A patent is a proprietary right granted by the United States federal government to an inventor who files a patent application with the United States Patent Office. Therefore, unlike copyright and trademark protection, patent protection will only exist upon the issuance of a patent, which requires you to file a patent application. You absolutely must file a patent application and have that application mature into an issued patent in order to obtain exclusive rights to your invention.
Furthermore, despite what you may have been told or read, keeping a detailed invention notebook, even if you mail a description of the invention to yourself, provides no exclusive rights. It has always been extremely important to keep detailed invention records in case you ever need to prove the particular date you invented. Notice the use of past tense in the previous sentence. On March 16, 2013, the United States moves to a first inventor to file system, which significantly changes U.S. patent law. For all intents and purposes inventors would do themselves well to assume that first inventor to file means file first!
That being said, there is a very limited grace period that is far more narrow than anything the U.S. has previously had. Inventors should not, in my opinion, rely on the grace period whatsoever — it is extraordinarily narrow. Nevertheless, it is conceivable that in some very limited circumstances it will be necessary to demonstrate that someone else derived your invention from you after you disclosed your invention. The only way to be able to hope to prove that will be with detailed records. Thus, record keeping should become more robust moving forward. You will not only need records that relate to how and when you arrived at the invention, but you will need records about how and when you disclosed your invention. Still, filing some kind of patent application as soon as possible will be the best move.
Types of Patent Applications
There are essentially three types of patent applications that can be filed. These are:
- Provisional Patent Application
- Non-provisional Patent Application
- International Patent Application
- Design Patent Application
- Plant Patent Application
With the exception of a provisional patent application, each of the other types of patent applications, if successful, will result in an issued patent that confers to the patent owner “the right to exclude others from making, using, offering for sale, or selling” the invention in the United States or importing the invention into the United States. It is important to note, however, that patents do not protect ideas, but rather protect inventions and methods that exhibit patentable subject matter. In the United States virtually everything can and does qualify as patentable subject matter. You can patent new and unique machines, devices, process of doing something, process of making something, living matter (such as a bio-engineered organism), business methods, software, compounds and much more, including improvements that relate to any of the aforementioned types of invention. Those things that cannot be patented include laws of nature, mathematical equations, physical phenomena, abstract ideas, slogans, tradenames or literary works. Literary works can be protected under copyright laws, and slogans or tradenames can be protected under trademark laws.
A provisional patent application, unlike the other patent applications mentioned above, will not actual mature into an issued patent, but rather acts as an economical way to start the patenting process. There are few formalities required for filing a provisional patent application, and the Patent Office fee is less. Furthermore, it acts as a placeholder in line for priority purposes and affords you the right to legally use the terms “patent pending” or “patent applied for.” Independent inventors should, therefore, strongly consider starting with a provisional patent application. Having said this, it is critical to understand that a poorly prepared provisional patent application will provide little or no benefit, and may actually harm the applicant by demonstrating that there was no invention at the time of filing. Provisional patent applications done properly are nothing but positive, but done hastily and/or incompletely and they provide no benefit. For more see The Benefits of Provisional Patent Applications.
If you are going to ultimately receive a patent, whether you start with a provisional patent application or not, you are going to need to file a nonprovisional patent application. Without knowing a good deal about an invention it is very difficult if not completely impossible to give a ballpark estimate as to likely costs associated with filing a nonprovisional patent application. Nevertheless, for more information about estimated costs please see Cost of Obtaining a Patent. Effective March 18, 2013, please also be aware that Patent Office fees will again rise. The government filing fee for a small entity will now be $800 for 20 patent claims. Professional drawings, which really need to be thought of as required, typically cost approximately $300 to $500 for a complete set. For more on patent drawings please see Patent Drawings: An Economical Way to Expand Your Disclosure and Patent Illustrations and Invention Drawings: What You Need. Of course, design patents are all about drawings. For more information on design patents, which protect the way something looks and not the way it functions, please see Design Patents: The Under Utilized and Overlooked Patent.
International patent applications are a separate, special matter and not typically filed by individuals or even truly small companies. There is no such thing as an “international patent.” Each country must review and issue a patent, which makes the international process quite costly. It does come with benefits, and if your small business or start-up has funding this is something you very well may want to consider. For more information on the international process please see:
- PCT Basics: Understanding the International Filing Process
- PCT Basics: Obtaining Patent Rights Around the World
- Patents World-Wide: Deciding Where to Pursue Patent Rights
- An Overview of the PCT International Patent Process
Likewise, plant patents are a highly specialized form of protection not appropriate for most. Title 35 United States Code, Section 161 which states:
Whoever invents or discovers and asexually reproduces any distinct and new variety of plant, including cultivated sports, mutants, hybrids, and newly found seedlings, other than a tuber propagated plant or a plant found in an uncultivated state, may obtain a patent therefor, subject to the conditions and requirements of title. (Amended September 3, 1954, 68 Stat. 1190).
Very few plant patents are issued every year. In fact, last week, on February 19, 2013, only 21 plant patents were granted. The highest numbered plant patent is currently PP 22,315. Compare this with the fact that we are approaching 8.4 million granted U.S. utility patents all-time and you see just how rare plant patents really are.
Obviously, this article is intended as an overview only, not comprehensive treatment. For more information on the patent application process please see our Overview of the Patent Process. If you are stuck at the idea stage in your invention I recommend reading Moving from Idea to Patent. If you are contemplating whether you want to work with an invention company to help procure patent protection and obtain marketing assistance, please first read The Truth About Invention Promotion Companies. For more information about drafting see drafting patent applications and patent claim drafting.
For those who would like to draft and file I have developed a unique process called the Invent & Patent System, which allows inventors to do much of their own work toward preparing and filing patent applications. You can then take the output of the system and file it as a provisional patent application, or you could have my firm take what you provide by way of answers and create either a provisional patent application or nonprovisional patent application and file it for you. So the system gives you the inventor the choice with respect to how much you want to do on your own. Since its inception in 2004, this system has helped independent inventors file tens of thousands of provisional patent applications.
Before you consider jumping straight into a patent application you really should consider a patent search. Without knowing what else is out there to be found it makes it impossible to define an invention in a way to place maximum attention on what is most likely new and patentable. For more information on searches please see:
- Patent Searches: A Great Opportunity to Focus on What is Unique
- Patent Searches: US Patent Search FAQs
- Patent Searching 101
- Patent Searching 102
Good luck, and happy inventing!
Join the Discussion
10 comments so far.
EGFebruary 25, 2013 12:08 pm
“File first before any public disclosure.”
Until we get a court(s) ruling on this so-called “grace period” provision that suggests otherwise, anon’s advice is the only safe way to go at this point.
Steve MFebruary 25, 2013 10:47 am
Thanks Stan; but my questions are directed not to RCE matters, but to the effect(s) — if any — of the implementation of the AIA “first inventor to file” provisions going into effect on March 17th.
Basically, are cons and/or cons-in-part protected from these new AIA provisions in view of their pre-3/16 parent filing dates?
I’m betting cons are; but cons-in-part may only be protected on the matter which is not new; i.e. the “con” part.
But I don’t know.
AnonFebruary 25, 2013 09:36 am
File first before any public disclosure.
Stan E. DeloFebruary 24, 2013 05:47 pm
Continuations either singular or in part would seem to just kick the can down the road a little further, but given the RCE problem, it might be the better way to go, depending upon which art unit or examiner you are saddled with. I am thinking huge disclosures with several independent claims, which might be able to be divided, to avoid the contested claims. If the examiner, in his infinite wisdom has to decide that it needs dividing, you would then be all set to slice and dice to suit his/her or the SPE’s suggestions.
Stan E. DeloFebruary 24, 2013 05:34 pm
I am all ears right about now. I haven’t really studied the language yet, but it seems to be much like an absolute type of model like the rest of the world has been using since who knows when. I have another new concept I would like to try to patent, but I can’t really afford to file provisionals every few months while I am trying to develop it into a real invention right about now. I am inclined to keep everything very confidential until I can afford to pay for a very comprehensive NDA. Somewhat fatalistic I suppose, but what other options do I have?
Steve MFebruary 24, 2013 05:21 pm
Anyone know if any of this matters with cons filed post-3/16 . . . on patents/apps filed pre-3/16?
Same question(s) with cons-in-part.
AnonFebruary 24, 2013 05:05 pm
In my humble opinion, a lot of the “not understanding” is actually “not wanting.”
The razor thin grace period is actually very, very easy to understand.
Stan E. DeloFebruary 24, 2013 12:45 pm
It makes me feel a little better about not being able to understand the new version of the *grace period* when very accomplished patent attorneys like you and Gene are also trying to figure out the language of the AIA as regards the grace period! Fortunately I filed my wind turbine NPA in mid 2011, as I could sort of see this whole thing actually being passed by Congress and becoming the law of the land. I heard of a study about an earlier version of *patent reform* that suggested that it might cost patent practitioners on the order of about 10 billion dollars to adapt to all of the changes. Sweeping patent reform indeed!
Gene QuinnFebruary 24, 2013 11:58 am
I’ve been spending a lot of time with AIA 102 since the Federal Register notices came out. Getting ready the new materials for the Patent Bar exam and trying to understand it enough to have something worth writing for IPWatchdog.
It seems to me that the AIA 102 is a lot more simple at its core. This is the “no patent for you” Act it seems to me. Filing early and often absolutely has to be the new strategy. So much is now prior art that never was.
I personally don’t think the courts will rely on legislative history like the PTO did, but what is the PTO to do when the language used is different than we are accustomed to in the industry?
EGFebruary 24, 2013 06:46 am
“Inventors should not, in my opinion, rely on the grace period whatsoever.”
Given the current problematic interpretation of this new “grace period” provision, especially in view of the newly issued exam guidelines by the USPTO that give a very narrow interpretation to the meaning of “subject matter” in new AIA 102(b)(1-2), very sage advice. Until we get the courts to interpret what this nebulous “grace period” provision means, which will likely take years, it’s like playing Russian Roulette to rely upon this provision for any solace. My how hate the Abominable Inane Act!