Patent Primer2019-02-06T18:06:17+00:00

Guide To U.S. Patent Protection

Recent studies have found that startups who obtain patent protection have, on average, 55% higher employment growth and 80% higher sales growth five years later. Startups with patent protection also pursue more, and higher quality, follow-on innovation. Winning a first patent boosts a startup’s subsequent growth and innovation by facilitating access to funding from venture capitalists, banks, and public investors.

This online guide is a general introduction to U.S. patent protection , and answers frequently asked questions. It is written by U.S. patent attorney David M. Kleiman who has been protecting and enforcing patent rights for more than 20 years. If you would like his help with patents:

Call
818-484-3220
Mon-Fri 6AM-6PM Pacific Time (Los Angeles)

OR


Competitive Rates
Flat Fee Services
David M. Kleiman
U.S. Patent Attorney
Professional Invention Protection
20+ Years
Serving Clients Worldwide

A Brief Overview of Patent Protection


U.S. patent protection is an extremely important consideration for any business involved in the manufacture and sale of products in the United States. The owner of a U.S. patent has, for a limited time, the exclusive right to make all sales of the patented product in the U.S. market. Because the patent owner can legally stop others from making and selling the patented product, a patent owner can charge a premium price for a product they make and sell that can be much higher than the actual cost to manufacture and sell the product.


This means that the patent owner can make potentially very high profits on sales of the patented product during the life of the patent, which can help the owner more quickly recover the investment made to develop the new product. Even if the patent owner does not make and sell the product, they are legally entiled to collect at least a reasonable royalty from anyone else who does.


A Patent's Effect On Price




A common example of the effect of patent protection on price is the sale of "brand name" drugs at high prices. The patent protection on brand name drugs is what allows the company who first invented the drug to sell it at a high premium price without competition. However, once the patent protection ends competitors enter the market with a "generic" version of the drug at a lower price, taking sales away from the brand name drug, and possibly forcing the manufacturer of the brand name drug to lower its prices in order to maintain sales.


While nobody likes paying high prices, the reality is that without the availability of patent protection and the potential to charge higher prices for at least a limited time to recover development costs a business may be unable to justify the risk of investing money to develop new products. This is particularly so in areas where the cost of research and development is very high (as in many millions of dollars), such as with pharmaceuticals.


The higher price consumers may have to pay for a limited time due to patent protection is the price society has decided to pay for encouraging business to invest in new technologies and products.



Profit Considerations


Since bringing a new product to market is often a very expensive and risky investment for a business, many times it can only be justified if there is a potentially very high profit to be made that justifies taking the risk. Accordingly, the availability of patent protection is often a critical factor to consider when deciding whether an investment in a new product is justified. Without patent protection a business that introduces a new product may not be able to make enough sales at high enough prices to generate profits sufficient to justify the risk of an investment in the new product. Effective patent protection however is often a difficult thing to obtain. The U.S. patent laws can be complex in their application. Individuals with ideas for a new product are particularly vulnerable to being sold services related to patent protection that are ineffective and offer little if any real value.


Liability Considerations


Businesses involved in the manufacture and sale of products also need to be concerned about liability for infringing someone else’s patent. Patent infringement is strict liability, meaning that even if a business has no awareness of someone else’s patent, if it imports, makes, or sells a product that infringes the patent then it can still be sued for patent infringement. The business may then have to pay significant money damages to the patent owner and stop selling the product, not to mention pay legal fees associated with defending against such a lawsuit. Because of this, prior to making a significant investment in bringing a new product to market it is generally considered prudent to investigate and assess any potential patent infringement problems.


Key Highlights


U.S. patent law is a complex area of business law. For detailed information about how the U.S. patent laws may impact your business venture arrange for an initial consultation with registered U.S. patent attorney David M. Kleiman. What follows are some general highlights of U.S. patent law.


U.S. PATENT LAW HIGHLIGHTS


United States patents protect new and useful processes, machines, articles of manufacture, and compositions of matter. It is often the only way to legally protect a new functional product against copying by competitors.


A U.S. patent gives its owner the "exclusive" right to make, use, offer to sell, or sell the patented invention within the United States, or import the patented invention into the United States, (hereinafter collectively referred to as just "make and sell"). If somebody other than the owner infringes a valid patent by making or selling the claimed invention of patent without permission from the owner(s), then the owner(s) can sue the infringing party in U.S. federal court. If successful a patent owner will be entitled to an award of money, not less than a reasonable royalty, for any infringement that happened after notice was given in compliance with the patent marking and notice statute. The patent owner may also be able to obtain a court order against further infringement.


A U.S. patent is not a grant of permission to the owner to make and sell the claimed invention. Rather it is simply the right to exclude, or stop, others from making and selling the invention. This is important to understand, because it means you can own patent rights in an invention, but still not be allowed to make and sell the invention, if to do so would be a violation of somebody else’s patent rights, or otherwise be breaking the law.


The only way to get a U.S. patent is to file an application with the United States Patent & Trademark Office, which is an agency of the U.S. government.


Under United States law it is the inventor(s) who initially owns the right to file an application for, and receive, a U.S. patent. The inventor(s) can assign their rights to file a patent application and receive a patent to someone else, such as their employer.


If there is more than one inventor (in other words there are co-inventors), then each co-inventor is a joint owner of the patent. In the absence of any agreement to the contrary, each of the joint owners of a patent may make and sell the invention, without the consent of and without accounting to the other owners. For this reason, there should be a written agreement between co-inventors as to ownership and control of the invention.


There are three basic types of U.S. patents:

  1. Design Patent


  2. A design patent protects the new, original and ornamental design of an article of manufacture. The ornamental design of an article is its visual appearance, such as the unique shape of a bottle. Note that only “ornamental” designs are protected. This means that the design being protected cannot be dictated by the functional aspects of the article. A design patent provides protection for fifteen (15) years from the date it issues.

  3. Plant Patent


  4. Certain types of plants that have been asexually reproduced are eligible for plant patent protection. A plant that is asexually reproduced is one that is reproduced by means other than seeds, such as by the rooting of cuttings, layering, budding, grafting, inarching etc… Other types of plants that do not qualify for plant patent protection may be eligible for protection under another set of laws called the Plant Variety Protection Act, or possibly through a utility patent. A plant patent provides protection from the date the patent issues until a date twenty (20) years after the patent application was filed, assuming all of the required maintenance fees are paid.

  5. Utility Patent


  6. If an invention eligible for patent protection is not just the ornamental design of an article of manufacture, or an asexually reproduced plant, then it will be protected by a utility patent. Utility patents cover numerous types of inventions. Everything from simple mechanical devices like a paper clip, to the most complex electrical circuits found in today’s supercomputers, to the chemical formulas of prescription drugs, to biotechnology patents on genetically engineered animals. The utility patent is by far the most common type of patent. A utility patent provides protection from the date the patent issues until a date twenty (20) years after the patent application was filed, assuming all of the required maintenance fees are paid.

While an inventor is not required to use the services of a registered patent attorney or agent when applying for a U.S. patent, due to the complexity of the patent laws and regulations it is generally highly recommended to do so. Note, a person must be a registered patent attorney or agent in order to represent an inventor before the United States Patent and Trademark Office.


While there are exceptions, it often costs at least several thousand dollars, and takes at least a year to obtain the issuance of a U.S. patent. This expense is generally made up of Patent Office filing and issuance fees, patent drawing expenses, and patent attorney expenses. Exactly how much it costs depends upon the particular invention, the area of technology, and the type of patent being sought.


A U.S. patent is only good in the United States. Each country has its own laws for granting patent protection. If you want exclusive rights in other countries to make and sell an invention, then you will need to separately seek patent protection in such countries. While there are treaties between countries to facilitate this, it can be very expensive, and there are strict time limits for doing so.




Frequently Asked Questions


Question: How do I protect my idea?


Answer: An idea is not the same thing as an invention. Inventions can be protected through patents and/or trade secrets. Ideas alone are not eligible for patent protection. However, they can still be valuable, and may be eligible for protection as a trade secret. To qualify for trade secret protection you must take reasonable steps to keep the idea confidential.



Question: How do I know if my invention is patentable?


Answer: A registered patent attorney can perform an investigation and advise you concerning the scope of patent protection, if any, that may be available for your invention.



Question: Is it safe to disclose my invention to a patent attorney?


Answer: U.S. patent attorneys are required by law to keep all information communicated to them about your invention confidential. This may not be the case however with many businesses who offer "invention services". To receive the protection offered by the law that keeps communications between attorneys and clients confidential make sure that it is an attorney who you are disclosing your invention to.



Question: Do I need to have the patent attorney sign a confidentiality agreement?


Answer: No this is not necessary when dealing with a U.S. patent attorney. If not dealing with an attorney you should always use a confidentiality agreement before disclosing the invention.



Question: If I am told that my invention is patentable, does this mean that I should patent it?


Answer: Not necessarily. Just because you have received an opinion that your invention may be patentable does not mean that the scope of patent protection available will be a worthwhile investment. It is important to understand the scope of patent protection which may be available to you, and come up with a strategy for pursuing (or not pursuing) patent protection which fits your business goals for the invention. The best way to accomplish this is through consultation with an experienced patent attorney, and other business advisors, who you trust.



Question: If my idea isn’t patentable does this mean that I should just forget it?


Answer: Not necessarily. Just because you don’t have a patentable invention does not mean that there may not be a valuable business opportunity. Many successful products and services on the market today are not patented. However, there are many other legal issues, some of which are intellectual property issues, that could affect the success or failure any business venture. One thing to consider is whether the sale or marketing of your product would be an infringement of somebody else’s patent rights, and could subject you to a lawsuit. The answer to this question may require an infringement search and opinion, which is different than a patentability search.



Question: If I decide to file a patent application how much will it cost?


Answer: There is no one price for patent applications. How much it costs to prepare and file a patent application depends upon the particular invention and what type of patent application is to be filed. Generally speaking the more complicated it is to describe, illustrate, and claim the invention the more it costs to prepare and file a patent application. A professionally prepared patent application will typically cost at least several thousand dollars to prepare and file.



Question: Can I prepare and file my own patent application?


Answer: If you are an individual, then you are not legally required to have a patent attorney prepare and file your patent application for you. However, you should really think very carefully about preparing and filing your own patent application. The laws concerning patent applications and patent rights are complex, and it is no simple matter to properly draft and file a quality patent application. There is a reason individuals must be specially licensed to do so on behalf of others. If your invention is truly worth getting patented, then an investment in a professionally prepared patent application is prudent.



Question: What about all of the books and software that claim to be able to help me prepare and file a patent application myself without the help of a patent attorney?


Answer: Such products, while they can be informative, have a tendency to place the focus on achieving the goal of filing a patent application and achieving patent pending status. This should not be your goal when it comes to patent protection. It is relatively easy to achieve patent pending status. If all of the required parts of the application are there (regardless of the legal quality of such parts), and you pay the government filing fees, you will receive a filing date and patent pending status. However, this alone is not enough to succeed with patent protection. Generally speaking what is needed to succeed is a properly issued patent that covers a profitable product in the market. This is not remotely the same as simply obtaining a filing date and patent pending status.



Question: Why is a provisional patent application less money than a regular patent application?


Answer: A provisional patent application can be less expensive to prepare and file than a non-provisional utility patent application because it does not contain patent claims, and the filing fees are less because it won’t be examined by the government or ever issue into a patent. It will receive a filing date, giving the applicant patent pending status, and the applicant then has 12 months to file a non-provisional patent application with claims and regular filing fees which claims priority to the provisional patent application. So it is not really less expensive, but rather defers some expenses associated with seeking patent protection for up to 12 months. This can save money if it is decided within the 12 months following the filing of a provisional application not to pursue patent application.



Question: Should I file a provisional application now instead of a non-provisional application?


Answer: The answer to that question depends upon a number of factors which you may wish to discuss with a patent attorney. In many cases you will be better off filing a non-provisional application.


Question: Once I file a non-provisional patent application how long will it take for me to get a patent?


Answer: Typically a long time. The U.S. Patent Office receives hundreds of thousands of patent applications every year and has a significant backlog of pending patent applications. It typically takes at least a year on a non-provisional utility patent application to receive a response from the patent examiner, which frequently is a rejection. By the time any rejections are overcome, if possible, the issue fee is paid (another expense), and the patent finally issues, at least 18 months or more can have easily elapsed since the application was filed.


There are options to request that the application receive expedited examination. Whether your circumstances justify such a request should be discussed with a patent attorney.


Guide To U.S. Patent Protection

David M. Kleiman
U.S. Patent Attorney
Professional Invention Protection
20+ Years

Recent studies have found that startups who obtain patent protection have, on average, 55% higher employment growth and 80% higher sales growth five years later. Startups with patent protection also pursue more, and higher quality, follow-on innovation. Winning a first patent boosts a startup’s subsequent growth and innovation by facilitating access to funding from venture capitalists, banks, and public investors.

This online guide is a general introduction to U.S. patent protection, and answers frequently asked questions. It is written by U.S. patent attorney David M. Kleiman who has been protecting and enforcing patent rights for more than 20 years. If you would like his help with patents:

Call
818-484-3220
Mon-Fri 6AM-6PM
Pacific Time (Los Angeles)

OR


Competitive Rates
Flat Fee Services

A Brief Overview of Patent Protection


U.S. patent protection is an extremely important consideration for any business involved in the manufacture and sale of products in the United States. The owner of a U.S. patent has, for a limited time, the exclusive right to make all sales of the patented product in the U.S. market. Because the patent owner can legally stop others from making and selling the patented product, a patent owner can charge a premium price for a product they make and sell that can be much higher than the actual cost to manufacture and sell the product.


This means that the patent owner can make potentially very high profits on sales of the patented product during the life of the patent, which can help the owner more quickly recover the investment made to develop the new product. Even if the patent owner does not make and sell the product, they are legally entiled to collect at least a reasonable royalty from anyone else who does.


A Patent's Effect On Price




A common example of the effect of patent protection on price is the sale of "brand name" drugs at high prices. The patent protection on brand name drugs is what allows the company who first invented the drug to sell it at a high premium price without competition. However, once the patent protection ends competitors enter the market with a "generic" version of the drug at a lower price, taking sales away from the brand name drug, and possibly forcing the manufacturer of the brand name drug to lower its prices in order to maintain sales.


While nobody likes paying high prices, the reality is that without the availability of patent protection and the potential to charge higher prices for at least a limited time to recover development costs a business may be unable to justify the risk of investing money to develop new products. This is particularly so in areas where the cost of research and development is very high (as in many millions of dollars), such as with pharmaceuticals.


The higher price consumers may have to pay for a limited time due to patent protection is the price society has decided to pay for encouraging business to invest in new technologies and products.



Profit Considerations


Since bringing a new product to market is often a very expensive and risky investment for a business, many times it can only be justified if there is a potentially very high profit to be made that justifies taking the risk. Accordingly, the availability of patent protection is often a critical factor to consider when deciding whether an investment in a new product is justified. Without patent protection a business that introduces a new product may not be able to make enough sales at high enough prices to generate profits sufficient to justify the risk of an investment in the new product. Effective patent protection however is often a difficult thing to obtain. The U.S. patent laws can be complex in their application. Individuals with ideas for a new product are particularly vulnerable to being sold services related to patent protection that are ineffective and offer little if any real value.


Liability Considerations


Businesses involved in the manufacture and sale of products also need to be concerned about liability for infringing someone else’s patent. Patent infringement is strict liability, meaning that even if a business has no awareness of someone else’s patent, if it imports, makes, or sells a product that infringes the patent then it can still be sued for patent infringement. The business may then have to pay significant money damages to the patent owner and stop selling the product, not to mention pay legal fees associated with defending against such a lawsuit. Because of this, prior to making a significant investment in bringing a new product to market it is generally considered prudent to investigate and assess any potential patent infringement problems.


Key Highlights


U.S. patent law is a complex area of business law. For detailed information about how the U.S. patent laws may impact your business venture arrange for an initial consultation with registered U.S. patent attorney David M. Kleiman. What follows are some general highlights of U.S. patent law.


U.S. PATENT LAW HIGHLIGHTS


United States patents protect new and useful processes, machines, articles of manufacture, and compositions of matter. It is often the only way to legally protect a new functional product against copying by competitors.


A U.S. patent gives its owner the "exclusive" right to make, use, offer to sell, or sell the patented invention within the United States, or import the patented invention into the United States, (hereinafter collectively referred to as just "make and sell"). If somebody other than the owner infringes a valid patent by making or selling the claimed invention of patent without permission from the owner(s), then the owner(s) can sue the infringing party in U.S. federal court. If successful a patent owner will be entitled to an award of money, not less than a reasonable royalty, for any infringement that happened after notice was given in compliance with the patent marking and notice statute. The patent owner may also be able to obtain a court order against further infringement.


A U.S. patent is not a grant of permission to the owner to make and sell the claimed invention. Rather it is simply the right to exclude, or stop, others from making and selling the invention. This is important to understand, because it means you can own patent rights in an invention, but still not be allowed to make and sell the invention, if to do so would be a violation of somebody else’s patent rights, or otherwise be breaking the law.


The only way to get a U.S. patent is to file an application with the United States Patent & Trademark Office, which is an agency of the U.S. government.


Under United States law it is the inventor(s) who initially owns the right to file an application for, and receive, a U.S. patent. The inventor(s) can assign their rights to file a patent application and receive a patent to someone else, such as their employer.


If there is more than one inventor (in other words there are co-inventors), then each co-inventor is a joint owner of the patent. In the absence of any agreement to the contrary, each of the joint owners of a patent may make and sell the invention, without the consent of and without accounting to the other owners. For this reason, there should be a written agreement between co-inventors as to ownership and control of the invention.


There are three basic types of U.S. patents:

  1. Design Patent


  2. A design patent protects the new, original and ornamental design of an article of manufacture. The ornamental design of an article is its visual appearance, such as the unique shape of a bottle. Note that only “ornamental” designs are protected. This means that the design being protected cannot be dictated by the functional aspects of the article. A design patent provides protection for fifteen (15) years from the date it issues.

  3. Plant Patent


  4. Certain types of plants that have been asexually reproduced are eligible for plant patent protection. A plant that is asexually reproduced is one that is reproduced by means other than seeds, such as by the rooting of cuttings, layering, budding, grafting, inarching etc… Other types of plants that do not qualify for plant patent protection may be eligible for protection under another set of laws called the Plant Variety Protection Act, or possibly through a utility patent. A plant patent provides protection from the date the patent issues until a date twenty (20) years after the patent application was filed, assuming all of the required maintenance fees are paid.

  5. Utility Patent


  6. If an invention eligible for patent protection is not just the ornamental design of an article of manufacture, or an asexually reproduced plant, then it will be protected by a utility patent. Utility patents cover numerous types of inventions. Everything from simple mechanical devices like a paper clip, to the most complex electrical circuits found in today’s supercomputers, to the chemical formulas of prescription drugs, to biotechnology patents on genetically engineered animals. The utility patent is by far the most common type of patent. A utility patent provides protection from the date the patent issues until a date twenty (20) years after the patent application was filed, assuming all of the required maintenance fees are paid.

While an inventor is not required to use the services of a registered patent attorney or agent when applying for a U.S. patent, due to the complexity of the patent laws and regulations it is generally highly recommended to do so. Note, a person must be a registered patent attorney or agent in order to represent an inventor before the United States Patent and Trademark Office.


While there are exceptions, it often costs at least several thousand dollars, and takes at least a year to obtain the issuance of a U.S. patent. This expense is generally made up of Patent Office filing and issuance fees, patent drawing expenses, and patent attorney expenses. Exactly how much it costs depends upon the particular invention, the area of technology, and the type of patent being sought.


A U.S. patent is only good in the United States. Each country has its own laws for granting patent protection. If you want exclusive rights in other countries to make and sell an invention, then you will need to separately seek patent protection in such countries. While there are treaties between countries to facilitate this, it can be very expensive, and there are strict time limits for doing so.




Frequently Asked Questions


Question: How do I protect my idea?


Answer: An idea is not the same thing as an invention. Inventions can be protected through patents and/or trade secrets. Ideas alone are not eligible for patent protection. However, they can still be valuable, and may be eligible for protection as a trade secret. To qualify for trade secret protection you must take reasonable steps to keep the idea confidential.



Question: How do I know if my invention is patentable?


Answer: A registered patent attorney can perform an investigation and advise you concerning the scope of patent protection, if any, that may be available for your invention.



Question: Is it safe to disclose my invention to a patent attorney?


Answer: U.S. patent attorneys are required by law to keep all information communicated to them about your invention confidential. This may not be the case however with many businesses who offer "invention services". To receive the protection offered by the law that keeps communications between attorneys and clients confidential make sure that it is an attorney who you are disclosing your invention to.



Question: Do I need to have the patent attorney sign a confidentiality agreement?


Answer: No this is not necessary when dealing with a U.S. patent attorney. If not dealing with an attorney you should always use a confidentiality agreement before disclosing the invention.



Question: If I am told that my invention is patentable, does this mean that I should patent it?


Answer: Not necessarily. Just because you have received an opinion that your invention may be patentable does not mean that the scope of patent protection available will be a worthwhile investment. It is important to understand the scope of patent protection which may be available to you, and come up with a strategy for pursuing (or not pursuing) patent protection which fits your business goals for the invention. The best way to accomplish this is through consultation with an experienced patent attorney, and other business advisors, who you trust.



Question: If my idea isn’t patentable does this mean that I should just forget it?


Answer: Not necessarily. Just because you don’t have a patentable invention does not mean that there may not be a valuable business opportunity. Many successful products and services on the market today are not patented. However, there are many other legal issues, some of which are intellectual property issues, that could affect the success or failure any business venture. One thing to consider is whether the sale or marketing of your product would be an infringement of somebody else’s patent rights, and could subject you to a lawsuit. The answer to this question may require an infringement search and opinion, which is different than a patentability search.



Question: If I decide to file a patent application how much will it cost?


Answer: There is no one price for patent applications. How much it costs to prepare and file a patent application depends upon the particular invention and what type of patent application is to be filed. Generally speaking the more complicated it is to describe, illustrate, and claim the invention the more it costs to prepare and file a patent application. A professionally prepared patent application will typically cost at least several thousand dollars to prepare and file.



Question: Can I prepare and file my own patent application?


Answer: If you are an individual, then you are not legally required to have a patent attorney prepare and file your patent application for you. However, you should really think very carefully about preparing and filing your own patent application. The laws concerning patent applications and patent rights are complex, and it is no simple matter to properly draft and file a quality patent application. There is a reason individuals must be specially licensed to do so on behalf of others. If your invention is truly worth getting patented, then an investment in a professionally prepared patent application is prudent.



Question: What about all of the books and software that claim to be able to help me prepare and file a patent application myself without the help of a patent attorney?


Answer: Such products, while they can be informative, have a tendency to place the focus on achieving the goal of filing a patent application and achieving patent pending status. This should not be your goal when it comes to patent protection. It is relatively easy to achieve patent pending status. If all of the required parts of the application are there (regardless of the legal quality of such parts), and you pay the government filing fees, you will receive a filing date and patent pending status. However, this alone is not enough to succeed with patent protection. Generally speaking what is needed to succeed is a properly issued patent that covers a profitable product in the market. This is not remotely the same as simply obtaining a filing date and patent pending status.



Question: Why is a provisional patent application less money than a regular patent application?


Answer: A provisional patent application can be less expensive to prepare and file than a non-provisional utility patent application because it does not contain patent claims, and the filing fees are less because it won’t be examined by the government or ever issue into a patent. It will receive a filing date, giving the applicant patent pending status, and the applicant then has 12 months to file a non-provisional patent application with claims and regular filing fees which claims priority to the provisional patent application. So it is not really less expensive, but rather defers some expenses associated with seeking patent protection for up to 12 months. This can save money if it is decided within the 12 months following the filing of a provisional application not to pursue patent application.



Question: Should I file a provisional application now instead of a non-provisional application?


Answer: The answer to that question depends upon a number of factors which you may wish to discuss with a patent attorney. In many cases you will be better off filing a non-provisional application.


Question: Once I file a non-provisional patent application how long will it take for me to get a patent?


Answer: Typically a long time. The U.S. Patent Office receives hundreds of thousands of patent applications every year and has a significant backlog of pending patent applications. It typically takes at least a year on a non-provisional utility patent application to receive a response from the patent examiner, which frequently is a rejection. By the time any rejections are overcome, if possible, the issue fee is paid (another expense), and the patent finally issues, at least 18 months or more can have easily elapsed since the application was filed.


There are options to request that the application receive expedited examination. Whether your circumstances justify such a request should be discussed with a patent attorney.