You have a great idea. Is patenting the best way to protect it? How much do patents cost? How do you find out if your idea is patentable?
Registered Patent Agent
WebPatent.com
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You have a great idea. Is patenting the best way to protect it? How much do patents cost? How do you find out if your idea is patentable?
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Robert M. Hunter, Ph.D.
Registered Patent Agent WebPatent.com |
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Just like Lucy of Peanuts fame, I provide low-cost advice, too. Below are some answers to questions I am often asked by inventors. I hope these answers are helpful to you.
I have a great idea and I can afford to invest in protection of my invention. What should I do next?
How can I tell if my idea is new?
Why should I pay for a novelty search when the USPTO will perform one anyway during the examination of my regular U.S. or international patent application?
If I hire you, what would both of our responsibilities be?
How much would it cost to patent my invention in other countries?
I don't have enough money to enforce a patent. Does that eliminate patenting as an intellectual property protection technique for me?
How can I communicate with you via encrypted e-mail?
How can I sell my idea without incurring the expense of obtaining a patent?
I have a great idea and will give you (pick a number) percent of the money it produces. Are you interested?
I have a great idea but no money. What should I do?
Is there a way to document conception of my invention and diligence in reducing it to practice online?
Should I pay money to an invention promotion business?
Is there an easy way to tell how much my invention is worth?
Is there an easy way to find out the royalty rate I can charge for licensing my invention to a manufacturer?
I have invented a perpetual motion machine. It operates forever and never needs any energy input after it starts. Can I obtain a patent on it?
I want to patent an invention, but I do not know how to make it. Can I get a patent on an invention I wish existed?
Can I patent an improvement to an existing product?
I have an idea for a website. Do I need a patent or a copyright?
Can I patent a song, poem, slogan, idea, etc.?
I noticed on your Costs page that a design patent is much less expensive to obtain than a utility (technology) patent. Would a design patent provide as strong a protection of my idea as a utility patent?
If a person is only interested in U.S. patent, once he has filed the U.S. patent application does he still need confidentiality (non-disclosure) agreement before he shares his invention with outsiders? Does that answer change if he is planning to also file outside the U.S.?
How often can I refile a provisional patent application?
How can I remember to pay the maintenance fees on my issued patents?
Your job sounds interesting. How can I become a patent agent?
I see that you carry professional liability insurance. Where can I obtain such insurance?
What kind of services do you provide? Are they the same as a patent attorney's? Are your fees less than those of a patent attorney? What is the main advantage of hiring you?
As a registered patent agent, I provide the following services to my clients:
Both patent agents and patent attorneys must have a degree in science or engineering and pass the same Patent Bar exam. Both must also accept personal responsibility for their errors and omissions, and, hence, should carry professional liability insurance (as I do). In addition, a patent attorney must be admitted to a state bar. A patent agent can do everything a patent attorney can do except practice law, e.g., a patent agent cannot give a legal opinion as to whether infringment has occurred or whether an issued patent is valid, file or prosecute trademark applications, prepare contracts, represent a client in court, etc. When one of my clients needs such legal services, I refer him to one of the patent attorneys in which I have confidence.
My fees are about one third of those of a typical patent attorney with my level of education and experience. They are about one half of those of an inexperienced patent attorney, the kind of attorney to which new small business and individual inventor clients are often referred in a large law firm.
The main advantage I offer my clients is 20 years of experience at reasonable cost. I have supervised 16 research and product development projects (including software development and biotechnology projects) and have 30 patents in my own name, 18 of which have been licensed or sold--so I offer "real world" experience. I also have "hands-on" experience programming in C, Java, HTML and Perl languages and can, therefore, understand computer-related and e-commerce inventions. I am accessible via e-mail, telephone and fax and can react quickly. My website contains over 1,100 individual web pages to which I refer my clients in providing education, which is a big part of my job. Finally, I write well (and rapidly) and really enjoy the work.
I have a great idea and I can afford to invest in protection of my invention. What should I do next?
I recommend that all inventors first evaluate the commercial potential of their inventions and do a preliminary novelty search. You can find out how to accomplish a commercial potential evaluation and a preliminary novelty search on my website.
There are two ways to begin, provided you are convinced your invention is probably new and probably has commercial potential. Because patent applications are expensive to prepare, some inventors decide to have me coordinate a professional novelty search to find out what is "out there" as far as U.S. patents go. The cost is 1 to 4 hours of my time to make sure the searcher understands all the possibly patentable versions the invention and the searcher's fee, which ranges from $600-1,400 plus patent copying costs, depending of the complexity of the invention. This can take a month or so. Inventors are often very surprised by what a professional patent searcher can find.
In situations where achievement of "patent pending" status quickly because the field is evolving rapidly or a potential licensee is requiring that a patent application be filed before it will consider the invention, the inventor will hire me to prepare and file a provisional patent application. Filing of a provisional U.S. patent application puts your "foot in the door" of the U.S. Patent and Trademark Office (USPTO) and asserts your priority of invention (you think you invented it first) on an international basis. The cost varies from about $2,800 to over $4,400, again depending on the complexity of the invention.
Within 12 months of the provisional application filing date, a regular patent application (that explains how the invention differs from what went before and that contains sentence fragments called "claims" that define the legal bounds of the invention) must be filed. Negotitions with the USPTO Examiner over what is patentable occur over an 18 to 24+ period after the regular application is filed. The cost for preparing, filing, prosecuting and issue of the regular application on an invention can be from $3,800 to over $10,000, depending on the novelty and complexity of invention, how broadly you want it claimed (how much intellectual property you want to control) and the Examiner's reasonableness (or lack therof).
In some cases, it is appropriate to file a regular U.S. patent application or an international patent application first. In the long run, this can be a less expensive option because there are some costs involved in converting a provisional application into a regular or international application. This approach is a more risky because the inventor spends more money up front and does not use the 12-month pendancy period of the provisional application to improve (and assess the marketability of) his invention. Usually, this approach is most appropriate if someone is infringing your potential patent.
To assist you in either way, I first need to see an invention disclosure. A checklist for preparing an invention disclosure is given in the material linked to the What's Next button on my website.
How can I tell if my idea is new?
U.S. Patent and Trademark Office-free service; you must download a TIFF viewer to see and print full-page images
You can obtain software that allows you to download patents. Here are some relatively new products:
PatentMax-a search and download product; accessed via subscription; trial version can be downloaded
GetIPDL-a download only shareware product you can purchase; trial version can be downloaded
For guidance on how to perform a search, read the following document and newletter article. Expect to spend about three eight-hour days at it. Your greatest challenge will be overcoming denial--inventors generally hope they will not find their invention and, therefore, do not. A professional searcher, on the other hand, wants to find your invention, and often will, or something very close. For that reason, I strongly encourage inventors to have a professional novelty search performed, at the latest before a regular patent application is filed, and preferably before a provisional patent application is filed.
Why should I pay for a novelty search when the USPTO will perform one anyway during the examination of my regular U.S. or international patent application?
Isn't there a country song about the "Queen of the Nile" (pronounced "Queen of Denial")? If there is one thing that my decades of experience has taught me is that inventors prefer to exist in a state of denial about what others have already invented (the prior art). Inventors believe their ideas are the "best thing since sliced bread" and do not want reality to intrude on their dreams of riches and/or fame. The problem with this approach is that entering the patent process in a state of denial can be a very effective way to waste a lot of money, fast.
While it is true that the USPTO will perform a search for you, it is also true that an adequate patent application cannot be written without a knowledge of the state of the art. This is especially true when patent claims must be drafted (for inclusion in a regular patent application). I have worked for clients who decided not to pay for a professional novelty search, only to watch their patent application be "blown out of the water" by the findings of an Examiner's search. It is no fun for our side, let me tell you. It is especially painful to discover that a patentable invention exists, but that the application does not support claims that "carve" the invention (liminted in scope though it may be) out of the prior art.
It is almost always the case that an inventor cannot find prior art that renders his or her invention unpatentable (because he or she really does not want to be disappointed). It is also almost always the case that a professional novelty search reveals important differences between the prior art and the inventor's invention (what he or she really invented) and enables patentable claims to be written. Make it easy on yourself - have a professional novelty search performed as a first step.
If I hire you, what would both of our responsibilities be?
Your responsibilities are to teach your invention to me, to explain how it differs from others' solutions to the same problem, to review the documents I prepare, to sign and date the final versions of forms I prepare and to pay me for my services. Your first job is to prepare an invention disclosure, which is the starting point for all my work. Content and format guidelines for invention disclosures are linked to the What's Next button on my home page. I am available to answer any questions you have as you prepare the disclosure. If you are capable of preparing a well-written draft of a patent application and/or of preparing drawings of your invention to be used in the application, your costs can be reduced.
My responsibilities are to teach you the "rules of the game," to give you an estimate of how much each task will cost and to carry out any task you assign to me. For example, if you decide to have me coordinate a novelty search (highly recommended as a first step), my job is to review your invention disclosure for completeness, prepare a summary description of what I think your invention is, find a search firm with expertise in searching the field of the invention, retain and supervise the search firm and report the results to you. If you hire me to give you a patentability opinion, my job is to review the search results (read and understand each of the issued patents considered to be material to patentability of your invention) and communicate my opinion to you (normally in writing if it is positive, and verbally if it is negative).
If you hire me to prepare and file a patent application, my job is to write it up (or edit your draft version) and give you a copy for your review. After your review, I will incorporate your comments, ask you to sign and date one or more forms and file the application. I will inform you when the U.S. Patent and Trademark Office (USPTO) acknowledges receipt of the application, usually within a month of filing. Usually, it is possible to file patent applications with informal drawings (rough sketches), but before the patent is granted I will hire a patent drafter to formalize the drawings.
If you hire me to respond to a USPTO Office action (typically rejecting your claims), I will send you a copy for review and comment, prepare a draft response (often called an amendment) and file it. As you can see, the inventor and the patent practitioner must work together as a team (usually over an extended period) to maximize the value of the patent.
How much would it cost to patent my invention in other countries?
Obtaining and maintaining patent protection outside the U.S. can be very expensive. Foreign patents should only be sought if you are sure your invention has a large market in the countries of interest and the legal systems of the countries are sophisticated enough to support enforcement of your patent rights.
Remember that, if you wish to rely on a provisional patent application or a regular patent application to establish priority of invention in an international patent application, you must file an international patent application within 12 months of the filing date of the first such patent application. For example, if you rely on a provisional U.S. patent application to establish priority of invention in a regular U.S. patent application, you cannot rely on the regular application to establish priority of invention in an international application unless the regular patent application was also filed before the international patent application was filed and the regular patent application and the international patent application were both filed within 12 months of the filing date of the provisional patent application. This topic is discussed in my October, 2001 newsletter.
The cost of filing an international (PCT) application is made up primarily of patent office fees and is a function of the length of the application. The approximate cost of filing a typical international patent application is as follows (assuming provisional U.S. patent applications has been filed):
Request, paid when PCT application is filed (at the same time a regular U.S. application could have been filed, no later than 12 months after provisional filing date = priority date): $7,000 - 10,000
Demand (now optional), paid no later than 19 months after priority date: $3,000 - $4,000
Grand total estimate for PCT: $10,000 - 15,000
If a PCT application has been filed and prosecuted (a Request and a Demand have been filed), any national or regional (e.g., European) patent applications you want to file must be filed no later than 30 months after the priority date. If no PCT application has been filed or if the countries have not signed the PCT, the applications must be filed within 12 months of the priority date. The cost is about $10,000 per country on average from start to finish for most industrialized countries. If Asian language translations are required, costs can reach $15,000 per country. It can cost $5,000 - $16,000 just to to file in Japan and $7,000 - $15,000 just to file in the European Patent Office, depending on the length and complexity of the application.
During the prosecution of a foreign national patent application and during the term of the issued patent, annuities (annual maintenance fees) are due on an annual basis. These fees typically range from $200 to $500 per year and must often be paid in a foreign currency.
I don't have enough money to enforce a patent. Does that eliminate patenting as an intellectual property protection technique for me?
Not necessarily. While it is true that enforcing a patent can cost hundreds of thousands or even millions of dollars, there are ways to arrange for others to enforce (and defend) your patent.
One option is to convince an attorney with expertise in patent infringement litigation to take on the enforcement responsibility on a contingency fee basis (in which the attorney fights the battle "on his own nickel" and takes a share (35 to 50+ percent) of the recovery from the infringer if he wins the patent infringement lawsuit. A highly-respected attorney who does this is Joseph N. Hosteny. Of course, no attorney is going to take on a case in which he or she does not expect to secure an award that is many times his or her substantial investment in litigating the case. That is why patents are only appropriate for protecting valuable inventions.
Patent insurance is another option. I can't vouch for any particular firm, but here are some firms that reportedly sell such insurance:
Binks Insurance Brokers Limited
Emerald Worldwide
Hillers & Wagner Agency, Inc.
Intellectual Property Insurance Services Corporation
Intellectual Property Risk Management
Litigation Risk Management Inc.
Patent Enforcement and Royalties Ltd.
Let the buyer beware.
If the above options do not interest you, you can always attempt to bluff. Most infringers do not want to spend $1 million to defend a charge of patent infringment and are often willing to license an invention, if threatened in a letter written by a respected patent attorney (but don't try to write one yourself, because the wrong wording can trigger a successful lawsuit by the infringer resulting in a summary judgement against you). However, you can usually expect an attorney to charge several tens of thousands of dollars to analyze your patent and the infringing product in order to have a firm basis for a charge of patent infringement.
How can I communicate with you via encrypted e-mail?
Obtain a Digital ID and exchange it with me. Here is how to obtain and use one:
Supported E-Mail Applications scroll down to topic
Obtaining a Verisign Digital ID
Using a Verisign Digital ID
How can I sell my idea without incurring the expense of obtaining a patent?
Ideas are free for all to use unless you own a property right in the idea. Why should anyone give you money for something that you do not own? The only way I know for you to have something to sell is to put the idea in one of the "vessels" that govenments have created to convert it into an intellectual property. If your idea can be protected as a trade secret (a type of intellectual property) during its use, you may be able to get some company that would benefit from practicing your idea to pay you for it. The hard part is convincing the company to sign a confidentiality agreement before you disclose the idea to the company. If use of the idea would disclose the idea to the public and if public disclosure would destroy the value of the idea, you will have to find another "vessel." There are a variety of types of intellectual property, each of which is appropriate for certain kinds of ideas. I suggest you review those types of intellectual property to see if a less expensive option than a patent is appropriate. If you are stuck with the patent option, consider filing a provisional U.S. patent application, a kind of patent application that can costs less and asserts your priority of invention on an international basis for 12 months. During that 12 month period, you may be able to convince a potential licensee to pay the costs of obtaining a patent.
I have a great idea and will give you (pick a number) percent of the money it produces. Are you interested?
I appreciate your kind offer but, no, I am not interested. Lots of people have great ideas, as I am sure yours is, but only a few are diligent enough to make money from those ideas. Successful inventors work tirelessly learning how to "play the game," raising the money required, and developing better and better versions of their inventions. The most successful are unbelievably persistent (downright stubborn) and many have gone bankrupt at least once. Without someone taking on each invention as a second or third "full-time" job, it is not likely to succeed. I already have a full-time job that I really enjoy, so that person is not going to be me. If you are not ready to spend the next five to ten years of your life making your invention a success, I suggest you find another outlet for your creativity, because no one else can do it for you. How about forming a rock and roll band? I hear that approach will indeed produce "money for nothing" and "chicks for free." :-)
Seriously though, some invention promotion companies do invest in protection and commercialization of inventions on a contingency fee basis. Typically, such companies review thousands of inventions a year and select a few to invest in each year. You could try your luck with one of them.
I have a great idea but no money. What should I do?
Unfortunately, the adage "It takes money to make money" applies in the inventing business, too. You are much more likely to succeed in developing your invention into something that is valuable, if you invest time and money in it. Check out my article on Funding Your Idea for suggestions about where to obtain the money you will need. By investing some time, you can perform a preliminary novelty search on the Web. On this web site, you can also conduct preliminary evaluations of the commercial potential and patentability of your idea.
There are some things an inventor can do to preserve his/her rights until he/she can afford to protect them with a patent. In the U.S., patents are awarded to the "first to invent" (the first to "think up" an operable invention) as long as the inventor is diligent in reducing the invention to practice. So, an inventor can achieve some protection by documenting "conception" of the invention by preparing an invention disclosure and by having it read, discussed and understood by a non-inventor under an agreement of confidentiality. It is best to record information about each invention in a separate, bound notebook and have someone other than an inventor sign and date pages at regular intervals (and especially when a discovery or progress is made). See the material linked to the What's Next button on my website to see how to prepare an invention disclosure.
An invention disclosure can be filed as a provisional patent application by payment of a US$80.00 filing fee. A provisional application "puts your foot in the door" of the USPTO (and the patent offices of many other industrialized countries) for a 12-month period. The only one form required in filing the application, the cover sheet form, can be downloaded from the USPTO website. Include a stamped, self-addressed return postcard that gives the inventor's name and the title of the invention and that lists the number of pages of each item (the form, the text, called the specification, the drawings and the filing fee check) in the application.
After conception occurs and is documented, the inventor(s) must be diligent in either building and testing a working version of the invention or in filing a (provisional or regular) U.S. patent application on it. See the handout I prepared for a recent talk that is linked to the Presentations button on my website for the "rules of the game" of preserving patent rights. Again, you must document each activity.
After the inventor has initiated diligence in reducing an invention to practice, the inventor can "swear behind" references (patents, publications, etc.) that occur before the inventor files a U.S. patent application when the USPTO tries to use them later to deny the inventor's patent application--but the inventor can only go back 12 months. So, an inventor has to file at least a provisional U.S. patent application less than 12 months after he or anyone else offers the invention for sale in the U.S., uses it in public in the U.S., publishes "how to make" and "how to use" it anywhere, etc.
Also, if, after an inventor reduces his/her invention to practice (say by building and testing one), he/she can be shown to have intentionally abandoned the invention, another person who independently invents it can patent it. The message here is, "Be diligent, keep good records and also find some investment capital." Delay is fatal to inventors in the U.S.
If you can scrape up about $40, and your invention is fairly simple, I recommend you buy the book Patent It Yourself by David Pressman. If you can come up with a little more money, you can buy his software. I am available to help you out if you run up against patenting problems you cannot solve.
Is there a way to document conception of my invention and diligence in reducing it to practice online?
Traditionally, having a witness sign and date a statement that he has "read, discussed and understood" a manually-written invention disclosure has been considered the best way to document conception and diligence in reduction to practice. (Remember that both conception and diligent progress toward either making and testing a prototype in the U.S. or filing a U.S. patent application have to be documented.) You may have to prove your case before a jury of bored and skeptical housekeepers (your peers??) some day - that is why a human they can "eyeball" giving testimony has always worked the best.
But, the world is changing and there are now digital ways to record conception and diligence activities. Here are some companies that do it for a fee:
You may also be able use your Digital ID to have a witness digitally sign and date a digital file containing an invention disclosure:
Remember to also regularly document your diligence activities, so you will need multiple time stamped digital records, and that conception and diligence only "count" in the U.S. and the Philippines. Everywhere else it is the first to file a patent application on a novel invention who wins, no matter who thought of the invention first and was diligent in reducing it to practice.
Another alternative is to use the USPTO Disclosure Document Program. The problem with this approach is that the USPTO does not date stamp all the pages of the copy of your disclosure that is returned to you and destroys its copy unless it is referred to in a separate letter in a related patent application filed within a two-year period after the disclosure document is filed. For that reason, I do not recommend it.
Should I pay money to an invention promotion business?
Be very careful about paying money to invention promotion businesses. Many inventors have been "ripped off" by unscrupulous, fly-by-night invention promotion scams. There is a list of some of the "Good Guys" and "Bad Guys" on the Inventor Fraud web site. I refer inventors who need invention marketing and management services to Marti Elder. She has done a great job assisting inventors like myself. For those of your who want to work with a marketing strategist and consultant located in Hawaii, I suggest you contact Darrin Gee.
The good news is that American Inventors Protection Act of 1999 provides additional protection for inventors from the crooks that prey on them. The Act requires invention promoters to disclose in writing the number of positive and negative evaluations of inventions they have given over a five-year period and their customers’ success in receiving net financial profit and license agreements as a direct result of the invention promotion services. Customers injured by failure to disclose the required information or by any material false or fraudulent representation by the invention promoter can bring a civil action to recover statutory damages up to $5,000 or actual damages. Damages of up to three times the amount awarded are available for intentional or willful violations. You can review copies of complaints against invention promotion firms posted on the USPTO website.
Is there an easy way to tell how much my invention is worth?
Yes, there are more ways that one, but they are more expensive than doing it yourself. Relatively recently, software-implemented products have been developed for valuing patents. Here are links to explanations of a couple of them:
Is there an easy way to find out the royalty rate I can charge for licensing my invention to a manufacturer?
Yes, buy one or all of these books:
Licensing Royalty Rates 2002 Edition from Aspen Publishers, Inc.
AUTM Technology Transfer Practice Manual, Volumes I and II from the Association of University Technology Managers.
Royalty Rates for Technology from Intellectual Property Research Associates (IPRA) Inc..
As you will note, this approach is easy, but it is not cheap.
I have invented a perpetual motion machine. It operates forever and never needs any energy input after it starts. Can I obtain a patent on it?
Not in the U.S. In order to be patentable in the U.S., an invention must be useful, novel and non-obvious. The word "useful" means that the inventor can provide credible evidence that the invention actually works. Many inventors have claimed to have invented perpetual motion machines, but none has been able to prove that his or her invention is operable. Some countries grant patents on patent applications that are not examined by a patent office to determine if the invention is really patentable. They let the courts decide the question later, if it becomes necessary. You may be able to get a patent in one of those countries, but obtaining a patent on an inoperable invention is not worth your time and money.
I want to patent an invention, but I do not know how to make it. Can I get a patent on an invention I wish existed?
No. In order to be patentable in the U.S., an invention must be an actual, operable solution to a technical problem. The solution must have been discovered by one or more inventors who must apply for a patent on it. An invention cannot be a desire that a problem be solved by someone else.
The biggest challenge that people face who are inventing outside their field is that their "conception" of their invention must be complete before a patent application can be filed. In other words, the inventor must be able to explain "how to make" and "how to use" the invention to a hypothetical person having ordinary skill in the field of the invention. Often, however, inventors working from outside a technical field have no clue how to make their invention work or even what the "person having ordinary skill" needs to know to make and use the invention.
What I recommend to such people is that they retain an engineering or scientific consultant (find one in the Yellow Pages or ask a technical friend for a referal to a person with ordinary skill in the field) under an agreement of confidentiality to review the idea for technical feasibility. If the inventor has not solved the technical problem(s) that made the idea infeasible before he came along, it is often the case that no invention exists (because there is no way to really make a product that embodies the invention). For example, many people come to me and say, "My idea is to make a really small X." When I ask, "How?" they say, "I don't know how." That is not good enough. A "wish" is not an invention. Also, if the engineer or scientist retained by the inventor tells the inventor that the idea is not new or is obvious in the light of common knowledge in the field, that is another sign that there is no invention present. If the engineer or scientist says, "From what you have told me, I can make one of those and it is a great idea," you probably have something.
Here are links to the websites of some companies I trust that provide engineering/design and/or prototyping/manufacturing services:
Cavaliere & Fuller - Use our proven know-how to help move your mechanical invention, product or manufacturing project to the next level. Please download our PDF package for more information. Berkeley F. Fuller (808) 960-2139
Strategix ID
Salient Technologies, Inc.
Revelation Industries, Inc.
If you do decide to retain a consultant to assist you in the design of your invention, remember that less detail is required in an invention disclosure than is required for manufacturing a commercial product. What I need in order to prepare a patent application is more on the order of a "schematic design." For a mechanical invention, an invention disclosure would typically include sketches and a description of how to make and how to operate the invention. For a process or software invention, an invention disclosure would typically include block diagrams showing the steps in the process and a written description that explains each step and its interrelationhips with other steps.
The most frequent "wish" I am contacted about is the idea of making something very small that allows the user to find something that someone has lost, e.g., a pet, a child, a car, a tool, etc. Usually, all the inventor has in mind is the basic idea, not a new technical solution to the problem. In explaining why a wish is not an invention, I use the following patents to illustrate that the desire has been around a long time and that an inventor must be able to teach "how to make" and "how to use" the invention in order to earn inventorship:
Can I patent an improvement to an existing product?
Yes, as long as the improvement meets the criteria for patentability, that is, it is useful (functional), novel (new) and non-obvious. A patent confers a "negative right" to its owner, in that the patent owner can sue an infringer to force him to stop practicing (making, using or selling) the patented invention. A patent does not give its owner the right to practice his own patented invention. So, if you improve a product that has been previously patented by someone else, you could get into a situation where you cannot practice your own invention, but the owner of the previous patent cannot practice your improvement invention without your permission. However, many, if not most, products are not patented, so the problem does not arise often. A right-to-use search can be used to establish whether a patent exists that covers your new invention, even if your invention is not patentable because it does not meet the criteria listed above.
I have an idea for a website. Do I need a patent or a copyright?
If all you want to protect is a work of authorship (like the text and/or graphical content you want to post on the site), all you need is a copyright. You need not register your work of authorship until you need to enforce your copyright, which is created automatically. You can register your work at the website of the U.S. Copyright Office.
If you want to protect how the site works to solve a technical problem, then you need a utility patent (also called a technology patent). I can help you with that task if you send me the information I request on the Working Together page on my web site.
Take a look at the information in the Inventor's Guide section of my website for more detailed information about both types of intellectual property protection. Also take a look at the newsletters posted on my website for late-breaking news about patenting e-commerce business models.
Can I patent a song, poem, slogan, idea, etc.?
No. A copyright is the appropriate form of protection for works of authorship. You need not register your work of authorship until you need to enforce your copyright, which is created automatically. You can register your work at the web site of the U.S. Copyright Office. A copyright cannot be used to protect titles, names, short phrases, slogans, ideas, procedures, methods, systems, processes, concepts, principles, discoveries, devices, standard calendars, height and weight charts, tape measures and rulers, or lists or tables taken from public documents or other common sources. Learn more about which form of intellectual property protection is best for your creation by reading my Inventor's Guide.
I noticed on your Costs page that a design patent is much less expensive to obtain than a utility (technology) patent. Would a design patent provide as strong a protection of my idea as a utility patent?
Generally, no. Design patents only protect the shape or surface ornamentation of a product. They are generally only useful for someone who does not want the exact "look" of his invention to be copied by others. That is how major automobile manufacturers and major appliance manufacturers use design patents. Utility patents can protect how something is made and/or how it works, which provides much stronger protection for new technological products and processes, albeit at higher cost.
If a person is only interested in U.S. patent, once he has filed the U.S. patent application does he still need confidentiality (non-disclosure) agreement before he shares his invention with outsiders? Does that answer change if he is planning to also file outside the U.S.?
Yes and no. The filing of a U.S. patent application (provisional U.S. or regular U.S. or a PCT application designating the U.S.) asserts the applicant's priority of invention in the countries that have signed the Paris Convention, but *not* in other countries. The filing covers only what is disclosed (described and enabled) in the application, *not* things that were left out and *not* non-obvious improvements to the invention. If the applicant wants to file in other convention countries, he must do so within 12 months of his original filing date (be it provisional, regular, etc.), or he *cannot* rely on his original filing date as his priority date.
I always encourage my clients to obtain non-disclosure agreements whenever they can for the following reasons:
Their inventions are usually very embryonic in nature and might "trigger" improvement ideas in the person to which they are disclosed. Owning a basic patent and not owning improvement patents on the same idea can reduce the value of the original idea (and, in general, make one's life more complicated, because, in the absence of an agreement to the contrary, both parties must be involved in licensing). So, make sure your agreement makes it clear that you own any improvements made by people you are disclosing your invention to.
Shrouding an idea in secrecy can make it appear to be more valuable than it really is.
Patent practitioners (especially practitioners with high hourly billing rates) are often under severe cost pressures to produce provisional patent applications quickly. If a patent application does not describe and enable what the inventor (or a potential licensee) later decides is really important, it is of little value.
An inventor often cannot predict how important non-U.S. patents will be or where they should have been obtained.
There will eventually come a time when a person to whom the invention wants to disclose his invention refuses to sign a non-disclosure agreement. At that point, I recommend that the inventor ask himself,
"Do I really want to do business with someone who will not sign a simple non-disclosure agreement? After all, non-disclosure agreements protect both parties."
"If so, is my patent application adequate (or should I first file another provisional or continuation-in-part on my latest and greatest idea) and am I sure a licensee will not be interested in non-U.S. patents if I cannot file those applications within 12 months of my priority date?"
There will also come a time when "keeping your light under a bushel" is not a good business decision. Wide dissemination and hard selling of new ideas over a long period of time is the only way it works. No risk, no gain.
P.S. A *secret* or public offer to sell or sale of an invention in the U.S. before filing a patent application in the U.S. (but not an offer to license an invention) triggers a patentability bar after one year in the U.S., even if it is made under a non-disclosure agreement. Many other countries do not have an on-sale bar. An on-sale bar can arise in the U.S. even if a fabricator offers to sell your invention to you, even if you told him how to make it. So, be careful about offers to sell physical embodiments of inventions (even prototypes), even if they are done in secret, if patent rights are going to be sought in countries where an on-sale bar can arise.
I have posted on my website a copy of the confidentiality agreement (as a Word file) I use with clients who request one. It may or may not be appropriate for other uses. It is best to be able to agree to use the standard confidentiality agreement of any company you are disclosing your invention to, as having the wording of a new agreement approved by corporate counsel can take a lot of time. Just make sure the standard agreement is really standard.
How often can I refile a provisional patent application?
You can file it as many times as you want. Twelve months and one day after its filing date a provisional application becomes abandoned and is "shredded" by the U.S. Patent and Trademark Office (USPTO). As far as patent law is concerned, it never existed. (If, however, you kept a copy and it had been read, understood and filed by a patent practitioner, the document could serve as evidence of your date of conception. In the U.S. *only*, an inventor can "swear behind" references for up to 12 months if he/she is diligent in reducing his/her invention to practice during that "grace period." Many other countries require absolute novelty and any such reference can be used to bar a patent.)
The problem, of course, will allowing a provisional application to go abandoned is that the inventor(s) lose the priority date that the application was filed to establish. Any references (publications, offers to sell, etc.) that entered the "prior art" after the original filing date (due to the actions of the inventor(s) or others) and before the new filing date can be used against the inventor(s), if they cannot swear behind the reference.
A provisional application can be converted into a regular application by adding at least one claim and paying a fee. Filing a regular within the original 12 month period would preserve the priority date for the subject matter that was disclosed in the provisional.
Although a second "continuation-in-part (CIP)" regular application could be filed during the pendency of the first regular application, thereby safeguarding the original filing date for the original subject matter and the actual filing date(s) for any new matter, that approach can get expensive with a filing fee of hundreds of dollars for each regular U.S. patent application.
If you do decide to file a regular patent application that claims the benefit of the filing date of a provisional patent application and that you will actually want to prosecute, I recommend that you add a Background of the Invention section to the provisional patent application as well as at least one claim. (Adding 20 claims that include three independent claim costs no more than adding one claim.)
How can I remember to pay the maintenance fees on my issued patents?
Patent maintenance fees must be paid 3.5, 7.5 and 11.5 years after the issue date of a U.S. patent in order to keep a patent in force. Some countries charge annual fees (usually termed "annuities") starting when the patent application is filed. You can learn more about maintenance fees here.
I do not provide a maintenance fee reminder and payment service, but many firms do. Here are some of them that have been around a long time:
Of course, I cannot guarantee the reliability of any such service. Registered U.S. patent practitioners are, however, personally responsible for their errors and omissions, so great care is taken to avoid missing a deadline. In 2003, a large patent law firm did miss a deadline for making foreign filings and the inventor of a valuable invention won $30+ million judgment against the firm. So, mistakes are made.
You can pay each maintenance fee when it is due yourself on-line with a credit card at the USPTO website. If you want the USPTO to mail you a reminder just after the due date when the fee can be paid without a surcharge, you can file a form (PTO/SB/47) to change the fee address on your patent so that the reminder is sent directly to you.
Your job sounds interesting. How can I become a patent agent?
For information on being a patent agent, see the end of my handout.
Anyone who has a degree in science or engineering who can pass the Patent Bar Exam can become a patent agent. You can find info on how to take the Patent Bar Exam, as well as questions and answers on recent exams, at the web page of USPTO Office of Enrollment and Discipline.
To pass the exam, you will need to know the Manual of Patent Examining Procedure (MPEP) like the back of your hand. Even though it is an open-book exam, many of the exam questions are trick questions that you cannot look up in the index. You can download the latest edition. You should buy a subscription because on-line versions are posted late.
You should also take a course or at least buy a study guide from Practicing Law Institute, Patent Resources Group, BAR/BRI Patent Bar Review or Longacre Patent Bar Review because the Patent Bar Exam is very difficult to pass. The PATBAR.COM Home Study Kit is also available. For example, only 37 percent of those who took the exam in October 2000 passed it.
Good luck. It is a great job. I love it. Please refer inventors on to me until you are ready to begin your practice.
I see that you carry professional liability insurance. Where can I obtain such insurance?
I purchase my professional liability insurance from Swett & Crawford representing Lloyd’s of London through Insurance Associates, Inc. (Ralph Johnson).
Other sources reportedly include First Indemnity Insurance Services Inc, out of Boston, 617-951-9395, and the National Association of Patent Practitioners.
© 1998-2003 Robert M. Hunter PLLC