INVENTOR FAQ Introduction The following list of Frequently Asked Questions (FAQ) has been compiled based upon questions that are commonly asked by inventors considering patenting and protecting an invention. An attempt was made to keep the answers simple and concise, yet complete. Several readings may be required for a clear and complete understanding of the subject matter being presented. If you have any questions regarding this FAQ, any of our Web site content, or patents in general, please don't hesitate to contact our office. We offer a FREE no-obligation consultation to discuss your invention and its patentability. If geographically possible, we will also gladly meet with you. As our federal registration requires total confidentiality in all client related matters, inventors can be confident that IP, and all employees and associates, will hold all information related to your invention in the strictest confidence. 1. What is a United States Patent? A patent is a grant from the U.S. government to a person (or a company) that enables the owner to prevent others from making, using, and selling a patented invention. As such, if an invention has commercial value, a quality patent that properly 'claims' the invention can be of significant value. It may be noted that the term 'patent' most often actually means a utility patent, which protects the structure, function, and or composition of an invention. United States patents are awarded to the true and original inventors if it is determined that the invention is useful, novel/new, and not an obvious variation or combination of a known equivalent. Accordingly, an inventor files a utility patent application with the United States Patent and Trademark Office (USPTO) to find out if a patent will be awarded. If international protection is desired, a PCT type of application may be filed. 2. What kind of inventions can be patented? To be eligible to receive a patent, an invention must fall into one or more statutory classes that are established by laws that may be collectively termed the 'Patent Statutes'. The statutory classes are a machine, a process or method, an article of manufacture, a composition of matter, or an improvement thereof. In addition to fitting into one or more of these categories, your invention must have some kind of utility and not be obvious. If your invention meets these criteria, then you have the right to file a patent application and try to secure protection for your invention. 3. Where do I get a Patent Application? Many individuals not familiar with patents and the patenting process assume a patent application is a government form that is filled out to apply for a patent. Unfortunately, it's not that simple. A patent application is a document that is carefully written to describe an invention in full and complete detail. Essentially, a patent application is a custom document, not unlike a term paper or dissertation, that provides a broad, complete, and enabling description of your invention. A good patent application will always attempt to cover equivalents to your invention, sometimes termed 'work arounds.' The description should follow a somewhat formal format, which has developed over many years. Often drawings are required, and must conform to established patent office standards. 4. Who can apply for a Patent? In the Unites States a patent application is always filed in the name of the actual inventor or inventors. The application may be filed by the true inventors or, if the invention is assigned or resulted from efforts associated with an employment agreement, then a company (or legal entity that paid for your services) may actually file the application. 5. How much does a Patent cost? The entire patenting process can be somewhat expensive. The costs can vary significantly with the complexity of your invention, the field to which the invention relates, and certainly the particular patent practitioner you use. However, the patenting process almost always begins with a Search of the field to which the invention relates. In official patent terms, this is referred to as a Preliminary Patentability Search. A quality search will typically cost $500 to $800. They can cost as little as $49 to $150, but this is not a good place to attempt to save money! Some practitioners have been known to conduct a low cost cursory search, hoping not to find any prior patents so that they can write and charge you for an application - even if you have little chance of getting a patent. A quality search should always provide the inventor with the search results (i.e., a copy of each patent found), an analysis of information found during the search, and a patentability opinion. The patentability opinion, which is usually in the form of a letter from your patent agent or attorney, provides an assessment and recommendation as to whether patent protection may be obtained for your invention. Inventors should always study, preferably via several readings, each and every reference uncovered by the search. A proper search can be a great aid in determining if you should file an application, without committing to the expense of filing a full and complete patent application. If a decision is made to file a patent application, an additional expenditure of from $3000 to $8000 can be expected. These figures represent the fees to write and prepare a patent application for a fairly simple invention. An application for a complicated invention can cost $10K and up to fully prepare. In addition, a separate fee of about $400 to $800 (at minimum) is required by the Patent Office to file and process the application. International PCT applications are quite expensive to file and prosecute, especially if protection is desired in many countries. As a result, many independent inventors only focus on obtaining patent protection in the United States. Hint: Our advice is to shop around and don't be afraid to ask plenty of questions. Ask your practitioner "What are his/her areas of expertise?" Will he write all portions of the application? Will you be able to review the figures and possibly the claims before the entire application is written? Remember, if a practitioner is not willing to be patient and talk with you before being paid, there is little chance he/she will be willing to do so after receiving your money! 6. Can I write my own Patent Application? An inventor is allowed to represent himself/herself pro se (on his/her own behalf) in the Patent and Trademark Office. However, to do so is not advisable. Due to the extensive rules and regulations, along with the required content and traditional phraseology, patent applications are usually written by registered professional patent agents and attorneys. These are individuals who specialize in writing and prosecuting patent applications. They have a clear understanding of the patent laws and government regulations that must be followed to have an application accepted for processing and examination within the Patent Office. In addition, patent agents and attorneys are well acquainted with the "language" of patents. They are able to apply in an attempt to fully describe your invention, thereby hoping to maximize the level of patent protection you actually obtain. The patent laws are specific about the 'descriptive content' that is required in an application to have it approved as a valid United States patent. 7. Should I hire an Agent or an Attorney to write my application? This is a decision faced by all inventors. For the purposes of conducting a search and writing an application, both the Patent Agents and Patent Attorneys are typically well qualified. Each is recognized and registered to practice before the United States Patent and Trademark Office in all matters related to filing, prosecuting and securing a patent. These matters can be associated with domestic applications, interference actions, appeals within the PTO, and the filing of international PCT applications. All patent practitioners, agents and attorneys alike, must have at least one 4-year engineering or applied science degree. In addition, both agents and attorneys must pass an examination given annually by the federal government called 'The Agents Exam' or 'The Patent Bar'. The exam is 6 hours in length and assesses an applicants grasp of the patent laws, PTO procedure, and the ability to analyze an invention and draft a set of claims. Agents and attorneys alike, must pass the exam to be admitted to practice before the PTO. What then is the difference between agents and attorneys? There are several notable differences that may be considered. First, a patent attorney can litigate legal matters related to patent applications in the federal and civil courts. For example, a patent attorney can sue for you if another is infringing your patent. However, such litigations are rare and often very expensive. In addition, the best qualified attorneys available to handle patent related legal matters, generally specialize in appeals and court litigation. They very often do not write and file a substantial number of applications, and if they do, they will often charge very significant fees for their services. Agents on the other hand are not attorneys, and therefore are prohibited from acting in court related and or court prosecuted legal matters. As such, Agents generally specialize in searches, and writing and prosecuting patent applications in the U.S. Patent Office. Another item which typically distinguishes a patent agent from a patent attorney is the fees they respectively charge. As a general rule attorneys are more expensive than agents. However, the question of whether to use a patent agent or an attorney to prepare and file your patent application may very well be less important than his or her actual technical background and writing ability - which often varies significantly from one practitioner to another. Each practitioner usually has one or more areas of expertise. Thus, it is advisable to talk with a perspective practitioner, possibly at length, to determine how well he or she grasps the basic operation or significance of your invention. It is always prudent to shop around. You should always talk to several practitioners before making a decision. 8. Do I really need to have a Search conducted? One is well advised to always insist that a preliminary patentability search be conducted to locate prior art inventions before you commit to the expense of filing a patent application. This will also educate you about the field related to your invention, and may indicate improvements or modification that can be made to your invention and an associated patent application. In addition, having a search done will allow you an opportunity to assess the practitioners style and professionalism. Remember, a top quality patent application requires a great deal of thought and effort to properly prepare. A full understanding of the 'prior art' (e.g., inventions like yours that are already patented) is always beneficial. 9. How is a Patent Application written? A patent application must present required information in a somewhat standardized format, and must conclude with a set of special statements that define exactly what it is you regard as your invention. These special statements are called the Claims. They are a critical part of the patent application. The claims are said to define the boundaries of the protection secured by the patent. All inventors should carefully read (and re-read) the claims, possibly before the entire application is written, to be sure they fully describe your invention. This is very important. In the end, a patent application should be written carefully and in such a way so as to provide the inventor with the 'broadest' coverage possible, while not 'reading on' or overlapping upon other inventions. Well known legal scholars have stated, for the record, that they considered a patent application to be one of the most difficult legal documents to write. 10. Where does an Inventor start? If an inventor has Internet access, they may attempt to conduct a 'basic Internet search'. As indicated in our Internet Links section, several search engines are available that you can access to conduct a keyword type search. This is a good place to start. First, you will appreciate how difficult a full and complete search can be to conduct. Second, and possibly more importantly, you may find that your invention has been patented. If you do conduct a search, record the patent numbers of the closest inventions you find to yours and provide them to your patent practitioner as a starting point for a search conducted by a professional Searcher. 11. What are Invention Development Companies? It is generally recommended by known and knowledgeable inventors, and inventor associations, that so called 'Invention Development Companies' charge a great deal of money for the service you receive. Be very careful when dealing with such companies. See our Beware! web page for more information. [back to top]                                    ©Copyright 1999-2016   IslandPatent.Com