Such searches should be conducted not only when you intend to market your invention publicly but also when you will commercially exploit your invention in a confidential environment. Infringement searches should also be done as early in the product development cycle as possible, to permit the product to be redesigned, if possible, to avoid possible infringement situations.
When the decision to file a patent application is made, your Patent Attorney will prepare a draft of the application. In most instances, the Patent Attorney will ask the inventor(s) for additional technical disclosure, as well as for the inventor(s)' comments about the relevant prior art. The draft of the application is also submitted to the inventor(s) to allow a review of the application for completeness and accuracy. The Patent Attorney will then discuss with the inventor(s) any suggested corrections or additions and will then revise the application as necessary. Few people know the subject matter of the invention better than the inventor, and no one is in a better position to explain the scope and content not only of the invention but also of what is then happening in the technical area covered by the invention.
Your Patent Attorney will prepare a patent application which includes drawings, a specification and claims. An example of the application contents is shown in an issued Patent. A copy of the Example Patent is at the end of this Guide. The drawings and specification are used to describe the best mode of the invention. This means that the best version of the invention and alternates, if any, are to be described. The purpose of the patent system is full disclosure. Accordingly, one cannot disclose an inferior mode of the invention and retain the best mode in secret. Failure to so disclose would result in loss of patent rights. The claims of a patent define the scope and extent of the coverage of the patent, much like the description of real property in a deed, which defines the metes and bounds of the land. Most patents have more than one claim which differ in scope and extent of coverage. In essence, each claim is an individual patent on the device described. However, each patent may only cover a single invention. If more than one invention is claimed, the USPTO will require the application to be divided into two separate applications.
Your application is examined in order of its filing date, with the application having the earliest date being examined first. The Examiner to whom your application is assigned, also examines other applications that describe inventions relating to the same technology as yours.
The invention examined for obviousness is not that described in the specification or drawings, but rather that recited in the claims. Your Examiner will conduct his or her own search for the available prior art that is most pertinent to the claimed invention.
The inventor(s) and, if the patent title has been assigned, the present patent owner are under a duty of disclosure of any documentation or information that is material to the examination of the invention. Accordingly, if any relevant reference is discovered at any time during the application preparation and examination process or thereafter, your Patent Attorney must be advised promptly. Such material items must be disclosed to the USPTO for evaluation. The USPTO will typically issue at least one examination report, known as an Office Action, which includes the results of the Examiner's prior art search and the evaluation of your application. Your patent attorney in consultation with you will prepare an appropriate response, known as an Amendment, to the Office Action and file it with the USPTO. This must be done within three (3) months in order to avoid additional fees. Typically an Amendment amends your application to more clearly define the invention and to present arguments as to why your invention differs from or distinguishes over the prior art. Modification of even one word in the claim can result in a determination that the amended claim is now non-obvious and, therefore, patentable. Though most applications require the filing of at least one Amendment, further Amendments may be needed to secure the issuance of your patent. Claims may or may not be granted. If at least one claim is approved, a patent may issue.
Overall, the patent application process requires typically 9-48 months, depending on how many times the application is submitted and resubmitted, how long it takes for the USPTO to review the application and other factors. Generally, it takes 6-8 months for an initial response from the USPTO. Some claims may be accepted and others rejected; the application is resubmitted and, again, some claims may be rejected.
The inventor's cooperation will be needed at various times, most likely at the application preparation stage and at the time a response needs to be made to an Office Action. During the entire patenting process, it is important to save the historical documentation (the supporting records); they may be needed later for proof of a claim or as evidence in litigation.
There is no one standard cost for obtaining a patent. Because patents vary so widely in scope and complexity, and the time to respond to Office Actions can also vary, costs, inclusive of attorney fees and government fees, can be as little as a few thousand dollars or can be as much as over a hundred thousand in those rare situations in which a court appeal is needed to secure the patent.
Appreciating that a patent application will be filed only when the cost of obtaining the corresponding patent is justified by the commercial value of that patent, the following discussion presents expected costs for the preparation and successful prosecution of the attached Example Patent. The Example Patent relates to a relatively simple system, which uses a programmed computer to count the number of cardboard pieces in a stack. Relatively few inventions are simpler, while most inventions, such as computer-related ones, are more complex and, thus, the costs of securing a patent thereon may be reasonably expected to be higher. For the sample patent, total expected costs are the sum of:
(a) USPTO Filing Fees - The USPTO is a fee-oriented institution. Most actions require a fee. There are two sets of fees: one for individuals and small companies ('small entities') and one, double in amount, for large companies ('large entities'). These fees were set by the USPTO on October 1, 1997. Historically, they are increased each year.
(b) Drafting Fees - The USPTO will accept informal drawings in an original application. Before the patent issues, formal drawings must be submitted. Costs are frequently under $300 for a simple patent on a mechanical device.
(c) Prior Art Searches - Frequently, it is desirable to perform a patentability or novelty search of existing patents to determine if the invention or something close to it has already been invented and patented. If the prior art fairly describes your invention, it isn't new or novel, no patent is likely to issue and there is no point in applying. Ideally, there will be no 'prior art' patents or other prior disclosures of the invention, and your Patent Attorney can advise you to file. It is usual to find some prior references, that relate generally to your invention but each of which differs therefrom in at least one significant feature.
Costs for a prior art search vary roughly from $250 to $3,000 (and more), depending on the scope of the patentability search and the technical complexity of the invention. Costs of a search for both novelty and infringement issues are at least twice these amounts for the same invention.
(d) Attorney Fees - These can be agreed to with your attorneys to be either a fixed or set fee for agreed tasks, or can be on an hourly basis, or a combination of these or other methods. These fees cover the review of the Invention Disclosure and consultation with the inventor to secure a detailed understanding of your invention, the preparation and filing of a patent application in the USPTO, the review and reporting of the Office Action from the USPTO, the preparing and filing of an Amendment and attending to the issuance of the resulting patent.
(f) Out-of-Pocket Expenses - These include, for example, overnight express mail costs, copying costs, telecopier costs, travel costs, and any other out-of-pocket expense your attorney incurs, aside from USPTO and drafting fees, while preparing and prosecuting your application.
An Example: You may agree that you will prepare the Invention Disclosure as attached to this Guide, and prepare the original informal drawings. From that Disclosure, your Patent Attorneys will prepare the application papers required, including the specification, claims, abstract, inventor's declaration, certificates of mailing and other papers. Let's further assume you are a 'small entity' entitled to the lower schedule of fees in the USPTO. Total estimated costs for the initial preparation and subsequent prosecution could then look like this for our sample 'simple' application such as the attached Example Patent:
|(a)||Filing fees ($385); Issue fee ($645)||$1,030.00|
|(c)||Prior art patentability search||750.00|
|Total Costs (small entity) $7,630.00|
The above costs are payable over the prosecution period which can take as little as nine months or extend for years. The present average is about 21 months. There is a procedure (a petition to make special) to request that your application be considered on an accelerated basis. However, this procedure is available only if the invention relates to conservation of energy, saving the environment, your pending patent claims are infringed by a competitor's product, the inventor is over 65 years of age or is in declining health, etc. The following is a schedule of when certain prosecution events occurs and what their costs may reasonably be:
|Application Preparation and Filing in USPTO:|
|(a)||Prior art patentability search||$ 750.00|
|First Payment $4,795.00|
|One Year After Filing - Review of Office
Action and Preparation of Amendment:
|(b)||Out-of-pocket expense||$ 50.00|
|Second Payment $1,550.00|
|Nineteen Months After Filing - Patent Issuance:|
|(a)||Issue Fee||$ 660.00|
|Third Payment $1,310.00
After your patent has issued, Maintenance Fees must be paid on the following schedule to maintain your patent in force for its full term:
|Due at 3.5 years (after issuance)||$ 525.00|
|Due at 7.5 years||$1,050.00|
|Due at 11.5 years||$1,580.00|
You may pay these fees if you are a small entity. Large entities must pay Maintenance Fees at twice these amounts.
A U.S. provisional patent application can be filed simply by filing in the USPTO: (1) a cover sheet; (2) a specification disclosing an enabling description of the invention; (3) drawings, which may be informal; and (4) a Filing Fee ($75 - small entities or $150 - large entities). The filing of a provisional application establishes the effective filing or priority date. A full application must be filed within one year from that date. The USPTO will not review a provisional application. Further, the year during which the provisional applications is pending does not 'count' toward the 20 year patent life, but allows use of a 'Patent pending' notice while product development and investment capital issues can be explored by the inventor. Total costs depend on the complexity of the invention, because a complex invention may require a more elaborate specification.
For a simple invention, where you can supply a complete written description of the invention and informal drawings to your Patent Attorney, total initial costs (including the Filing Fee) would be in the order of $500. Appreciating that your written disclosure may require some revision, attorney review and rewriting may increase this estimate to $1,000 to $1,500. The obvious advantage of the Provisional Application over the normal or non-provisional application is cost!
Patent protection in foreign countries is a complex and expensive undertaking, and generally is substantially more expensive than a U.S. application. A strategy based on the invention's value in certain countries should be considered.
At present, there is no 'world' patent or a single 'foreign' patent. To the contrary, a separate patent needs to be secured from the Patent Office in each country. Patent prosecution in certain 'regions' is simplified by the filing of a single application in a 'regional' patent office. The European Patent Office (EPO) is the prime example of a 'regional' patent office. The EPO examines only one application, which if approved and granted may lead to the issuance of patents in each of fourteen European countries, e.g., Germany, France, U.K., Italy, etc.
Generally, pursuing foreign patent rights must be assessed in light of the probable economic gain and costs. If it is unlikely that an invention will be marketed or manufactured in a particular country, then a patent in that country may be of little interest. On the other hand if you market abroad, foreign patent protection can be viewed as an asset well worth obtaining and preserving. As markets become global, the need for foreign patent rights increases. This asset can be obtained, like other assets, for a cost. A business decision needs to be made as to whether that cost is justified.
Costs - Foreign Application
Costs of foreign applications depend on the selection of countries in which patent protection is desire and on the foreign patent application plan that is followed. By far the largest part of the financial burden to secure foreign patent protection is incurred when the U.S. application enters the 'national stage', i.e. when a corresponding patent application is filed in each of the 'National' patent offices (the Canadian Patent Office, the Japanese Patent Office, etc.) or one of the regional patent offices (primarily the European Patent Office). The initial filing costs in each of the Japanese Patent Office or the European Patent Office may easily exceed $10,000.00. In addition to these initial expenses, there are the expenses related to the prosecution and issuance of the patent application and the maintenance fees. When the time comes for entering the 'national' stage, precise estimates may be obtained from our foreign associates.
One option for the patent holder is to enter the 'national stage' in the elected foreign patent offices within one year from the filing date of his or her patent application in the USPTO. A second option is to postpone the 'national stage' costs by using the procedures of the Patent Cooperation Treaty (PCT). Such postponement allows time to assess whether later developments relating to the product and its market makes the further pursuit of foreign patents either good or bad business sense.
A popular vehicle for obtaining foreign patent protection through a single application is the procedure created by the PCT. By filing a single PCT application in the 'Receiving Office', such as the USPTO, patent protection may be sought in the participating countries, which include among others Canada and Mexico, most European nations, and Japan. You have the option to file either a U.S. or a PCT application first. If a U.S. application is filed first, then the PCT application must be filed within one year of the filing date of the U.S. application in the USPTO. In either case, you obtain the benefit of the first filing date as the 'priority' date (the date on which your invention was presumptively made). This priority date attaches not only to your first filed application, but all other related applications if all of the subsequent filing date requirements are timely met. Thus, publication or commercial usage occurring after your priority date does not effect the patentability of your invention.
Dependent upon the election of the patent holder, the PCT procedure may involve either one or two steps. The first step is to file within one year of the filing date of the original patent application in the USPTO a Demand in the Receiving Office, whereby a minimum delay of twenty (20) months from the U.S. filing date is given to the patent holder before entering the 'national stage'. Alternatively, the patent holder can delay 'national stage' expenses for up to a total of thirty (30) months from the U.S. filing date by taking the second step, i.e., entering 'Chapter II' of the PCT within a period of nineteen (19) months from the U.S. filing date. In addition to providing a further delay, the USPTO Receiving Office will conduct during its Chapter II examination a preliminary prior art search. The references identified during this search will help you further evaluate whether or not you should enter the national phase.
Using the Example Patent for the purposes of illustration and designating five 'national' or regional patent offices, the costs including attorney fees, out-of-pocket expenses and filing fees charged by the Receiving Offices amount presently to approximately $2,500.00 to secure a twenty (20) month delay by filing the Demand and a further $1,300.00 to secure a thirty (30) month delay by entering the 'Chapter II' phase, both delays calculated from the initial filing date of the U.S. patent application. PCT fees fluctuate with the European currencies and are expected to increase. At the time of filing a 'Demand' or 'Request for Chapter II', precise estimates may be given.
If you don't file within a year of your U.S. filing date either a national stage or PCT application, you will loose the benefit of your early U.S. filing date. However if you keep your invention secret, you may file abroad up to the date your U.S. application issues as a patent. In most countries, the issuance of your patent any where in the world bars the subsequent filing of an application. The issuance of a U.S. patent without prior filing of corresponding foreign applications raises the specter of teaching your foreign competitors your invention by the issuance of your U.S. patent, and permitting them to freely exploit it abroad.
The obvious high cost will be justified for only important applications.