FAQs

This page answers some of the most frequently asked questions about what patents are, how you get them, and what you can do with them. If you still have questions after reviewing this page, please contact me.

What is a patent?

A patent is a right granted by the United States Patent and Trademark Office (USPTO) to an inventor.

The patent gives its owner (i.e., the inventor or the person or business to whom the inventor legally transfers the patent) the right to stop others from making, using, or selling an invention “claimed” in the patent in the United States for a limited period.

You can use this right to stop others in the United States by notifying infringers of your patent, or by filing a patent infringement lawsuit in federal court.

Patent Rights

A patent allows its owner to stop others from making, using, or selling an invention “claimed” in the patent in the United States for a limited time period.

What is eligible for patent protection?

You can patent any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement. Examples of patentable things include:

  • software
  • new products such as toys, appliances, tools, medical devices
  • mechanical devices
  • electronic devices
  • mobile apps
  • desktop apps
  • different use of an existing product
  • improvements to an existing product
  • new process for making an old product
  • pharmaceutical drugs
What are the requirements for obtaining a patent for my invention?

An invention must be useful, novel, not obvious, and described with enough detail that someone skilled in the relevant technical field can understand how to make and use it.

Novel

An invention is novel when the invention was not described in a patent, published patent application or other publication, and never in public use or on sale before you filed your application. The test of ‘novelty’ is assessed as at the date you file your patent application. For this reason, if you intend to disclose your product, process or invention to someone, it is critical that you have a confidentiality agreement signed beforehand.

Useful

An invention is useful if it does something.

Not obvious

An invention is not obvious when the new product, process or invention is not an obvious development of what has gone on before to a person in the applicable field.

Sufficient detail

An invention is described with sufficient detail when someone skilled in the relevant technical field can understand how to make and use the invention.


What types of inventions are not eligible for patent protection?

Some examples of what a patent cannot cover include:

  • an idea (see below FAQ)
  • surgical methods and procedures
  • scientific principles
  • laws of nature
  • a mathematical algorithm or formula without a specific usage of the formula
  • human beings
How do I know if I have developed my idea enough to turn it into an invention?

In short, if you can describe your idea with enough detail, you no longer have just an idea, what you have is an invention, or at least the makings of an invention.

Here is an example of an idea vs. an invention. Idea: I want to perfectly brown different types of food when cooking. Invention: A weight adjustable vented food press.

As you work on your idea, and continually add more details, you will, at some point, cross over the idea-invention boundary and land on the invention side. As you add details, you want to focus on describing “how” the idea works, and any aspects and alternatives associated with your idea. At some point, your idea becomes specific enough for it to be considered an invention, which can be protected and patented, assuming it is new and nonobvious.

Does a patent give me a right to make, use, or sell my product?

No. Someone else may have a patent that would prevent you from making, using, or selling your product, even though your product, or some aspect of your product, is patentable.

For example, if you have a patent on an improvement of product, and someone has a patent on a core feature for which your patent improves on, your patent will not provide you a defense if the owner of the patent on the core feature alleges infringement.

If, however, the owner wants to make, use, or sell your improvement, you may be able to work out a cross-license to avoid having to stop making, using, and selling your product. 

A provisional patent application (or provisional application or provisional) is a legal document filed at the United States Patent and Trademark Office (USPTO) that establishes a filing date.

A provisional application is an informal filing compared to a nonprovisional patent application. For example, a provisional application is not examined by the USPTO, informal drawings are acceptable, and you do not need to include formal claims, an inventor declaration or oath, or an invention disclosure statement.

Once filed, the date of filing may become the “priority date” (the effective filing date) for patent protection. Often, a provisional application is a means to get “patent pending” status on an invention up to 1 year before filing a nonprovisional application.

A provisional application is only useful to get the protection of its earlier filing date if a nonprovisional application is filed within that year.

I filed a provisional application. Now what?
What is a nonprovisional patent application (“full patent” application)?

A nonprovisional patent application (“full patent application,” “nonprovisional application,” “patent application” or “application”) is a set of papers that describe an invention that is filed at the USPTO to apply for a patent on the invention.

The papers include:

  • a specification
  • at least one claim
  • drawings, when necessary
  • an executed oath or declaration
  • appropriate filing, search, and examination fees
  • patent application transmittal form or transmittal letter
  • an application data sheet

Once filed, the date of filing may become the “priority date” (the effective filing date) for patent protection, and you can designate your product as “patent pending”.

When can I say my product is patent pending?

If you’ve filed a patent application that covers your product, you can use patent pending. Patent pending or “patent applied for” is the term used to describe a patent application (e.g., a provisional or nonprovisional patent application) that has been filed with the United States Patent and Trademark Office (USPTO) but has not issued as a patent.

Patent pending does not indicate the scope of protection, or whether a patent will even issue. In fact, patent pending carries no legal effect.

Marking a product or publication (e.g., marketing material) for the product notifies the public or potential infringers who would copy the invention that you have filed an application, have a filing date, and some aspect of the corresponding product may result in a patent.

Although using the term patent pending technically has no legal effect, using the term patent pending may:

Deter Competition

Deter competition during the pendency of the patent application as a competitor might not want to invest in producing and selling a product when there is a chance the competitor will need to shut down that production when a patent is granted

Convert Customers

Indicate to consumers that the product may be unique and can only be obtained from you

Spark Investment

Signal to investors that you may have a unique advantage since patent pending may be seen to validate your technology, increase legal barriers to entry for your competitors, and create brand differentiation which may lead to an increased probability of your success

What is a continuation patent application?

A continuation patent application (“continuation application”) is a new patent application that follows an earlier-filed patent application. The continuation application is used to pursue additional claims to an invention described in the earlier-filed patent application. The additional claims can be broader or a different scope from the claims in the earlier-filed patent application.

The continuation application uses the same specification as the earlier-filed patent application, is entitled to the priority date of the earlier-filed patent application, and must be filed while the earlier-filed patent application is pending.

Once a continuation application is filed, the earlier-filed patent application is often referred to as the “parent” application, and the successive continuing applications are referred to as child applications.

A patent application is allowed to claim one invention. In some cases, a patent examiner will determine that there are at least two different inventions claimed in a single application. In such a scenario, the examiner will require the application to be divided; one division will be elected to continue with the examination, called the “parent” application, and the other division withdrawn or canceled to be filed as a new patent application, referred to as a divisional patent application.

Usually, the descriptions of the two applications are similar if not identical, with the main difference between them being different claims.

Is it possible to expedite the patent prosecution process with Track One Prioritized Examination?

We can submit a request for prioritized examination when filing your patent application.

Prioritized examination is a procedure for expedited review of a patent application for an additional fee. The goal for prioritized examination is to provide a final disposition —an allowance/answer or rejection—for a patent application within twelve months of prioritized status being granted.

Generally, under a typical examination, the process of receiving an issued patent can take several years. For example, the average time before receiving a first office action is about 18 months and the average time to reach a final disposition for a patent application is about 29 months.

With Prioritized Examination, you pay a government fee ($4,000 for a large entity, $2,000 for a small entity, and $1,000 for a micro entity) to “skip” to the front of the line and can expect the United States Patent and Trademark (USPTO) to issue its first communication within 3-6 months, and a final disposition within 8-12 months of filing, which is significantly less than the average 29-month pendency period under the regular examination.

The USPTO fees required to be paid upon filing for prioritized examination are:

  • the Prioritized examination processing fee as set forth in 37 CFR 1.17(c),
  • the Prioritized examination processing fee (1830/2830/3830) set forth in 37 CFR 1.17(i)(1),
  • the basic filing fee set forth in 37 CFR 1.16(a),
  • the search fee as set forth in 37 CFR 1.16(k),
  • the examination fee as set forth in 37 CFR 1.16(o), and
  • the publication fee as set forth in 37 CFR 1.18(d).

(see complete USPTO fees here). The total cost for filing an application for which prioritized examination is being sought varies depending on the size of the entity. For example, the total fees amount to $5,860 for a large entity and $2,855 for a small entity for requesting prioritized examination for a nonprovisional patent.

Who should be named as an inventor on a provisional application?

An inventor is someone who contributes to the conception (not the realization) of the inventive subject matter in a provisional application. Someone who has only reduced the inventive subject matter to practice (without making any conceptual contribution), or has only identified the problem, should not be named as an inventor.

First Example
A founder provides all of the ideas for the inventive subject matter, and a consultant merely identifies problems to be solved. In this example, the consultant is not an inventor unless they also helped contribute to the conception of the ideas for the inventive subject matter.

Second Example
A founder provides all of the ideas for the inventive subject matter, and an employee/contractor prepares presentations that only include the ideas for the inventive subject matter. In this example, the provisional application should only list the founder as an inventor. 

Who should be named as an inventor on a nonprovisional application?

An inventor is someone who contributes to the conception (not the realization) of what is claimed as the invention. This can include anyone who suggested any of the steps or features listed in the claims. If you did not help conceive the invention, you are not an inventor. For example, the person who identified the problem is not an inventor unless that person also helped conceive the solution. Also, a person who reduced the invention to practice without contributing to the conception of what is claimed is not an inventor.

First Example
A first co-founder provides all of the ideas for an invention, and a second co-founder performs the steps in turning the ideas into a developed product. In this example, the patent application should only list the first co-founder as an inventor.

Second Example
Two founders conceived of the idea for an invention and hired employees and/or contractors to turn the idea into a developed product. In this example, the patent application should only list the two founders as inventors.

Third Example
An employee provides an idea for an invention, and her employer provides the resources to turn the idea into a developed product. In this example, the patent application should only list the employee as an inventor. It should be noted, however, that the employee may be obligated by an employment contract to assign her patent rights for the invention to her employer. In this instance, the employer may be considered an ‘assignee’ of the invention and will own all of the rights to the invention. The employee will still be listed as the inventor.