Patent Attorney Jay R.Yablon, Schenectady, NY
Applying for a Patent: A Dozen Frequently Asked Questions
© 2015 Jay R. Yablon
During the 20+ years I have been helping my clients obtain US and foreign patents, there are about a dozen recurring questions which I always hear from new clients just setting out to find a patent attorney. Often, much of the time spent in my first meeting with a new client is devoted to answering these questions. So to save you time and money at your first meeting with me, or any other patent attorney whom you may choose to represent you, I have provided answers below to these most frequently asked questions.
Click on the question to go to the answer.
In order to obtain a patent for your idea, that idea must first be “reduced to practice.” But a patent application itself counts as a reduction to practice, even without your first building or programming anything. So, no, you do not need to make anything first. Rather, your patent application must describe your idea in enough detail that a “person of ordinary skill in the art” can use your description to build or program your idea. So, for example, if a computer is needed to implement your idea and you are not a programmer, as long as a person who is a programmer can read your patent application and put your idea into practice by applying “ordinary” programming skill (as opposed to extraordinary creative effort), your patent application will meet the legal requirement for reducing your idea to practice. Similarly for an idea in any other field: you just need to communicate your idea so that someone who has ordinary skill in the relevant engineering field(s) can pick up what you have written and run with it. Of course, you might wish to build a prototype for other reasons, such as getting somebody interested enough to invest in your invention, or to help you communicate your idea to your patent lawyer. But you are not required to make anything at all before you file a patent application. It is your patent attorney's job to make certain that your patent application meets the legal standards of reducing your idea to practice.
. Even more of a concern than somebody stealing your idea is what are known as “statutory bars.” Under US Law, from the moment you engage in a public use, sale, or disclosure of you invention you have one year to file a patent application for your invention. If you fail to do so within one year, you are deemed to have waived forever your right to obtain a patent on that invention and dedicated it to the general public for anybody to make, use and sell as they wish, i.e., you are “barred” by operation of law from ever gaining a patent. Having your idea stolen then becomes irrelevant because once a bar is raised it is no longer your proprietary intellectual property. By granting you one year to file an application, the US is unusually generous. In virtually all other countries, you get zero time after a public use, sale or disclosure. If you do not file your application before your public use, sale, or disclosure, then you can never do so again: you are barred by statute. A private meeting with a patent attorney is a “public” in the sense of the statutory bars, and your attorney is required to keep your disclosure private as an attorney-client privileged communication. Disclosing to your spouse or close family member is likewise not “public,” but do make sure they understand not to spread it around. However, for any disclosure other than to closely-trusted people, you need to be careful. A good rule of thumb is this: if a prospective disclosure of your invention makes your “theft meter” nervous, you probably should not do it until after you have filed a patent application, not because of the worry about someone stealing your idea, but because of the chance you are taking of raising a statutory bar. And once you have filed a patent application, make sure that any public disclosure you do make does not go beyond the scope of what was disclosed in that application. You can also supplement this prudent approach with some types of “non-disclosure agreement” which your patent attorney should be able to advise you about.
All you need to do is file one patent application in one country such as the United States. Once you do so, there is an international priority system that allows you to get “first dibs” in other countries to avoid the statutory bars and also to get priority against other inventors who file later than your first application, so long as you do certain additional filings within required time periods which are usually 12 months or 30 months depending on circumstance. Your patent attorney can advise you further about this.
. Many people ask this question, and it reflects some very widespread points of confusion. First, let's be clear about the very basics: A patent is a right to exclude others from a) making, b) using, c) selling, d) advertising and e) importing your invention in relation to the country for which the patent is granted (US or otherwise). It is not a right for you to make, use or sell, etc. anything. The question of whether you can make, use or sell your invention depends upon whether somebody else owns a patent which gives them the right to exclude you. This means that when you obtain a patent, you will then have the right to exclude others from practicing the invention defined by the “claims” in your patent. (See Q&A11 for more about “claims.”) But as to your right to make and sell you invention, that depends on the patents held by other people. When patent attorneys talk about this dichotomy, they use the terms “patentability” to discuss whether you will be able to gain a patent which will give you the right to exclude others, and they use the term “infringement” to discuss whether somebody else has a patent that gives them the right to exclude you. Generally, a search of “prior art” (what has been invented before) is advisable to help you gain a handle on both patentability (do you have a good chance of obtaining a strong patent?) and infringement (do you risk stepping on the toes of somebody else with a patent for similar subject matter if you make, use, sell the invention?). You should confer with your patent attorney as to the types of searches (see Q&A12) most suited to your situation. Keep in mind that prior art never expires when it comes to patentability: if there is public documentation that somebody going back to the beginning of time has practiced your invention, this will generally bar you from getting a patent. But patents do expire after 17 or 20 years, and can expire even sooner if the owner has not paid periodic maintenance fees. Once a patent has expired, it passes into the public domain, and so you can no longer infringe that patent even though it will remain prior art forever as against patentability.
. That is the purpose of a “license and royalty agreement.” While a patent gives you a “right to exclude others” (see Q&A4), unless your plan is to be the sole manufacturer and distributor of your invention, it is not your goal to exclude others. The goal is to have others pay you money in return for your agreeing not to exclude them. If you are in negotiations with somebody who is considering licensing you invention, your patent attorney should be able to advise you about how to approach these agreements and what types of favorable legal and business terms you should be aiming for.
. While blanket statements usually need to be made with care, most “invention marketing” companies charge thousands of dollars, yet have terrible track records to the point of never having made a dime off of any invention for anybody except themselves. One patent attorney in North Dakota has put together an excellent website about this at http://inventorfraud.com/.
If you are going to use one of these companies, you need to be very, very careful. But here is a better way to think about this: If you have invented something and are thinking of applying for a patent, it is important for you to appreciate that you are really beginning two undertakings. First: you need to protect your invention from being stolen by others. That is what a patent is for, and that is what you are hiring a patent lawyer to advise you about. Second: you want to make money with your invention. So make no mistake: if you are serious, your invention is truly a second business that you – as the inventor – will be taking on. Patent attorneys deal with inventors all the time and hear many stories of successes and failure in the marketplace, and these days, we rarely encounter a new inventor who is unfamiliar with “Shark Tank.” But the fundamental role of your patent attorney is to protect your invention from theft and to make sure that any business licensing deals you enter into have legal and economic terms that operate to your benefit, not to be your marketing director. You should think of yourself as the CEO of a new business founded to make money with your invention. Your patent attorney is one of the people you will engage for this, and his or her role will be to help you gain the advantage of a time-limited, legalized, government-backed, exclusive monopoly (see Q&A9) for your invention, and to give you legal advice and guidance acting as your attorney about business deals you are considering making with your invention. But there are other experts and other types of expertise – including marketing and sales expertise – which you will also need to make the overall endeavor succeed. The type of people and expertise that you involve with your endeavor fundamentally revolves around the strategy you settle upon to start and grow this business.
. That depends. A provisional application, which can often be filed more quickly and at a lower cost than a regular application, will give you a one year priority as to anything that is properly disclosed in that application. But this is the key: the provisional application must contain a good and complete disclosure of your invention, and that cannot be done carelessly. A provisional application is not a panacea or a magic bullet. The biggest danger is that inventors working without guidance from a patent attorney may file a provisional application which has very poor or limited value as a patent disclosure, while deceiving themselves into thinking that that are well protected. So if you are considering a “quick” provisional filing, you should at least get some advice from a patent attorney as to the adequacy of your disclosure to give you the priority you think it is giving you. And thereafter, if you do file, anything you publicly disclose to others during your one year should not go beyond the scope of what was disclosed in your provisional application (this “stay within the scope” rule also applies to regular applications, see Q&A2). The other place where a provisional application does make a lot of sense, is if you are doing research that led to a new invention and are about the publish a technical paper that discloses the invention. To avoid problems with statutory bars (see Q&A2), not to mention theft and knock offs, it is a good idea to first file a copy of that contemplated technical paper with the US Patent Office as a provisional application before it gets published, so that you have a priority you can use thereafter to avoid statutory bar issues, and also to give you the earlier dibs of that priority. And again, after a provisional or even a regular filing, you should not publicly disclose anything outside the scope of what was already disclosed in your patent application filing. If you do come up with invention improvements after filing, there are ways to lock those down in later patent applications, and you should work with your patent attorney to figure out the best way to do this in your particular situation.
. The moment you file a patent application, you have a “patent pending,” by definition. Typically, it takes two, three or even four years before the patent office will officially grant you an issued patent, i.e., the pendency period is often from two to four years. You only gain the “right to exclude others” (see Q&A2) from practicing your invention once the patent is issued. However, it is often advisable at the time of filing to request “pre-grant / early publication,” which publication typically comes out about four months after your filing date. By agreeing to have your invention publicly disclosed early while you application is still pending, you gain the right to retroactively collect damages for any infringements that occur on or after your publication date even while you patent is pending, which right can be exercised once your patent is issued. There are limitations on this, the most important being that you can only collect damages for claims that were published and then eventually were granted, i.e., you cannot enforce a published claim that never ended up being allowed or an allowed claim that was never published. The chief benefit of early publication is that you can start to disclose your invention during your pendency period and get a jump on starting the business of selling your invention, such that recipients of your disclosure will know that they are taking a risk if they act in bad faith and make, use and sell what you disclosed to them without agreeing to pay you for that. You should confer with your patent attorney as to the best ways to approach disclosing your invention after your patent application has been filed, for the purpose of securing investors, manufacturers, etc.
. Article I, section 8, clause 8 of the United States Constitution empowers the congress “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” This is the foundation of copyright and patent protection in the US, and in the modern era this basic system for protecting intellectual property has been adopted in most other countries as well. This system fundamentally involves a “deal” or “trade” between an inventor or author and the government, whereby in exchange for disclosing your invention or writing to promote progress in the world, the government grants you an “exclusive” legal monopoly in your creations for a limited time period which in the case of a patent is 20 years from the date that you first file your regular patent application (provisional applications, see Q&A7, do not eat into this time, but neither do they get you on the Patent Office's calendar for patent examination). There are benchmarks in place for how long the patent office is supposed to take to grant a patent following the date of application. If the patent office delays beyond these benchmarks, then your patent term will be extended beyond the 20 years to make up for lost time.
. Unless you have invented something brand new, like the first diode or transistor, this describes the very vast majority patents which are issued to inventors. Besides you having to describe your invention in your patent application so that it can be practiced by a “person of ordinary skill” (see Q&A1), your invention also needs to substantively satisfy a two-pronged legal test of being “novel” and “non-obvious” in relation to public domain “prior art.” In non-legal terms, “novel” means that there is no prior art documenting that somebody before has done precisely what you propose to do, and “non-obvious” means that even if you are the first to have this exact idea, your idea is just an “obvious” variation on things that others have done before. Most patented inventions do involve novel and inventive improvements to devices and methods which already exist in the world, and / or novel and inventive combinations of known elements. The patent office is required to assess the novelty and nonobviousness of your “invention as a whole,” and not just pick and choose and mix and match based on the invention's individual components or a patent examiner's 20-20 hindsight. As you may expect, much of the work a patent attorney does in getting the patent office to grant a patent centers around making a convincing case that your invention is not obvious and that the patent examiner is overreaching with hindsight and is misinterpreting your invention, the prior art, or both.
. It is your patent attorney's job to brainstorm with you to figure out ways in which people might try to get around your patent, and to plug those loopholes. Basically, any patent application has three main parts: a) a written description of your invention, b) drawings to illustrate your invention and c) claims which define the scope of your invention. The claims are critical: although they are technically a statement staking a claim to your invention – as in the word “mine” that comes very easily to any child first learning to talk – I urge my clients to think of them as a statement of what other people are not allowed to do. This is an important difference between how inventors typically think and how a good patent attorney is required to think to get you as bulletproof a patent as is possible: Inventors spend a great deal of time thinking about the invention they plan to make or have made. Your patent attorney should help you also think of your invention in terms of what you think other people might try to do that you do not want them to do. Viewed in this way, it should be apparent that your statement of what other people are prohibited from doing needs to be as broad as possible, and will not necessarily coincide with your statement of the specific, preferred ways in which you might plan to implement your invention, because as the saying goes, there is “more than one way to skin a cat.” You may have in mind one or two ways to skin; but your goal is to shut down all the ways that other people may try to skin the same cat. Although humans have great capacity for cleverness and slipping through loopholes, the more you and your patent lawyer work through what other people should be stopped from doing, the more difficult it will become for someone to get away with infringing your eventual patent.
. From a legal standpoint, absolutely not. When you file a patent application, the patent office will itself do a search of “prior art,” which includes US patent documents as well as documents from elsewhere in the world. That is part of what you pay them for in your application filing fees. From a business view, however, a search is usually very advisable. Why? I have found in my twenty years of patent law practice that when somebody ask me to do a search, at least half the time I uncover prior art which calls into question whether filing a patent application would be time and money well spent for the client. If there is bad news out there in the prior art, it is better to know that sooner before investing a lot of time and money, rather than later. Even before you contact a patent attorney, do some Google type searches yourself to be as confident as you can be that what you have in mind has not already been done before, and bring that information to your first meeting with your attorney. Additionally, patent applications written with some good knowledge of the prior art are generally stronger applications. It becomes possible to communicate to the patent office an awareness of the prior art and embed arguments up front as to why your invention is novel and nonobvious in relation to the prior art. Doing your homework is always an advantage, and having the patent office know that you did your homework and that you still believe you have something patentable and can articulate why, always gives you a head start toward a getting a patent allowed, and having that allowed patent be a stronger patent than it would otherwise be.
I am based in Schenectady, New York, which is part of the Capital District of New York State. I serve clients throughout New York State and the surrounding areas, including Albany, Schenectady, Niskayuna, Troy, Colonie, Latham, Glens Falls, Clifton Park, Saratoga, Guilderland, Cohoes, Watervliet, East Greenbush, Ballston, Amsterdam, Catskill, South Glens Falls, Gloversville, Hudson, Hudson Falls, Kinderhook, Lake George, Kingston, Malta, Machanicville, Pittsfield, Plattsburgh, Poughkeepsie, Queensbury, Rensselaer, Rome, Rotterdam, Saranac Lake, Stillwater, Syracuse, and in all areas of Albany County, Columbia County, Essex County, Franklin County, Fulton County, Greene County, Hamilton County, Herkimer County, Montgomery County, Rensselaer County, Saratoga County, Schenectady County, Schoharie County, Warren County and Washington County, New York.