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Patent FAQ

If you would like to speak with a happy registered patent attorney or a happy registered patent agent, then please call 757-253-5729 or 888-388-9614.  We are here to help.

  1. What is a patent?
  2. Who may apply for a U.S. Patent?
  3. What types of patents are there?
  4. What is a provisional patent?
  5. What is a utility patent?
  6. What is a design patent?
  7. What is a plant patent?
  8. What is intellectual property?
  9. What is the “USPTO”?
  10. Can a patent be renewed?
  11. What may not be patented?
  12. If abstract ideas and mental processes cannot be patented, how can software based on a mathematical algorithm receive patent protection?
  13. What are the requirements for patent protection?
  14. What is “prior art”?
  15. What happens if prior art is not disclosed in a patent application?
  16. If one person furnishes the ideas for invention and another person employs him or finances his experimentation, should the patent application be filed by them jointly?
  17. I have made some changes in my invention after the filing of my patent application documents. May I amend my patent application by adding a description and illustration of these features?
  18. While vacationing in another country, I found an article on sale which has not yet been introduced into the U.S. or patented or described in the U.S. May I apply for a U.S. patent on this invention?
  19. If I obtain a patent on my invention, will that protect me against claims of others who say that I am infringing their patents?
  20. What do the terms “patent pending” and “patent applied for” mean?
  21. Can an inventor sell his right to a patent or patent application to someone else?
  22. Does a U.S. patent protect my invention in other countries?
  23. What is a patent search?
  24. How long does a patent last?
  25. What happens if an invention is made public before a patent application is filed?
  26. What are patent “claims”?
  27. What are the elements of a claim?
  28. What does it mean to “infringe” a patent?
  29. What are the defenses to patent infringement?
  30. What are the consequences of being found to have committed patent infringement?
  31. Does it matter if infringement is accidental or innocent?
  32. How does copyright protection differ from patent protection?
  33. Can computer software be protected by copyright?
  34. Can software technology be protected by patent law?
  35. Can the same software qualify for both copyright and patent protection?
  36. Where I can learn about business method patents?
  37. How can I search for a U.S. Patent?
  38. What does it mean to obtain a license for a patent?
  39. I am working on an idea, but don’t know if our changes would be considered non obvious. The change is simple, but would help make the similar products standard by adding a plug, rather than a hard wire connection. Is something as simple as adding a plug considered non obvious?
  40. What do you mean by non-obvious?
  41. If I developed a pacifier with a new function would I need to file a design and utility patent?
  42. Can a board game be patented? And if so, how can I see current board games that have been patented? Also, how much different does one game need to be from another?
  43. Can a company file for a patent or only a natural person(s)?
  44. Can design patents be filed under PCT?
  45. How detailed does a design patent need to be? My device that I have a utility patent on has magnets molded into it and I would like to patent the exact positioning of the magnets. Is that something that would fall under a design patent? How many drawings are recommended?
  46. Is there a guideline to follow about drawings, drafting patents ?
  47. Do I need to have all the paperwork (i.e. claims, drawings, etc.) completed and ready before I begin filing my application?
  48. In order to complete filing online utility patent application, what do I need?
  49. Is “first-to-file” the policy of the USPTO and is it aligned with International norms?
  50. What is the difference between first to file and first to invent?
  51. We want to apply for a patent in Australia as well in US. Do we have to link the 2 applications in some way?
  52. Is it possible to view (in English) Foreign patents (EU, Canadian, Japanese) via the web?
  53. I believe that someone has taken my ideas from my research paper and filed a patent application. What can I do?
  54. What is a normal licensing fee as a percentage of sales for a mechanical product?

What is a patent?
A patent is a form of intellectual property. A U.S. patent is a right granted by the United States Patent and Trademark Office (USPTO) to an inventor to exclude others from making, using, selling, offering for sale, or importing an invention for a limited time. In the U.S., patent law is driven by the language of the Patent Act, 35 U.S.C. 101, et seq., and by court cases interpreting the Act, which have added a good deal of jargon, complexity and some confusion over the years.

Who may apply for a U.S. Patent?
A patent may be granted to the inventor or discoverer of any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, or on any distinct and new variety of plant, which is asexually reproduced, or on any new, original, and ornamental design for an article of manufacture.

What types of patents are there?
There are provisional patents, utility patents, design patents and plant patents.

What is a provisional patent?
A provisional patent is a way to get patent-pending for one year. Technically, it is only a patent application because it never is examined by the United States Patent and Trademark Office (USPTO), and never becomes a granted patent. A provisional patent does not have to include any claims defining the invention precisely and it expires in one year. The purpose of a provisional patent application is to establish a filing date for the invention disclosure that may later be claimed as a “priority” date in a later-filed regular or foreign patent application.

What is a utility patent?
A utility patent (also known as a non-provisional patent) is the only way to get a patent granted for something that solves a problem or achieves a goal.

What is a design patent?
A design patent protects the look of your invention that has nothing to do with solving a problem or achieving a goal. In other words, a design patent protects the “look” of your invention. In addition to design patents, other forms of intellectual property protection might be available, such as copyright protection or trade dress protection. You should consult with an intellectual property practitioner for more information on the types of intellectual property protection available for your invention.

What is a plant patent?
A plant patent protects plants. More specifically, a plant patent is for asexually reproduced, distinct and new varieties of plants, other than tuber propagated plants or plants found in an uncultivated state.
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What is intellectual property?
Intellectual property consists of property created through human creativity. It includes, for example, literature, the visual arts, music, drama, compilations of useful information, computer programs, biotechnology, electronics, mechanics, chemistry, product design, and trade identity symbols. Intellectual property law is designed to promote human creativity without excessively restricting dissemination of the fruits of such creativity. Intellectual property rights are embodied in patents, trade secrets, copyrights, and trademarks.

What is the “USPTO”?

The “USPTO,” sometimes shortened to “PTO” or simply “Patent Office,” is another name for the U.S. Patent and Trademark Office. This office is the governing authority for granting patents and trademarks in the U.S.

Can a patent be renewed?
No, a patent cannot be renewed, but you can always file for an improvement on the patent. In fact, most inventions are improvements of existing technology and sometimes, you must negotiate a license with current patent owners if your improvement depends upon existing patented technology.

What may not be patented?
Abstract ideas, mental processes, laws of nature and physical phenomena. For example, one cannot patent a new mineral, insect or plant discovered or found in the wild. Likewise, Einstein could not patent “E=mc2” and Newton could not have patented the law of gravity. Discoveries that are manifestations of nature are “free to all men and reserved exclusively to none.” Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980). Abstract ideas and nature’s laws are preserved for the public domain and kept free for use by all. Literary, dramatic, musical or artistic work are usually subject to copyright protection. Inventions that are not useful (such as perpetual motion machines) or that are offensive to public morality are also not patentable.

If abstract ideas and mental processes cannot be patented, how can software based on a mathematical algorithm receive patent protection?
For years, software was considered outside the scope of patent protection to the extent based on mathematical algorithms, as mathematics is the basic working tool of contemporary science and technology and algorithms can be natural laws. In 1981, the Supreme Court held that software-related inventions are not per se to be excluded from patent protection simply because the process of performing the program’s function may involve underlying mathematical algorithms. Software uses a non-physical process by operating electronically through the utilization of a mathematical equation (algorithm) to control the output of the computer program. Mathematical algorithms have a functional application in computer programs, and thus can be protected under the Patent Act. To use an example from physics, electricity was not patentable, but the way in which electricity transmits information may be patentable.

What are the requirements for patent protection?
To qualify for patent protection, an invention must be new, useful and non-obvious.

(1) New or “Novel”: An invention must not be in the public domain before the patent applicant invented the invention. The USPTO will not grant a patent on an invention that was publicly used or “on sale” – by anyone, including the inventor — more than one year before the inventor filed a patent application. Identical or similar inventions that others publicly disclose anywhere in the world before an inventor files her patent application – known as “prior art” – may prevent the inventor from obtaining patent protection because her invention would not be considered “novel.”

(2) Useful: An invention must be useful for some purpose, and cannot be inoperative. Utility is not presumed, but must be disclosed as part of the patent application. Note that a patent need not have commercial potential to be valid. Moreover, a patent gives its owner the right to exclude others from “making, using or selling” the invention in the U.S. It does NOT confer the right to actually use the invention, and indeed many times use is blocked by the need to employ other technologies or machines patented by another. Such situations are often resolved by trading patent licenses.

(3) Non-obvious: Even if a no particular prior art anticipates an invention exactly, it can still be “obvious” and thus barred from patent protection. To determine whether an invention is non-obvious one asks, “In light of known, similar products, processes or designs, would a person of ordinary skill (but not extraordinary skill) working in the field related to the inventor’s invention consider the differences between the invention and similar products, processes or designs obvious?” Obviousness may also be established by combining what is disclosed by several pieces of prior art, as long as there is a motivation in the prior art for combining them.

What is “prior art”?
Publicly disclosed inventions, including patented inventions, are known as “prior art” that can be cited against a new patent applicant. Publicly disclosed inventions are considered prior art without regard to where (United States, Europe, Asia, etc.) or in what form the public disclosure occurred (a journal article, an archived PhD dissertation, an online publication).

What happens if prior art is not disclosed in a patent application?
If a patent applicant intentionally fails to disclose relevant preexisting technology of which he or she was aware in his application, the patent could be invalidated on the grounds that the applicant engaged in inequitable conduct. Intentional failure to disclose can be inferred from evidence that the patent applicant was aware of the undisclosed technology and knew that it was material.

If one person furnishes the ideas for invention and another person employs him or finances his experimentation, should the patent application be filed by them jointly?
No. The application should be signed by the true inventor and filed in his or her name.

I have made some changes in my invention after the filing of my patent application documents. May I amend my patent application by adding a description and illustration of these features?
No. New matter cannot be introduced into the disclosure of a patent application. However, there currently is a patent application called a “continuation-in-part application” (CIP) application that allows the patent applicant to file a new application which contains new subject matter to replace or supplement the original application. You should consult your patent practitioner to find out more about the CIP application.

While vacationing in another country, I found an article on sale which has not yet been introduced into the U.S. or patented or described in the U.S. May I apply for a U.S. patent on this invention?
No. According to the law, a U.S. Patent can only be obtained by the true inventor, not by one who learns of the invention of another.

If I obtain a patent on my invention, will that protect me against claims of others who say that I am infringing their patents?
No. There may be a patent of a more basic nature on which your invention is an improvement, and, in fact, many patent applications are improvements on existing technology or existing patents that might require you to obtain consent from an owner of any existing patents. You should consult with your patent practitioner and seek competent legal advice before you commercialize your invention, even if your invention is protected by a patent granted to you.

What do the terms “patent pending” and “patent applied for” mean?
They are used by a manufacturer or seller of an article to inform the public that an application for patent on that article is on file in the USPTO. The law imposes a fine on those who use these terms falsely to deceive the public.

Can an inventor sell his right to a patent or patent application to someone else?
Yes. The inventor can sell all or any part of his interest in the patent application or the patent. The patent application must be filed in the USPTO as the invention of the true inventor, however, and not as the invention of the purchaser.

Does a U.S. patent protect my invention in other countries?
No. The U.S. patent protects your invention only in this country. If you wish to protect your invention in foreign countries, you must file an application in the patent office of each such country within the time limit permitted by law. Check with your patent practitioner about costs before you decide to file in foreign countries.

What is a patent search?
A patent search is a way to try to see if someone else has already thought of your invention. Typically, a patent attorney or agent searches existing patents, patent applications and trade journals and confirms the searched art units with a USPTO examiner. It is recommended that all searches include the name of the USPTO examiner that was consulted, date of communication, and email address of the USPTO examiner.

How long does a patent last?
For patents filed on June 8, 1995 or later, the protection lasts for 20 years from the date the patent application is filed. For patents filed prior to June 8, 1995, the term is 17 years from the date of issuance or 20 years from the date of application, whichever is longer.

Typically, a provisional patent application lasts for 1 year. A utility patent lasts for 20 years from its filing date. A design patent last for 14 years from the date that it is granted. A plant patent lasts for 20 years.

What happens if an invention is made public before a patent application is filed?
In the United States, an inventor cannot patent an invention if he or she discloses it to the public more than one year before filing for patent protection. This is sometimes known as the “on sale” bar to patentability. Public disclosure can occur when the invention is described in any published writing, or when the invention is offered for sale, including any pre-manufacture discussion about the invention that involves describing it. In most foreign countries, there is no one year grace period; the inventor must file the patent application before the invention is publicly offered for sale, used or displayed.

What are patent “claims”?
A patent consists of an abstract, a description of the invention, disclosures of prior art, drawings, and one or more claims. The claims are the only truly enforceable part of a utility patent, and they define the property right owned by the patent holder. They are written in technical language, and must embody subject matter that is within the scope of patent law, is novel and is not obvious. The more broadly written the claims, the less likely they are to avoid rejection or invalidation on the grounds of obviousness or anticipation by prior technology. The more narrowly written, the less likely a competing technology or device infringes the claims. To infringe a patent, one must practice every element of a claim. If you do not practice one or more of the elements of a claim, then you do not infringe that claim.

What are the elements of a claim?
Patent claims generally contain an introductory paragraph called a “preamble,” which is followed by a series of phrases called “elements.” Elements can be recited as a means or steps for performing a specified function, but elements recited in this way may be interpreted more narrowly than if recited by name, structure or as a defined step.

What does it mean to “infringe” a patent?
If you are accused of patent infringement, you are accused of having made, sold or offered for sale an invention described in one of the claims of a valid patent, without the patent owner’s authorization. To determine if infringement has occurred, a court will look at the patent’s claims, interpret them, and compare them to your device, process, method etc. Infringement occurs if your accused item performs each of the elements of any of the claims. Note that you may be liable for inducing infringement or contributing to infringement, even if you did not directly infringe a patent, if you encourage or assist someone else to infringe a patent.

What are the defenses to patent infringement?
There are two basic lines of defense: non-infringement and invalidity.

Non-infringement: To infringe a patent, one must practice every element of a claim. If you do not practice one or more of the elements of a claim, then you do not infringe that claim. This determination often rests on how a court interprets the language of the claims you are accused of infringing.

Invalidity: Only a valid patent can be enforced. Issued patents are presumed valid, but this presumption can be overcome if prior art exists that demonstrates an invention was not novel or that it was obvious at the time the patent application was filed. Especially in the case of software and Internet business method patents, articles disclosing or describing the patented inventions may exist in trade publications that would not have been found by the patent examiner and would not have been part of the prosecution file of an issued patent on file with the USPTO. The patent holder’s failure to name all inventors may also invalidate a patent.

What are the consequences of being found to have committed patent infringement?
A patent owner may recover money damages in the form of a “reasonable royalty,” which is the amount the patent holder could have earned in licensing the patented technology. Under certain circumstances, the patent owner may recover lost profits as an alternative measure of damages. The money damages amount may be tripled if the infringement is found to be “willful.” The patent owner may also be entitled to enjoin further use and sale of the patented invention.

Does it matter if infringement is accidental or innocent?
It does not matter for liability purposes that a patented infringer was unaware of the patented technology when infringement occurred. However, willful or intentional infringement may carry a higher monetary penalty than innocent infringement.

How does copyright protection differ from patent protection?
A copyright can protect the particular way in which ideas are expressed in a particular computer program. A copyright owner has the right to prevent others from making unauthorized, literal copies of a software program, but not from independently creating software that performs the same functions.

A patent, on the other hand, grants an inventor exclusive rights in the technology. With a software patent, one may prevent others from making, using or selling a program that performs the same process or function as the patented technology, even if different code is used. Often, a software developer does not merely wish to rely on the prevention of verbatim copying of the software, since a competitor may observe the functions performed by the software, and without knowing the details of the software code underlying the functions, write equivalent code.

Can computer software be protected by copyright?
Yes. Software copyright law is a recent branch of the 1976 Copyright Act that was intended to protect artistic creations and creativity. Initially there was a question of whether copyright law could protect software because computer programs contain functional instructions regarding what a computer should do if given a command. Strictly functional instructions and ideas are not copyrightable because they do not meet the minimal copyright requirement for creativity. The existence of a requisite level of creativity was questioned in software. During the 1980s, however, through court decisions and congressional guidance, copyright law became a major form of legal protection for computer programs, some databases, and software technology. Through copyright protection, creators of computer programs can prevent or seek damages for unauthorized copying of programs. This right is not absolute, however. Courts still question whether particular elements of computer programs are sufficiently expressive to be protectable under copyright law. For example, some courts have held that a software program’s graphical user interface (GUI) (or at least some elements of it) is insufficiently expressive for copyright protection. See Copyright FAQs.

Can software technology be protected by patent law?
Yes. Software technology development is highly incremental in nature and, as a result, truly unique designs, methods or approaches are rare. In addition, prior art with respect to software technology is not centralized or even easily discovered. However, patents can and do often issue on software-based technology that is not, in fact, novel. Computer technologies can be patented as processes (software), machines, even articles of manufacture (the CD containing the software, for example).

Can the same software qualify for both copyright and patent protection?
Yes. Software may qualify for both copyright and patent protection provided, of course, that the software satisfies the requirements for those intellectual property rights.

Where I can learn about business method patents?
The U.S. Patent Office has a great deal of useful information on its website, at http://www.uspto.gov/web/menu/pbmethod/.

How can I search for a U.S. Patent?
Issued U.S. patents can be found on the United States USPTO website, at http://www.uspto.gov/patft/index.html. They are also available at patent depository libraries around the country. For more information on libraries, see http://www.uspto.gov/go/ptdl/.

What does it mean to obtain a license for a patent?
A license, in its simplest terms, is a promise by the patent owner (the licensor) not to sue the licensee for exercising one of the patent owner’s rights. Patent laws grant the patent owner rights to exclude others from making, using, or selling the patented invention. Using a contract called a “license,” a patent owner may choose to allow one or more others to make, use and/or sell the invention, usually in exchange for payment. As long as the licensee abides by the terms of the license contract, a patent owner cannot sue the licensee for infringement. Patent infringement cases are often settled by the accused infringer entering into a license agreement with the patent owner and promising to pay the patent owner royalties.

I am working on an idea, but don’t know if our changes would be considered non obvious. The change is simple, but would help make the similar products standard by adding a plug, rather than a hard wire connection. Is something as simple as adding a plug considered non obvious?
The answer is not always that easy, please see MPEP 2141, http://www.uspto.gov/web/offices/pac/mpep/documents/2100_2141.htm#sect2141 for guidance in determining obviousness.

What do you mean by non-obvious?
Obviousness is covered by 35 U.S.C 103. Under this statute, a patent may not be obtained if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. In a rejection under this statute, it is necessary to modify a single reference or to combine it with one or more other references. The term “obvious” applies to this modification/combination. If the modification/combination is obvious, then the rejection is proper.

To determine if a modification/combination is obvious, three basic criteria must be met. First, there must be some suggestion or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings. Second, there must be a reasonable expectation of success. Finally, the prior art reference (or references when combined) must teach or suggest all the claim limitations. See MPEP 2142.

If I developed a pacifier with a new function would I need to file a design and utility patent?
A design patent only protects the ornamental design of a functional item. The utility patent protects the process of making, the process of using or the product itself.

Can a board game be patented? And if so, how can I see current board games that have been patented? Also, how much different does one game need to be from another?
Yes, a board game can be patented. You can see examples by conducting a search on our web site, go to http://www.uspto.gov/patft/index.html. For information regarding whether you invention is patentable or not, go to the Inventors’ Resource page on the USPTO web site.

Can a company file for a patent or only a natural person(s)?
Applications must be filed in the name of the inventor(s). The inventor(s) must sign the oath or declaration for patent application. However, a company may have the patent rights assigned to them. Once the inventor(s) has assigned the rights to the company, the company may take action in the patent application.

Can design patents be filed under PCT?
No.

How detailed does a design patent need to be? My device that I have a utility patent on has magnets molded into it and I would like to patent the exact positioning of the magnets. Is that something that would fall under a design patent? How many drawings are recommended?
Design patents are directed to the appearance for an article of manufacture, so the appearance of the magnets could be patentable as a design. Your application should include very good drawings showing all features of your claimed design so that someone skilled in making your device could make and use it. See a Guide to Filing a Design Patent Application: http://www.uspto.gov/web/offices/com/iip/pdf/brochure_05.pdf

Is there a guideline to follow about drawings, drafting patents?
The drawing requirements are available in MPEP 608.02. http://www.uspto.gov/web/offices/pac/mpep/
mpep.htm

Do I need to have all the paperwork (i.e. claims, drawings, etc.) completed and ready before I begin filing my application?
A nonprovisional utility patent application must include a specification, including a claim or claims; drawings, when necessary; an oath or declaration; and the prescribed filing fee. A complete nonprovisional utility patent application should contain the elements listed below, arranged in the order shown.

  • Utility Patent Application Transmittal Form or Transmittal Letter
  • Fee Transmittal Form and Appropriate Fee
  • Application Data Sheet (see 37 CFR § 1.76)
  • Specification (with at least one claim)
  • Drawings (when necessary)
  • Oath or Declaration
  • Nucleotide and/or Amino Acid Sequence Listing (when necessary)

In order to complete filing online utility patent application, what do I need?
Please go to the USPTO’s Electronic Business Center at: http://www.uspto.gov/ebc/efs_help.html

Is “first-to-file” the policy of the USPTO and is it aligned with International norms?
The U.S. is one of the few nations that decide inventorship on a first-to-invent basis versus first inventor-to-file.

What is the difference between first to file and first to invent?
With first to file, priority is given to the application/invention with the earliest filing date. This is common in many international patent offices. However, the USPTO currently gives priority to the first to invent, where evidence supporting conception of the claimed invention prior to the filing date of the application may be considered to determine the first inventor of the invention.

We want to apply for a patent in Australia as well in US. Do we have to link the 2 applications in some way?
If you have a foreign application you can claim priority to that foreign application in the U.S. provided that the foreign application was not filed more than one year before the U.S. filing date and all the requirements of 35 U.S.C.119(a) – (d) are satisfied. Priority should be claimed at the time of filing the U.S. application; however, you do not have to claim priority if you do not choose to do so.

Is it possible to view (in English) Foreign patents (EU, Canadian, Japanese) via the web?
Many foreign patent offices and international patent authorities have patent databases on the web. For example, the European Patent Office’s espacenet database has more than 45 million patent documents and patent families. Many patent families have at least one document in English (US, UK, WIPO, or Canadian). The Japan Patent Office’s Industrial Property Digital Library provides access to the Patent Abstracts of Japan (PAJ) from 1976 to the present and Utility and Model Patent Gazettes from 1971 to the present, in addition to other databases and documents. You can access espacenet at the EPO’s web site at http://www.uspto.gov/cgi-bin/exitconf/internet_exitconf.pl?target=www.european-patent-office.org/. The JPO web site is http://www.uspto.gov/cgi-bin/exitconf/internet_exitconf.pl?target=www.jpo.go.jp/.

I believe that someone has taken my ideas from my research paper and filed a patent application. What can I do?
There are several options available each with certain requirements and risks. We cannot give you an exact answer since the options are extremely fact dependent. Here are three of the more common situations (this is not intended to be an exhaustive list):
You may file a protest under 37 CFR 1.291. This situation is highly complex and it is recommended that you seek the advice of a registered patent attorney/agent who can fully explore the facts.
If that patent application has been published you may submit your research paper to the USPTO for consideration 37 CFR 1.99. You must file your research paper within two months of the date of publication of that patent application and comply with the remaining requirements of 37 CFR1.99. Again, this process is complex and it is recommended that you seek the advice of a registered patent attorney or agent.
Or alternatively, you may apply for a patent on the invention yourself. If the claimed inventions are the same, the USPTO may initiate an interference proceeding to determine the first inventor.

What is a normal licensing fee as a percentage of sales for a mechanical product?
Licensing your product can be a complex area, and, consequently, your question is difficult to answer. You may go to the Licensing Executive Society at http://www.uspto.gov/cgi-bin/exitconf/internet_exitconf.pl?target=www.les.org for online information. For further information, please send us an email at bambi@bfwpc.com or call us toll free at 1-888-388-9614.

Last Modified: April 7th, 2010