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Common Questions

1. Why should I get a Patent?
2. Are there different types of Patents?
3. When I should file my Patent Application?
4. What is a Disclosure Document and should I use one?
5. What is a Provisional Patent Application and should I use one?
6. What are the typical steps to getting a patent?
7. What is a typical timeline to getting a patent?
8. Should I get a Patent by myself, without the advice of a patent attorney?
9. Should I get a Patent in countries other than the United States?

Why should I get a Patent?

Patents give the patent owner (the inventor or the party to whom the inventor legally transfers patent rights) the right to exclude others from making, using or selling the invention for 17 or 20 years.

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Are there different types of Patents?

There are three different types of patent granted from the US Patent and Trademark Office:

• Utility Patents:  This type covers inventions that produce a utilitarian result.
• Design Patents:  This type of patent covers the unique, ornamental, or visible shape or design of a non-natural object.  
• Plant Patents:  This type covers asexually reproducible plants ... that use grafts and cuttings.

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When I should file my Patent Application?

Generally, if you decide to file an application, you will want to file it as soon as you can.  There are stiff penalties to not filing your application in a timely manner and many of the rights patent owners desire are dependant upon the date you file your application.  Some of the penalties of filing late can preclude you from ever getting a patent.  You should be diligent in turning your idea into a workable model and getting the correct Intellectual Property protection.

When you file your application might depend on when you are able to make a working model of your invention.  This is important because you will want to know exactly how to make your invention work so that it can be adequately described in your application.

In considering when you want to file your patent, you will also want to consider when you plan to talk with potential users of the invention.  Since this might qualify as a publication of the invention this could significantly effect your patent rights later.  A publication can prevent you from getting certain foreign patents and it also might dictate when you need to file a US Patent to ensure you can get a US Patent.

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What is the Disclosure Document Program and should I use it?

The US Patent and Trademark Office's Disclosure Document Program was created by the US Patent Office to provide credible evidence of the conception date and ownership of ideas. Through this program, inventors can document and submit to the Patent Office ideas and inventions. These disclosures are kept by the Patent Office for a period of time and can be used during this time in the event the conception date and ownership of an invention comes into question.  

It is important to note that this does not give an inventor patent protection but does help provide evidence to support when the inventor conceived the idea.  Inventors should only use a Disclosure Document as one step in their filing of a patent application.

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What is a Provisional Patent Application and should I use one?

A Provisional Patent Application (PPA) is a method created by the US Patent Office where an invention can be documented and submitted to the Patent Office and be used to create an earlier filing date than the later submitted Patent Application (non-provisional).

It is typically a good process to use if you are not in a position to file a Regular Patent Application.  This could be the case if you are interested in determining the marketability of your idea before you spend the funds to file a Regular Patent Application.

There are many important considerations to filing a PPA which might make it benefit or detrimental to you to file such an application.  We recommend a decision on whether or not to file a PPA be made only after a thorough understanding of the invention and the inventors situation.

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What are the typical steps to getting a patent?

• Document Conception of Invention.  Usually done in a properly completed notebook, this describes the first concept the inventor has about the invention.
• Document Testing and Reducing Invention to Practice.   There are several ways to reduce the invention to practice.  Usually done through modeling and testing, the steps, results and lessons learned should be recorded in the inventors notebook.  The best mode of this invention will be used to create your patent application. 
• Complete a Patent Search.  Although not always necessary, this step includes searching existing patents and ensuring that your idea is unique enough to be granted a patent.  This search is usually done by Professional Search Firms and will help define elements and terms that should be included in your application.
• File Patent Application.  The Patent Application is a specifically written document that includes the details and drawings describing your invention to the US Patent and Trademark Office.  The patent examiners use the application's descriptions and drawings, together with their knowledge of the technology and other patents to determine whether your invention warrants it's own patent.
• Respond to Patent Office Comments.  Termed Office Actions, these are formal questions from the patent examiners that are almost always asked with respect to your application.  Typically, there is one set of involved questions before a formal decision is made on whether your patent will issue.
• Pay Patent Issue Fee. When granted a patent, the inventor will be required to pay an issue fee.  This fee will cover the first few years of the patent.  During the years the patent is effective, the inventor will also be required to pay the ongoing maintenance fees or let their patent lapse.

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What is a typical timeline to getting a patent?

Generally, it can take up to three years between the time that a patent is applied for and the time a final determination is made on whether a patent should be issued.  The total length of time can depend on many factors to include the field of the invention and the work load of the US Patent and Trademark Office.

You should apply for a patent as soon as you can after you have conceived of the idea.   This means that once you have conceived the idea of your invention, you should be diligent in your moving forward with steps such as finding the best mode of your invention and filing of your application.  You should definitely apply within twelve months after you have published or made the invention available for sale.

Once the inventor is confident he has defined the best embodiment of his invention, the application should be prepared.  The process of drafting and submitting your application is very much dependant upon the preparedness of the inventor.  Generally, most applications can be drafted and submitted in several weeks.

After you have application submitted, you will need to wait for your official response from the Patent Office. Depending on the load of the Office at the time, this might take anywhere from 6 to 18 months ... or even longer. If you application is denied at this time, as it usually is, you will respond to the Patent Office objections and wait for a second review. This review usually takes about the same amount of time but is more likely to result in a positive answer than the first. There are some applications that are still denied after the second submission.  

Applications, or steps towards filing foreign applications should be made within 12 months of the filing of the first application.  Foreign applications are specific to each country and should be the subject of a detailed discussion with our office.

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Should I get a Patent by myself, without the advice of a patent attorney?

It is possible to go through the patent application process as a layman and get an approved Patent. Many of the steps to the application process are well defined and purely procedural. However, the strength of the resulting Patent, when challenged by the marketplace and your competitors, will rely on the specific wording in the your patent application.  The language in your application will define the bounds of your invention. An issued patent with incorrectly defined claims could provide a costly lesson. 

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Should I get a Patent in countries other than the United States?

This usually depends on the likelihood that you will need patent protection in foreign countries. Points to consider in this decision is whether you expect to have a market in these foreign locations and whether you can afford to apply and defend an action is these countries. Foreign patent applications are very costly and should only be applied for if you believe the benefits outweigh the costs.

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