This page is always being updated – so check back often. If you have any Frequently Asked Questions about patents or 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. Some of these inventions may never be built. Instead, it is required that the patent application describe the invention in sufficient detail. The description should enable any person skilled in the art 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 grant the inventor a limited-term monopoly for their invention. An issued patent is a property right. It 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 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, 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. This can be done 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. Additionally, a strong patent portfolio may be influential to potential investors, prospective partners or joint ventures, or during the sale of the business. Patent ownership may also 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. 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 a law firm 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 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. This way, you hopefully have some market data to make that decision whether proceeding with the full utility patent application will be worthwhile. Better yet, you will hopefully have some sales/revenue and/or investor money.
When Should Inventors file a patent application?
Inventors often ask “when should I file a patent application for my invention?” or “can I wait to file a patent application for my invention?” The short answer is – as soon as possible. Waiting to file a patent application risks losing all rights to the invention.
In 2013, the U.S. Patent Law changed from a “First-to-Invent” to a “First-to-File” system. Whoever files their patent application first will have rights to the invention. It does not matter who invented first. This means that someone else could exclude you from patenting your invention if they file a patent application even one day before you do. Therefore, a patent application should be filed as soon as possible. And a “Poor Man’s” patent application (where you mail a copy of your invention to yourself) has no legal effect. You must file an actual patent application at the U.S. Patent Office.
What is a Patent Search?
A patent search (also called an “invention search,” “patent pending search,” or “prior art search”) can help determine if the same or similar invention already exists and whether it may prevent the U.S. Patent Office from issuing a patent for an invention. Inventors are not required to search patents before filing a patent application. But Trenner Law will often recommend a prior art search. In some cases, the prior art search turns up references that are the same as, or so similar to the invention that it would be difficult or impossible to obtain a patent for an invention. If this is the case, and you decide not file a patent application, you just saved thousands of dollars!
Why file a Provisional Patent Application?
There are many reasons an inventor may want to file a provisional patent application. For example, a provisional patent application can be filed relatively quickly and inexpensively. So filing a provisional application may be a good idea to get a filing date and/or when on a budget.
Call or contact us today to find out if a provisional patent application is a smart idea to start protecting your invention.
Can I just file a regular patent application?
Yes, inventors can file a regular utility and/or design patent application without having to first do a prior art search or file a provisional patent application. Once the patent application is filed with the United States Patent and Trademark Office, inventors are entitled to mark an invention as “Patent Pending” or “Pat. Pend.” until the application issues as a patent or goes abandoned. This shows customers, competitors, and potential investors that you are serious about protecting your invention.
Can you file a patent on your own?
No. You can file as what is called a “pro-se” applicant – or “on behalf of yourself” without having to pass the patent bar exam. I just give this as an example of the complexity of the patenting process, and reason why individuals might want to consider hiring a patent agent or patent attorney to assist them.
What’s the difference between a patent agent and a patent attorney?
A patent agent is someone who has a technical education and has passed the patent bar exam, but has not gone to law school and is not registered as an attorney. Patent agents can prepare and file and prosecute patent applications with the US Patent Office. But patent agents cannot give any legal advice.
A patent attorney has the same qualifications as a patent agent, but has also gone to law school and is registered as an attorney. In addition to doing everything that a patent agent can do, patent attorneys can help with legal issues, such as assigning or licensing an invention, filing a trademark application, and infringement.
What is Patent Infringement?
Patent infringement is when someone else makes, uses, or sells someone else’s patented invention without a license to do so. If you are the patent owner, you can file a court action requesting the judge to order the infringer not to make, use, or sell your patented invention.
What are some of the risks of filing a patent application by yourself?
The patent application process is complicated. In order to be registered with the US Patent Office, you first need a college degree in a technical field like engineering. Then you have to pass an exam. People spend months studying to pass the exam, and some people don’t pass. There are so many laws, rules, and regulations, and you need a pretty good understanding of all of those in order to pass the patent bar exam.
How do I know if I should apply for a patent for my invention?
Since you can’t apply for a patent for something that already exists, it’s important to start with a prior art search. In order to analyze those search results, its best to consult a patent attorney. A patent attorney can explain how your invention may or may not be patentable so that you can decide if a patent application is worth the money.
How soon should I apply for a patent?
Inventors have one year to file a patent application from any publication, public use or disclosure, or sale or offer for sale of their invention. After that one-year period is up, your invention is considered public domain and is no longer eligible for patent protection. It is highly recommended that you at least file a provisional patent application, which can be prepared and filed by a patent attorney, as soon as possible. Filing a provisional patent application is a relatively quick and inexpensive process.
Is it expensive to hire a patent attorney?
Some patent attorneys can be expensive. Unfortunately, there is a misperception that high costs equate to high quality. At the Trenner Law Firm, this isn’t the case. We offer exceptional quality at a fair price. We offer most of our patent services at a flat-fee basis so that our clients know what they will be paying up front for a project. Mark Trenner has more than 10 years of experience helping clients’ protect their inventions with patents. He has worked with a variety of clients, from individuals to large corporations.
Should I hire a patent attorney?
It doesn’t take a patent attorney to file a patent application but having an attorney involved can be extremely beneficial. An attorney can help spot issues you may miss that may compromise the approval of the patent when being examined by the Patent Office Examiner. Not spotting these issues on time could prove to be a costly mistake and you could lose important right to your invention.
What if I don’t have time to come meet with you?
In addition to my traditional law office located in Denver, I have also provided you with an online option where everything can be handled over the phone and by e-mail. The benefit of the online law firm is that I am available to you by phone or e-mail outside of normal business hours. Not only does this offer more convenience you, the client, but the time saved means I can offer significant discounts through my online law firm.
What is a provisional patent application?
A provisional patent application is a patent application that describes your invention in words and optionally with drawings or pictures, and when filed with the United States Patent Office, receives a serial number and a filing date. On the same day that you file your provisional patent application with the United States Patent Office, you can mark your invention (brochures describing your invention, etc.) with the words “Patent Pending” (or “Pat. Pend.” for short).
Then what’s the difference between a provisional patent application and a regular patent application?
A provisional patent application is never examined by the U.S. Patent Office and automatically goes abandoned after one year from the filing date.
If a provisional patent application goes abandoned after only one year, why would I file one?
Your budget (or lack of a budget) is probably the number one reason to opt for filing a provisional patent application. In general, provisional patent applications cost significantly less than filing a regular patent application. There are no formal requirements for a provisional patent application, like there are for a regular patent application. So in general, it takes a patent attorney more time to prepare a regular patent application than it takes to prepare a basic provisional patent application. It’s the old adage that “Time Is Money.”
If you can’t afford to file a regular patent application just yet, but you don’t want to lose rights to your invention, consider filing a less expensive provisional patent application. Then when you have money from sales of your invention, or investors lined up, you can better afford to file a regular patent application.
Can I use a product already on the market as part of my own invention?
Inventors often call Denver-area patent attorney Mark Trenner and ask whether they can use a product already on the market as part of their own invention. There is nothing to prevent you from using an already existing product in your own invention, unless of course someone else has a patent for that product.
The vast majority of products on the market today are in the public domain. That is, these products are not protected by any patent rights, and once purchased, can be used for any legal purpose by the purchaser. This includes enhancing the product and making it better – and even patenting those improvements for yourself.
Even if a product on the market is protected by another patent, you may can still apply for a patent for any improvements to that product. The patent on the underlying product simply prevents you from making, using, or selling that product without permission (usually in the form of a payment under a license to the patent owner) of the patent holder. But the patent does not prevent you from applying for your own patent for the improvement. You’ll simply need to negotiate with the patent holder for the underlying product before you make, use, or sell your product if it is covered by another patent.
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.