Scott R. Cleere, LLM

Protecting Your Intellectual Capital TM
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About Patents
 
Q:  What is a patent?
A:  A patent is a government granted right to exclude others from making, using, selling, or importing an invention without the permission of the patent holder.  In the United States, patents are issued only by the United States Patent & Trademark Office ("USPTO").  A patent does not grant the patent holder the right to do anything because a patented invention may infringe the rights of another patent holder. 
 
There are three types of patents:
1)  Utility Patents.  A utility patent is the most common type of patent and may be issued for any new and useful process, machine, article of manufacture, or composition of matter, and any new and useful improvement thereof.
 
2)  Plant Patents.  A plant patent may be issued to anyone who invents or discovers and asexually reproduces any distinct and new variety of plants. 
 
3)  Design Patents.  Design patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture.
These classes are not always mutually exclusive.  For example, a new variety of plant may be protectable with a utility patent whether or not it is eligible for plant patent protection.  Also, an article of manufacture may have functional elements that are eligible for utility patent protection and other ornamental features that are eligible for design patent protection.
 
 
Q:  What can be patented?
A:  Almost anything made by human labor may be patentable.  Utility patent protection is available for any new and useful process, machine, article of manufacture, or composition of matter, and any new and useful improvement thereof.  However, naturally occurring substances, scientific principles, and algorithms are not patentable in and of themselves.  For example, a plant extract is not patentable, but a method of extracting it or of using it may be patentable.  Likewise, Einstein's famous equation, E = mc2, is not patentable, but a product based on the application of a scientific prinicple may be patentable.  Although algorithms are ostensibly denied patent protection, software is eligible for patent protection. 
 
 
Q:  Is my invention patentable?
A:  To be patenable, an invention must be new, useful, and not obvious.  Each of these terms has special meaning in the patent law.
 
The term “new” in this context refers generally to the idea that an invention must contain something that was unknown or never done before.  If the invention has been described in a printed publication anywhere in the world, or if it was known or used by others in this country before the date that the applicant made the invention, a patent cannot be obtained.  If the invention has been described in a printed publication anywhere, or has been in public use or on sale in this country more than one year before the date on which an application for patent is filed, a patent cannot be obtained.  It doesn't matter when the invention was made, or whether the printed publication or public use was by the inventor or by someone else entirely.  The inventor must file on or before the date of public use or disclosure, however, in order to preserve patent rights in many foreign countries. 
 
The term “useful” in this connection refers to the condition that the subject matter has a useful purpose and also includes operativeness, that is, a machine which will not operate to perform the intended purpose would not be called useful, and therefore would not be granted a patent. 
 
Even if the subject matter sought to be patented is not exactly shown by the prior art, and involves one or more differences over the most nearly similar thing already known, a patent may still be refused if the differences would be obvious. The subject matter sought to be patented must be sufficiently different from what has been used or described before that it may be said to be nonobvious to a person having ordinary skill in the area of technology related to the invention. For example, the substitution of one material or color for another, or changes in size, are ordinarily not patentable.
 
 
Q:  How do I obtain a patent?
A:  Generally, the first step in seeking patent protection for your invention is filing a patent application with the USPTO.  A patent application should include a complete description of the invention in enough detail for a person of skill in the invention's field to be able to make or use the invention. It should also include one or more claims that define precisely what the applicant believes the invention to be. The claims are the most important part of the patent, becuase they define the scope of the patentee's rights, and the most difficult to draft.
 
 
Q:  Is my U.S. patent enforceable in other countries?
A:  U.S. patents only apply to actions undertaken in the United States and its territories.  Patented articles manufactured overseas cannot be imported into the U.S., but they can be imported and sold anywhere else unless patent protection is obtained in those countries.  There are also limits on the ability to export some components of patented inventions for assembly overseas.
 
There are patent systems in nearly all countries.  Foreign patent protection can be applied for in a few ways.  Most U.S. applicants seek foreign protection under the Paris Convention or the Patent Cooperation Treaty ("PCT").
 
Under the Paris Convention, a U.S. applicant can file patent applications in any other member country within twelve months of their U.S. filing date and have that application treated as if filed in that country on the date of the U.S. application.
 
Under the PCT, a U.S. applicant must file an international application within twelve months of their U.S. filing date. Eighteen months later, the international application is forwarded to each treaty member country chosen by the applicant and is examined by each country as if originally filed in that country on the date of the U.S. application.
 
Virtually every country in the industrialized world is a party to one or both of these treaties.  If patent protection is desired in a country that is not a member of such a treaty, an application should be filed there on the same day as the U.S. application.
 
 
Q:  How much does a patent application cost?
A:  The cost of obtaining a patent can vary greatly depending on the complexity of the invention and the quality of the invention disclosure document.  Typically, the cost of preparing and filing a patent application varies between $3,000 and $8,000.  Provisional patent applications typically cost less to prepare than full applications, but the cost savings are lost once the time comes to file a full application (no later than twelve months year after the filing date of the provisional).  You can help control your costs by setting a realistic budget with a patent professional and by providing detailed and accurate descriptions and drawings of your invention.
 
USPTO fees are also a significant part of the cost of obtaining a patent, but are reduced in most cases where the applicant is a small entity, such as an independent inventor or small business. 
 
Copyright © 2007 Scott R. Cleere 

 

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