SAN
DIEGO PATENT ATTORNEYS
PATENT FAQ
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What is a patent?
A patent is a right granted from the U.S. Government to exclude any other person or
company from the manufacture, use, sale or import of infringing technology.
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What is required to obtain a patent?
To get a patent, an inventor must prove that his or her
invention is new, useful &
nonobvious. An inventor must
provide an "enabling" description of the invention,
which means the inventor must thoroughly describe how the
invention works.
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What can be patented?
Patents can be obtained on articles of manufacture, designs, living organisms, plants,
chemical compositions, nonobvious methods, and on certain
business methods.
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Are different types of patents available?
Utility
patents are available for articles of manufacture and
protect function. These patents cover processes, machines,
manufactured items, and compositions of matter. The utility
patents last 20 years from the filing date.
Design
patents protect the overall appearance of an
invention and are for "ornamental" designs for articles of
manufacture. A design patent lasts 14 years from the date it
issues. There may be overlap between design patent
protection, copyright and trade dress protections.
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What credentials are required to be a Patent Attorney?
To practice as a U.S. "Patent Attorney," a practitioner must
have a scientific educational background and pass both a
federal and a state bar exam. In addition, to be Patent
Attorney, the practitioner must have a law degree from an
accredited law school, pass a state ethics examination,
maintain state continuing legal education training, and pass
federal FBI and state background checks.
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Is
a patent search necessary?
A patent search and patentability
opinion help an inventor decide whether it is worthwhile to
pursue a patent. Obtaining a patent can be expensive,
so it makes sense to invest the
time to discover whether the invention has been made before
and whether the scope of available protection is worthwhile.
The search should provide the patents located. Patent searches are best performed by patent
attorneys or agents who handle the matters directly,
although many searches are outsourced to firms who work near
the Patent Office. Beware of searchers who guaranty
results. There are more than 7,000,000 patents, so no search
can predict 100% accuracy, but a search should endeavor to
identify prior patents that would either prevent you from
getting a patent or narrow the scope of available
protection. A good search is also useful because it can help your patent
attorney in crafting claims, and describing why your
invention is an improvement over the prior technologies.
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When is it best to file a patent?
In the U.S., you have a 12-month grace period to
file a patent application after the invention is made
known in a publication, used in public, or offered for sale.
Not filing an application inside this grace period will
cause a loss of any rights to a patent. Despite the
U.S. grace period, most foreign countries do not have such grace periods. Therefore,
if foreign filings are expected, to preserve those rights, a
U.S. patent application should be filed prior to public use
or disclosure of the invention.
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Are patents public information while pending?
Patents are not public information, until 18 months
from the effective filing date, when the PTO publishes the applications. Patent applications used
to be confidential until they issued, however, the American
Inventors Protection Act of 1999 created an 18-month
publication rule for utility applications filed after
November 29, 2000. This change brought American Patent Law
in harmony with many other foreign patent laws that require publication. There is a way to opt out of the
publication of the invention, but only if the invention will
not be the subject of a foreign application
that requires publication 18 months after filing. Because of
publication, an applicant can now assert provisional rights
to obtain a reasonable royalty from a 3rd person after
publication, provided notice is given to the 3rd party, and
provided a patent actually issues from the application with
a substantially identical claim. Therefore, there is
actually a new remedy for inventors for infringement
occurring before
a patent actually issues.
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How are revenues generated from patents?
If you have a marketable invention and a marketable patent,
there are a variety of ways that a patent can be used to
generate revenues. As the exclusive holder of the
technology, a patent owner can exclusively manufacture, sell
and use the technology. Some patent holders sell products
directly to the public. Some patent holders manufacture
their patented product and send to others to handle sales
and distribution. Other patent holders may choose to license
the patent for a royalty, which may be per unit, or based on
a percentage. Some patent holders may sell the patent
application outright based on the patent's fair market
value.
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What
is involved after the patent is filed?
Once filed, the patent achieves "patent pending"
status. After a patent application is filed, your patent attorney
will receive an "office action" typically between
16-20 months after filing of the application. A patent examiner
assigned to your application issue this office action.
The office action will typically have rejections and/or
objections for reasons of either form or substance and it is
the job of the patent attorney to make appropriate arguments
or make amendments to get the broadest protection available
to the inventor. If the rejections and/or objections are
overcome, the inventor will receive a "Notice of Allowance"
on the
invention. After that time, the patent application will move
to issuance. The process can take years. The scope of protection for the patent is set
forth in the patent claims, which are interpreted by courts
according to how the claims are described in the file
history and patent description.
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How long does a patent last?
A utility patent lasts 20 years from the filing date. A
design patent lasts 14 years from issuance.
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Is
a provisional patent worthwhile?
Maybe. There are strategic reasons for using a provisional
application. However, caution should be used with this
device. Provisionals are surrounded by vast amounts of misinformation,
despite that they have been used for several years. A
provisional application is a device that lets an inventor
file a disclosure of an invention, without claims. The
provisional application is not evaluated for patentability,
it does not have claims ,
is not examined, and will not turn into a patent unless a
regular utility application is filed within 12 months of the
provisional filing date. The idea was originally to permit
inventors time to evaluate marketability of a patent before spending large
sums of money in the patent process. However, for
many individual inventors, some practitioners believe that
the application may inflate the cost of a patent and
unnecessarily delay the patent process. Contrary to common
myth, a provisional patent application should have a
thorough "enabling" description of the invention—the same
detailed description that is required for a regular patent
application. A common misconception is that a half-hearted
description will protect the
inventor's idea for a fraction of the cost. This is a major
misconception. Any description
that is not provided in the provisional application may not
have the benefit of the original provisional filing
date.
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What rights come with a disclosure filed with the Patent Office?
The PTO has a document disclosure program that
helps inventor's document dates of invention by filing
disclosure documents with the office. The PTO will accept and retain a disclosure for two years,
after which time it is destroyed, unless it is referred to
in a related patent application filed within the two-year
period. This can be used in disputes involving the dates of
invention. This aside, the device does not create any patent
rights, cannot be enforced like a patent, and does not
establish any form of a grace period. An inventor would make
a mistake in thinking this device could be a substitute for a patent application. Also, this device is useful, but
not necessary to prove a date of invention. There are other
good practices that inventors can follow to document dates
of inventions including keeping a detailed, dated notebook
with notarized dates of the concepts described.
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If someone helps me build my
invention are they an Inventor?
To be an
"inventor" for the PTO, a person must
contribute materially to at least one of the claims of the patent. A
person who merely helps an inventor reduce his or her
invention to practice does not become an inventor. This is a
factually sensitive area of patent law and causes many
disputes. To avoiding conflicts of this nature, it is
a good practice to use documents setting forth the
relationships of inventors to other parties. If an inventor
is going to hire an engineer or a technical expert to help build the invention without being an inventor, he or she
should have an attorney draft a contract setting
forth confidentiality clauses, as well as recitations that the services are merely to reduce the
invention to practice and not to invent. To the extent any
inventing should occur, precautionary assignments of
inventive rights may be considered. Have an attorney help
you with these important documents early.
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Are there any ways I can protect my
invention while the patent is pending?
Yes. Inventors can protect ideas while an application is
pending by using a nondisclosure
agreement.
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