Frequently Asked Questions – Patents

What is a Utility Patent?

A patent is a legal document that provides the owner with a legal monopoly over the invention claimed in the patent.  In particular, it provides the patent owner with the right to prevent others from making, using, selling, offering to sell, or importing the invention.  A patent owner can sell their rights in the invention, or grant permission (via a patent license) to others to make or use the invention.  Once a patent expires, the legal monopoly ends, and others are free to make, use, or sell the invention without infringing the patent.

What is the Difference Between a Utility Patent and a Design Patent?

A utility patent protects how something works or is used.  A utility patent can be used to protect the functional aspects of articles of manufacture, processes, machines, or compositions of matter.  Design patents, on the other hand, cover the aesthetic aspects of particular products, user interfaces, computer icons, etc.  For example, a particular design patent might cover the unique shape of a new juice bottle or running shoe, or the overall appearance of an icon that is used for a new iPhone app.

What is a Provisional Patent Application?

A provisional utility patent application is an informal, temporary placeholder patent filing that provides a less formal way to establish an early effective filing date for an invention.  The government filing fees for a provisional patent filing are significantly less than those associated with filing a full non-provisional utility patent application.

A provisional patent application provides a twelve-month period in which an applicant can file a corresponding non-provisional utility patent application or any foreign versions of their patent application.  Any corresponding non-provisional patent applications that claim priority back to a provisional filing are treated by the patent office as if they were filed on the earlier effective filing date of their corresponding provisional patent application.

Provisional patent applications do not get examined by the Patent Office, so they cannot, on their own, result in an issued patent.

How Long Does a Patent Last?

After they are granted, non-provisional utility patents are generally valid for up to twenty (20) years from their effective filing date (not including the filing date of any provisional applications).  In order to remain in effect for the full twenty (20) year period, the patent owner must pay maintenance fees to the Patent Office.  These maintenance must be paid 3.5 years, 7.5 years, and 11.5 years after the issuance of the patent.  If the maintenance fees are not paid on time, the patent will expire early.

As noted above, the time of pendency of a provisional patent application does not count against the term of a corresponding non-provisional utility patent application.

Design patents are valid for fifteen (15) years from the date of grant.  Unlike utility patents, design patents do not require payment of maintenance fees.

Why is an Early Patent Application Filing Date Important?

The United States uses a modified “first inventor to file” system.  That means that between two inventors who had not previously disclosed their invention before filing, the patent office will grant a patent on a new invention to the one that filed their patent application first.

The filing date of a patent application is important because it establishes the priority date for your invention.  When examining your patent application to determine whether your invention is new and non-obvious, the Patent Office will generally be limited to looking at ‘prior art’ that was publicly available prior to your priority date.

Can I Enforce my U.S. Patent in Other Countries?

A granted United Sates Patent can only be enforced in the United States. Patent rights are territorial – a patent will only protect your invention in the specific territory that it was issue for.  If you need patent protection in other countries, you will need to file a separate patent application in each of the territories that you would like to obtain protection in (this may include certain blocks of countries, such as Europe or Eurasia).

Do I Need to File a Patent Application Before I Start Using My Invention?

Because an invention must be novel (new) in order secure patent protection for it, using your invention or publishing details about it prior to filing a patent application can potentially prevent you from obtaining a patent for it in the U.S. or abroad.

Although some countries, including the United States, may provide a grace period for securing a valid patent even after a public disclosure of the invention by the inventor, it is best to secure the services of a licensed patent attorney prior to publicizing your invention or offering the invention for sale.

What Happens After I File a Patent Application?

After a patent application is filed, a patent examiner will review the application and conduct a prior art search.  This generally means that the patent examiner will search for publicly available information that was published before your effective filing date to determine whether your invention is new and non-obvious in light of known technology.

The patent examiner will then issue an official correspondence (an “office action”) either rejecting or allowing your patent application.  If the patent examiner initially rejects your patent application (as is the case with most patent applications), there will be an opportunity to ‘negotiate’ with the patent examiner to convince them that your invention is patentable.  There can be several rounds of such negotiations before your patent is ultimately allowed, or you elect to stop pursuing the application.

How Long Does it Take to Obtain a Patent?

The average time from filing a non-provisional patent application to patent issuance is about twenty four (24) months in the United States.

However, the U.S. Patent Office offers a Prioritized Patent Examination Program (Track One) for an additional filing fee.  Under this program, it’s possible to obtain an issued non-provisional patent as quickly as 4-6 months after filing.

What are the Benefits of the U.S. Patent Office’s Prioritized Patent Examination Program (Track ONE)?

The U.S. Patent Office’s Track ONE program was set up with a goal of reaching a final disposition (allowance or abandonment) of a patent application within twelve months.  This is about twice as fast as a regular patent filing.  Under this program, patents are often issued between four and seven months after the expedited application is filed.

The allowance rates of patent applications filed using the Track ONE program are also higher than for regular applications (85% of expedited “Track 1” U.S. patent filings are allowed versus about 70% for regular, non-expedited patent applications).

The U.S. charges an additional fee of $1,680 for a small entity (organizations with under 500 employees) or $4,200 for a large entity to process patents under its prioritized patent examination program.  This additional government fee often pays for itself through savings in attorneys’ fees over the life of the patent.

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