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Basics of Patent Law

1.  What is a Patent?

 

A patent is a right granted to an inventor allowing the inventor- for a period of time- to exclude all others from making, using, selling, offering for sale, or importing, the invention. Patents can provide a valuable competitive advantage in the marketplace as the patent holder essentially enjoys a monopoly over the patented product.

 

There are three types of patents:  (1) Utility Patents; (2) Design Patents; and (3) Plant Patents.

 

A Utility Patent is the type of patent that people most usually associate with the word “patent”. It is a patent that is granted to an inventor for a new and useful product or process. The patent protects the “utility”, or functional aspects, of an invention.

 

A Design Patent is a patent granted to an inventor for a new ornamental design of an object. This type of patent only protects the way an object looks. It does not protect any utilitarian aspects of a product. While the scope of design patents are much more limited than utility patents, a Design Patent can be quite effective in certain industries and for certain products.

 

A Plant Patent is a particularly specialized type of patent that protects certain new types of engineered flowering plant species.

 

2.  How Do I Get a Patent?

 

To get a Patent, you first must file an application with the U.S. Patent and Trademark Office that describes and illustrates your invention in detail. Due to the specialized nature of patent law and the unique nomenclature and phraseology utilized in patent application claim language, it is recommended that you hire a patent lawyer to prepare your application.

 

The application process can be lengthy. Due to an application backlog at the Patent Office, it will take several months before a Patent Office Examiner begins to look at your application. Thereafter, there is typically some back and forth between the patent examiner and you and your patent attorney as you attempt to convince the Patent Examiner that your invention is patentable. During this process - referred to as “patent prosecution”- you will have an opportunity to respond to any initial rejection by the Patent Examiner by amending your application and/or presenting evidence and arguments showing that your invention meets the legal criteria for a patent.

In order to get a Patent, your product or process must be (1) New; (2) Useful; and (3) Non-Obvious.

Is Your Invention New?

 

Most patented inventions are improvements on some other product. In the patent application, the inventor must explain how the invention is different than everything that has come before it. Everything that has come before is referred to as “prior art”. Your invention must not have been disclosed or described either expressly or implicitly in any prior art reference. If a patent or patent application already exists for your invention or if your invention has been described in a printed publication somewhere, your invention will not be considered new and you will not be able to get a patent.  

 

Your patent attorney may recommend that you conduct a prior art search before filing a patent application to first determine if your invention already exists in some form.

 

Is Your Invention Useful?

 

The Patent Office will only grant a patent to a useful product or process. What this means is that the product must actually work and it must actually do something i.e., solve some problem. Utility is fairly easy to establish and a properly drafted patent application would contain sufficient detailed description of the invention to establish the utility of the invention.

 

Is Your Invention Non-Obvious?

 

The non-obviousness requirement is similar to the novelty requirement. While the Patent Office will analyze whether your invention is new, it will take the analysis a step further and determine whether or not your invention is really a combination of two or more prior art references. If it deems that it is, the Patent Office will then determine whether it would have been obvious to someone skilled in that particular area of prior art to combine those prior art references to come up with your invention. If so, then your invention is considered obvious and no patent will be granted.

 

The non-obviousness element of an invention will ultimately rest on factual and legal analysis and argument about the scope and content of the prior art to be considered; the differences between the prior art references and the claims of the invention; and an analysis of what constitutes the appropriate level of “skill in the art.”

 

3.  How Much Will it Cost to File a Patent Application?

 

The initial filing fees for a Utility Patent Application include a Basic Filing Fee, Search Fee and Examination Fee. These amounts vary based on the status of the applicant, but one can expect the total initial U.S.P.T.O. filing fees to be somewhere between $500- $1,800.

 

Legal fees to prepare and file an initial application will vary because the amount of work and time required to prepare the application will depend on the intricacies of the invention and the technology involved.  A properly drafted patent application will take into account the known prior art and will contain a sufficiently detailed description and carefully crafted claim language. These elements will help smooth the patent prosecution process and increase the likelihood of your patent being granted.

© 2020 The Fraser Firm, P.C.

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