Patents

Why would I want a patent on my invention?
A patent gives you a limited monopoly on the use of your invention. It’s a sort of contract with the US government. You make the details of your invention public in order to encourage progress in your field. In exchange, you get the right to prevent others from copying your idea for a certain length of time.

I don’t want to tell the public how to make my invention. What then?
There are other ways to protect ideas; the simplest being keeping them secret. To protect your secrets, you can require your employees and other associates to sign confidentiality agreements. Palomar Patent can help you with this.

What type of invention may be patentable?

  • Mechanical devices
  • Manufactured articles
  • Chemical compositions
  • The visual design of an article
  • Computer programs
  • Methods of manufacturing or doing business
  • Plants that are reproduced asexually (not by seed)
  • In some cases, organisms other than plants

What is almost never patentable?

  • General ideas or concepts
  • Laws of nature
  • Obvious improvements to existing items
  • Works of art
  • Items already known to the public
  • Useless devices
  • “perpetual motion” devices unless a working model is submitted

What other requirements are there for patentability?

  • The applicant must the inventor. You cannot apply for a patent on someone else’s invention – even with the inventor’s permission.
  • The invention must be new; that is, you have not made the invention public more than one year ago and no one else has done so in the past. If a patentability search finds that the idea was patented long ago and the patent is expired, you will not be able to file for a patent.
  • The invention must be non-obvious to someone with reasonable skill in the field. As you might guess, there is much potential for arguing with the Examiner about what is obvious.
  • You must file an application in a timely manner. If you work on an idea for a while, then neglect it for a few years, you may lose the right to apply for a patent.

What are the steps to getting a patent?

  • A patentability search to determine if the invention has previously been patented in the USA is not required, but we recommend it highly. We can perform the search for you.
  • File an application that includes full disclosure of the best mode of making or using the invention and one or more claims.
  • The Patent Office assigns your case to an Examiner who has a background in the technical field of the invention. Examination typically takes one to three years.
  • Amending the claims or making arguments to overcome Examiner’s objections to the application may be needed.
  • Applications are published (made available to the public) 18 months after filing unless non-publication was requested when the application was filed.
  • Allowance and Issuance.

Do I have to have an attorney file a patent application for me?
No, you can file for a patent yourself. However, you cannot have anyone else help you except an attorney or agent who is registered to practice in the US Patent and Trademark Office (a “patent practitioner”).

We do not recommend filing your own application because drafting a patent application requires specialized knowledge. If you file an application and run into trouble it is not always possible for a patent practitioner to “repair” the problem for you. Any mistakes or omissions made in the initial application can result in overly limited protection for your invention or even prevent you from obtaining a patent. Also, “repairing” an application almost usually takes longer and is more expensive than working with a registered practitioner in the first place.

What is included if Palomar Patent files an application for me?
We write the specification (the explanation of how the invention works) and the claims, have drawings prepared that meet US Patent Office requirements, prepare the documents that you must sign, and file the application including payment of the standard fees.

If additional items are required, such as an unusual number of drawings, fees for expediting, or if the invention is unusually complicated, you will be billed at cost.

The completed application will be mailed to you for review and approval before it is filed.

Is there any way to speed up the examination process?
Inventors who are over 65 years old or in poor health can request expedited examination at no cost. This may speed up examination by 12 months.

Other inventors may pay a fee for expediting. There are other requirements, such as how the patentability search is performed and how the application is filed, so please let us know if you have any requirements for rapid issuance of a patent. We will give you an estimate at that time what the additional costs will be.

How does a patent prevent people from stealing my idea?
Enforcing the patent is the patent holder’s responsibility – there are no Patent Police watching out for you. Once your patent is issued, any of the devices sold should be marked with the patent number. You should keep abreast of the market and look for items that may infringe your claims. You then warn the infringers to stop making the article or to obtain a license from you to continue making the product. If necessary, you can sue the infringer for damages. There can be considerable work and money needed to self-police your patent.

If I intend to sell my invention to a manufacturer, can I still get a patent?
Yes, having a patent or even having filed an application can help you negotiate a better deal. It shows the buyer that you are serious about the invention and have enough faith in it to make an investment. To “sell” a patented idea, you can sell (assign) the entire rights of the patent to a buyer, license a manufacturer to make your product in exchange for a set fee per unit or a percentage of the profit, or any other arrangement you wish. An intellectual property attorney can help with an assignment or contracts.

What does “patent pending mean”?
It means a patent application has been filed with the Patent Office but has not yet issued. “Patent pending” is a warning to others that a patent may potentially issue at any time, thus it is not a good idea to copy the invention. While your invention is patent pending, you do not have the right to sue an infringer.

What type of patent protects how a device functions?
The utility patent protects how a device works. A utility patent application is a carefully drafted description of the best way to practice the invention and include one or more claims. The claims spell out in technical language what elements of the invention are new and non-obvious. The claims are the heart of the patent and are the most difficult to draft.

What is a “design patent”?
A design patent protects the appearance of a useful article. For example, a teakettle with a bird on the spout can be protected with a design patent. Design patents have a 14 year term and are less expensive to obtain, but their protection is limited to preventing others from making a device that looks like yours. If someone makes an item that functions the same as yours but looks different, a design patent will not prevent them from doing so.

Would an Idea Development company be helpful to me?
Maybe, but be cautious. The US Patent and Trademark Office receive many complaints about some of these companies. One warning sign is extravagant promises about how much money you will make from your invention. Some companies have clients sign a “Confidentiality Agreement” that prevents the inventor from disclosing any information about the company but does nothing to protect the inventor’s ideas. Read and understand any contract before signing it.
Warning: do not let anyone “string you along” for months, because you have only a year in which to file for a patent after you disclose it.

May I sell my invention to make money to afford a patent application?
Yes, you may sell or otherwise make the invention public for up to one year before filing an application. After one year, the invention is no longer new and cannot be patented. Exception: If you may want to file patent applications in other countries, the invention must not be made public at all before filing an application.

Is there any discount for a low-income inventor?
Not as such. However, many of the Patent Office fees, including the basic filing, search, and examination fees, that “small entities” pay are only half what is charged to big companies. Small entities are individuals or companies with fewer than 500 employees.

We are attentive to our clients’ circumstances and try to tailor our protection strategy to what they actually need for their business plans. However, we are not able to provide credit nor can we exchange our services for a share in an invention.

Is a “Provisional Patent” a way to obtain cheap protection?
A provisional application is not a patent and is not examined. Provisional applications can help you save a filing date on which to base a later utility application. They do have a lower filing fee and do not need claims, so they are easy to file.
Warning: a later utility application can get the benefit of a provisional filing date only if the invention is fully disclosed in the provisional application. You can trap yourself with an improper provisional application, so we do not generally recommend them.

Can I get cheap protection for my idea by sending it to myself by Certified Mail?
No, this does not provide any useful protection. Envelopes can be opened and re-sealed, postmarks can be forged.
Instead: document all stages of the development of your idea by photos, drawings, and notes. Ask a trusted person to witness and date the documents at the time you produce them.

Can I patent a song or my business name?
Artworks such as songs, books, or paintings are usually protected by copyright.

Business names or advertising slogans are protected by trademark.

 

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