How to Make Money From Your Invention (Chapter 3, Part 1) - Types of Protection
How do you protect your invention? Typically when you believe that you have made an invention, you can consider filing for a patent or you can use the invention as a “trade secret”.
Without protection, you cannot prevent others from utilizing your invention. Obtaining proper protection is critical if you want to exploit your discovery.
A patent is a grant from the government to an inventor, giving an exclusive right to make, use, sell, offer for sale and import a patented invention. This right is derived from the US Constitution and is aimed at promoting the progress of science and useful arts.
There are three types of patents recognized by the latest Patent Act. These are the utility, plant and design patents.
1a. Types of Patents
A utility patent may be granted for any new and useful process, machine, manufacture or composition of matter or any new and useful improvement thereof. A composition of matter includes inventions such as a new chemical, drug, life form or similar product.
To be granted a utility patent, the invention must be new or novel, useful and non-obvious. The patent application must also adequately teach those of ordinary skill in the relevant field how to make and use the invention. Most of the inventions that we will be considering will fit into this category.
A design patent is issued for inventions of new, original and ornamental designs for an article of manufacture.
The key words are new and original, meaning that the design has never appeared in public and was made independently of any existing design.
A plant patent involves the discovery of any new and distinct asexually reproduced plant. Asexually reproduced plants are those that are propagated by means other than seeds, such as grafting and the rooting of cuttings.
An issued patent, by the USPTO or any other national patent office, protects the invention, which is described by the “claims” section. The claims are listed at the end of the patent. In a utility patent, the owner is granted the right to exclude others from making, using or selling or importing the invention in the country of issue. This does not necessarily give you the right to practice the invention. A complete due diligence of current in-force patents is always necessary to insure that an inventor will not infringe patents owned by others.
A patent is granted for a fixed period of time. Utility and plant patents grant the owner the right to exclude others for a period of twenty years from the original date of filing the application. Design patents protect the owner for fourteen years from the date of issuance.
1b. Patent Applications
The first step in obtaining a patent is preparing and filing the application. The application describes the invention with sufficient detail to teach those of ordinary skill in the technology field of interest how to make and use the invention. Inventors typically work with a registered patent agent or attorney in submitting an appropriate application to the patent office.
The patent application is examined by the patent office to determine if it meets statutory requirements. The first examination by the patent office will typically not occur until at least about 18 months after the initial application is filed. The examination process may continue for one or more years after the first examination.
• the invention was previously patented • the invention was described in a printed publication • the invention was in public use • the invention was on saleThe last point, known as the “on-sale bar”, is very important. Almost any commercial sales activity, no matter how small, is enough to stop patentability. Distribution of a prototype, even at no charge, could negate the patent, if it was done to solicit future sales. The message is, to be acutely aware of the patent application timing and your efforts to develop your invention.
Date of Invention
Another important consideration for the inventor concerns the date the invention was made. If two unrelated inventors come up with the same invention at about the same time, the owner of the patent will be determined in the rest of the world by which inventor is the first to file its patent application. However, in the United States, at least for the time being, the general rule is the ‘first to invent’ wins. An act of invention occurs when the inventor(s) first conceive of the invention. The conception of the invention must be corroborated. Therefore, it is critical that the inventor establishes the earliest possible date of discovery.
Corroboration requires that someone other than the inventor witness conception of the invention. This requirement may be satisfied by documentation of the invention through laboratory notebook record keeping or an invention disclosure form. Both documents should be signed and dated by the inventor as well as the witness. The witness testimonial should indicate that he or she has read and understood the description.
Applications made to the USPTO are typically accompanied by a disclosure of all material prior art known to the inventor and may contain the results of a prior art search. There is a requirement owed by the inventor and all of those involved in the prosecution of the application to disclose all known prior art that could or would be considered relevant by an Examiner in determining whether to allow or deny any claim in the application. Although a prior art search is not required by the USPTO, if one was completed early in the “homework” part of the innovation process, the results should be considered for submission to the USPTO as it can certainly assist in the patent prosecution.
We have emphasized the internet as the approach to prior art searching. However, this may not uncover all the information in the public domain. Hand searching within patent libraries or the USPTO is also recommended. One of the most difficult areas to search are public presentations, typically by academics or other research oriented individuals. You should review the meeting agendas of conferences in relevant areas to determine if any could be considered prior art. Follow up with those that seem to be important.
A patent attorney or agent will prepare the patent application for filing with the USPTO with your assistance. This may take anywhere from 1-6 months depending on the complexity and newness of the invention.
Applications for foreign filings have to be done within a year from the U.S. filing date to get the benefit of the U.S. filing date.
Until November 29, 2000, all utility patent applications were confidential until the patent was issued. A revision of our patent laws now requires that all patent applications must be published 18 months after the earliest filing date. The inventor can request that the application be published earlier. This may be beneficial if the invention has been licensed since royalties can start at the application publication date if certain other conditions are met. Publication will not be required if the inventor does not intend to apply for a patent in a foreign country.
Typical patenting fees range widely depending on the invention and the amount of ‘due diligence’ required for the set of application documents. Examples of fees are:
• Legal fees in the range of $5,000 to $15,000 for the preparation and filing and patent application documents.
• Other fees for “Office Actions” or further prosecution of the application could be additional.
• Document drawings to show the critical aspects of the invention, especially product oriented devices, could run around $100 per sheet of drawings [these must conform to specific requirements of the USPTO].
• Filing fees range from $750 to around $1,500 with a 50% discount for small entities. A specific listing of fees can be obtained at the USPTO’s internet site [www.uspto.gov].
• Issue fees and post issuance maintenance fees are due at issuance, as well as 3.5 years, 7 years, and 11.5 years after issuance to keep the resultant patent rights in force. The fees are currently, $1,330, $910, $2,090 and $3,220 respectively with 50% discounts available to small entities.
For example, an inventor that publishes a journal article anywhere in the world that describes his invention and then later files a patent application within one year of publication, may be entitled to a patent in the United States. However, the inventor has lost an opportunity to obtain a valid patent in all European countries.
Accordingly, it is highly advisable to file a patent application before any disclosure of an invention including presentations at technical society meetings or other forums.
1c. Foreign Filings
Almost all countries have some form of patent protection. However, there is no “world patent”. An inventor must apply for a patent in each individual country if protection in that country is desired. Most individuals, seeking foreign patent protection, file their applications under the Patent Cooperation Treaty (PCT) which provides certain benefits.
A PCT application preserves the right to eventually file nationally in over 150 PCT member countries. At the latest, the national phase applications can be delayed for up to 30 months from the first filing of the application through the PCT system. This is often desirable because of the tremendous expense associated with filing and prosecuting applications in numerous Countries. PCT applications typically are published within 18 months.
Foreign patent application costs can vary in size but typically are more expensive than U.S. filings and a PCT filing can cost approximately $7,000. For individual countries, costs run similar to that of the U.S. but translation costs can add substantially to the charges incurred.
Clearly, the decision to file in foreign countries will depend on the scope of the invention, the potential use of the invention within the global community, and specific country opportunities, e.g. manufacturing operations, identifiable regional markets, etc. If you are a small business or independent inventor, you should only seek patent coverage in a foreign country if you believe you will sell the product in that country. Of course, if you plan to license the technology, the licensee may have broader plans than you have. In this case, it would be wise to begin discussions with potential licensees before critical dates for foreign filings have been reached.
The issuances of foreign patents also will have the attendant maintenance fee costs. Many entities attempt to defray the costs of the maintenance fees by having licensees in these countries or regions, pick up that as part of any license agreement.
1d. Provisional Application for a Patent
Inventors may begin the application process with a “provisional patent application”. Provisional applications are not examined, do not publish, automatically become abandoned after one year, and do not count against the 20 year from filing patent term.
They are often used to establish a last minute priority date before publication, or provide priority filings in a rapidly developing field that are later relied upon in a regular non-provisional filing. Should this occur one should consult with their patent attorney or agent in deciding whether or not the filing of a provisional patent application is appropriate.
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This information is presented for the general education of independent inventors by the Invention Patenting Group. The Invention Patenting Group makes no warranty, express or implied, or assumes any legal liability or responsibility for the accuracy, completeness, or usefulness of any information, apparatus, product, or process disclosed herein, or represents that its use would not infringe privately owned rights. Reference herein to any specific commercial product, process or service by trade name, trademark, manufacturer or otherwise, does not necessarily constitute or imply its endorsement, recommendation, or favoring by the Invention Patenting Group.