INTELLECTUAL PROPERTY

Patents

Patents are intellectual property rights that protect inventions and discoveries. Unlike copyrights and trademarks, patent rights do NOT come into existence the moment you create the invention or make the discovery. The owner of the invention and discovery must apply for a patent for their invention or discovery in jurisdictions where the owner wants to protect it. While patent laws vary between jurisdictions, in order to be granted a patent, the invention and discovery must be new and not obvious in view of what was already known in the public at the time of the application.

Time is of the essence when considering whether to protect an invention or discovery with a patent, because as soon as you disclose your invention or discovery to the public, you immediately lose patent rights in some jurisdictions and will lose your patent rights in all jurisdictions in a short period of time.

WHAT IS A PATENT?

A patent is a government-granted monopoly, which gives the patent owner the right to exclude others from using the patented invention during the life of the patent in exchange for the inventor disclosing to the public, via the patent application, a written description of the invention in sufficient detail that a person of ordinary skill in the art would be able to practice the invention upon reading the description. The description needs to include the best mode of practicing the invention at the time you file the application.

WHAT IS AN INVENTION?

An invention is an idea that has been reduced to practice, either actually (i.e., has been built) or constructively (has not been built, but described in sufficient detail to allow a person skilled in the art to practice the invention without undue experimentation).

WHAT TYPES OF INVENTIONS CAN BE PATENTED?

A patent may be granted for any “new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof” (35 U.S.C. 101).

SHOULD I PATENT MY INVENTION?

The answer depends on many factors, such as the economic value of your invention, how easy will it be for competitors to copy your invention, etc. If your invention has economic value and will be easy for your competitors to copy, then the answer may be Yes.

WHEN SHOULD I FILE A PATENT APPLICATION?

You should file a patent application before you disclose your invention to the public. If you disclose your invention to the public before you file a patent application, you may lose all of your rights to obtain a patent anywhere in the world depending upon the type of disclosure.

HOW DO I PROTECT MY INVENTION BY A PATENT IN THE US?

To obtain a patent, the inventor/applicant must file a patent application with the Unites States Patent and Trademark Office (“USPTO”). US patents provide nationwide protection for a patented invention.

SHOULD I FILE MY OWN PATENT APPLICATION?

Almost never, only if you are incredibly comfortable with patent law and the requirements of patent application, as the drafting of the application will affect your rights in your invention. If you are not well versed in patent law and specifically patent application drafting, then it is probably worth the money to have a professional file the application.

CAN I OBTAIN A US STATE PATENT?

No, in the US, patents are exclusively granted by the federal government, but only protect your patented invention in the United States.

HOW LONG DOES IT TAKE TO PATENT AN INVENTION?

It will often take 1-3 years before the examination of a US patent application will begin in the USPTO. Once the examination begins, the process can generally last from several weeks to several years. However, the actual time spent by an Examiner examining the application is measured in hours or days depending upon the length and subject matter of the application.

HOW MUCH DOES IT COST TO FILE A PATENT APPLICATION?

The cost to file a US patent application can vary dramatically depending upon the scope of the invention and whether an inventor is preparing, filing, and prosecuting the patent application by themselves or whether a patent attorney or agent is hired to prepare, file, and prosecute the patent application. The basic USPTO patent application fee for a non-provisional (“regular”) US patent application range from nearly $400 for micro-entities to nearly $1600 for large entities. Additional USPTO fees may apply at the time of filing depending upon the length of the application, the number and type of claims, etc. If a US patent attorney is hired to perform the work, the cost will depend upon the scope of the work to be performed. An experienced attorney will be able to guide you through the process and provide you with an estimate of the fees associated with the work to be completed.

CAN I FILE A US PATENT APPLICATION WITHOUT THE ASSISTANCE OF A US PATENT ATTORNEY OR AGENT?

While the answer is yes, patents are much more complex than trademarks and copyrights, and a poorly crafted application may prove insufficient to protect your invention and you may lose all patent rights. As you consider this important decision, you may want to take note that very few businesses file and prosecute patent applications without the assistance of one or a team of patent attorneys or agents.

DO I NEED TO PERFORM A PATENT SEARCH BEFORE I FILE A PATENT APPLICATION?

The answer is generally yes for several reasons. One significant reason is that you do not want to spend time and money pursuing a patent, if your invention is already known to the public.

DOES A US PATENT PROTECT MY INVENTION IN FOREIGN COUNTRIES?

No. Unfortunately, you must file patent applications in each country in which you desire patent protection.

HOW MUCH DOES IT COST TO PROTECT MY INVENTION WITH A PATENT IN FOREIGN COUNTRIES?

The cost to prepare, file, prosecute and maintain foreign patent applications and patents varies widely across the various countries. In nearly all countries, you should plan on spending thousands, if not tens of thousands, of US dollars in each country. Foreign patent protection is extremely expensive.

WHAT IS THE MOST EXPENSIVE FOREIGN JURISDICTION TO OBTAIN A PATENT?

While the most expensive jurisdiction to obtain a patent may vary depending upon the specific application, Europe is usually one of the most expensive jurisdictions.

CAN I BE SUED FOR USING MY INVENTION?

If someone else has already patented the invention that you are using, it is possible that you may be sued for infringing on the other person’s patent.

WHAT HAPPENS IF I GET SUED FOR USING MY INVENTION?

It is possible that you may have to stop using your invention and may have to pay damages for infringing on the other person’s patented invention.

CAN A RECIPE BE PATENTED?

The answer is Yes, but a recipe must be new and not obvious in view of other recipes and ingredients. As such, the recipe must not be obvious to a skilled cook, which is a fairly high standard considering the large number of recipes in existence and the known impact of incremental additions of ingredients.

DO MAINTENANCE FEES HAVE TO BE PAID ON A UTILITY PATENT?

Yes, maintenance fees are due at 3.5 years, 7.5 years, and 11.5 years from the issue/grant date of the patent. You can pay the maintenance fee for up to 6 months without a penalty and from 6 to 12 months from the maintenance fee due date with a penalty. If you do not pay the maintenance fees, your patent will expire.

WHERE CAN I FIND ADDITIONAL INFORMATION ABOUT FILING A US PATENT APPLICATION?

Information on US patents can found at the USPTO website at https://www.uspto.gov/patents-getting-started/general-information-concerning-patents.

WHAT IS A DESIGN PATENT?

Design patents are granted for new and not obvious ornamental designs. If the design feature that you desire to protect is functional, then a design patent can not be used to protect the feature. However, you can try to get a utility patent for the feature.