This page is always being updated – so check back often. If you have a general-interest question that you would like to see answered here, send it to me. If I can answer your question in a non-confidential way, I might post an answer here.
What is a patentable invention? In the United States, a patentable inventions is “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” 35 U.S.C. § 101. An invention does not need to be technologically sophisticated to be patentable. To the contrary, an invention might be a simple innovation.
Can I patent an improvement? The United States patent law makes clear that patentable inventions also include improvements to already existing technologies. Although your invention may implement existing technologies, the particular arrangement and/or use of these technologies may be entitled to patent protection.
What else can I patent? Patentable inventions are not limited to mechanical devices. Methods or processes are often overlooked as innovations that may also be subject to patent protection. You can take a look for yourself at no charge at the many patents applied for and issued by the U.S. Patent and Trademark Office on their website at www.uspto.gov. This site also has a wealth of other information related to patents.
Do I need to build my invention before I can apply for a patent? You may also be thinking about that idea you have for an improved testing device, but you don’t have the resources to build and test the invention. Another common misperception is that the invention has to be built and tested prior to filing for patent protection. However, the invention does not have to be “reduced to practice” prior to filing a patent application with the U.S. Patent Office. In fact, many patents issue every year for inventions that have never been built (and may never be built). Instead, it is only required that the patent application describe the invention in sufficient detail so as to “enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his [or her] invention.” 35 U.S.C. § 112.
Why not just maintain my invention as proprietary (a trade secret)? There are advantages and disadvantages to both forms of protection. Generally, inventions that are not readily reverse-engineered may be kept as trade secrets. For example, the formula for your favorite soda is probably a trade secret. Of course there are a number of precautions and security measures that the owner of a trade secret must take to maintain secrecy of the invention. If the invention becomes known by others, the owner may lose some or all of their trade secret protection.
What is a patent? In exchange for disclosing your invention to the public (describing it in the patent application), the government may grantsthe inventor a limited-term monopoly for their invention. An issued patent is a property right and carries with it the exclusive right to make, use, offer for sale, and sell the patented invention in the United States for a limited time. 35 U.S.C. § 271.
What are the advantages to seeking patent protection for my invention? Having a patent does not guarantee that you will be able to market your invention. But a patented invention or even a patent application filed with the U.S. Patent Office for your invention may be a valuable asset to you or your business. Even if you don’t have the resources or the desire to market the invention yourself, you may be able to assign or license the rights in your invention to investors or businesses that do have the resources to market your invention.
What if I want to keep my patent? If you decide to retain the rights in your invention and exclude others from practicing it, an issued patent may give you a competitive advantage in the marketplace. Patent ownership may also add to the value of your business. A strong patent portfolio may be influential to potential investors, prospective partners or joint ventures, or during sale of the business. In addition, patent ownership may put you or your business in a stronger position during negotiations with other patent owners for permission to use their patents.
Can’t I do a patent search on my own? You are certainly welcome to do your own search. In fact, I encourage it if you have the time and knowledge – as a starting point. But then of course I recommend the full attorney search and opinion to be thorough. You can search the Patent Office database at uspto.gov and on Google at patents.google.com. And don’t forget to search Amazon and other places that might sell a similar product. The real value in the patent attorney search I offer isn’t in the database search (although having done this for about 20 years now, I may be better able to locate relevant references). The real value is having a patent attorney evaluate the references.
What is the value of having your law firm conduct the patent search for my invention? The value is two-fold. 1) I am able to evaluate the references I find to determine whether they might pose a problem under Section 102 and/or 103 of the Patent Law. Having about 20 years experience gives me a certain insight into how a patent office examiner may interpret a reference so that I can advise you whether it may pose an issue or not. 2) I provide a patent attorney opinion letter, which you can show to potential investors/licensees to show your due diligence prior to filing the patent application.
Why should I file a provisional patent application and not just file the full utility patent application? Prepare/filing the full utility patent application is where the big cost comes in (over $5,000) Of course at my law firm this fee is inclusive of all attorney/paralegal time including reporting all PTO communications up to and including the first Office Action, and professional draftsman drawings. This is one of the reasons I recommend starting with the provisional application, so that hopefully you have some market data to make that decision whether proceeding with the full utility patent application will be worthwhile, and better yet, hopefully you have some sales/revenue and/or investor money.
The answers provided here are intended only as general information and do not provide any specific legal advice or form an attorney-client relationship. You should not take any action based on the information here. Please seek the advice of an attorney to discuss the facts of your particular situation. For more information about Trenner Law Firm please visit www.trennerlaw.com.