Patent FAQ -- Patent Information, Patents, Search, and Invention Development

A Provisional, while not examined, is subject to the same written description standards under 35 USC 112(1) as a regular application. Thus, if your invention is not properly disclosed, you leave nothing for a patent practitioner to work with when the time comes to file a formal application. Hence, the DIY kit must also provide you with a detailed understanding of how to comply with the 112(1) written description requirement; otherwise, it is not worth it!

Patent Office filing and issue fees for a patent application are well over $1000. It is not worth paying these fees unless the Patent is worth something. Often, a patent practitioner can review your work at a nominal fee, to help assure that your provisional application draft is 112(1) compliant.

You can't. There's no such thing. Your patent application needs to be written up just like any other patent application.

You can't - a Provisional Application will never become a patent. It's necessary to have a utility patent application on file, which will be examined and (hopefully) issue as a patent. There are two ways to do this without losing the benefit of your Provisional Application filing date:

In the end, legally it shouldn't matter which path you took - filing a new application or converting the Provisional - but procedurally there could be big differences.

The normal path is to file a new application referring back to the provisional which is much more formal and, in most cases, more detailed than the Provisional. Most Provisional Applications will take significant work to turn them into a useful utility application, and it's easier to do that by filing a new application than by trying to amend the existing one. The term of the patent which will issue on the utility application will be twenty years from its actual filing date, not the provisional filing date.

If you convert the provisional to a non-provisional, it would appear that the usual rules against adding "new matter" to an existing application would apply, which would preclude adding anything which wasn't in the provisional. The "new matter" rules don't apply if the provisional is simply followed by a utility application, although of course the priority date of the provisional application doesn't apply to anything which wasn't in the provisional. There is also additional paperwork to be filed - a petition to convert (with fee), a preliminary amendment to add claims, and all the additional transmittal forms, etc. - which are not needed when a new application claiming priority is filed. Finally, your patent term will be counted from the filing date of the provisional (now converted to non-provisional) application, rather than from the date of the later-filed utility application - in other words, you lose up to a year of patent term.

In short, there doesn't seem to be any advantage to conversion, and, while that path is open, it does not seem that it is likely to be used as a practical matter.

What's the difference between a Provisional Application
and a Disclosure Document?

A Disclosure Document is a paper filed under a program of the USPTO which allows an inventor to file a description of his invention with a small fee ($10). If the Disclosure Document is referred to in a patent application which is filed within two years, it would serve as evidence of the date of conception. If a Disclosure Document is not referred to in a patent application within two years, it will be destroyed. The Disclosure Document does not document date of invention (that requires reduction to practice, in addition to conception), and it does not provide an effective filing date for a later-filed application.

The Disclosure Document was used for many years by unscrupulous Invention Marketing Companies as an inexpensive way for them to claim to have filed a "patent document in the US Patent Office" without going through the expense and complexity of actually filing for a patent (especially when they knew that many, if not most, of the inventions that they took money for "marketing" wouldn't have been patentable, anyway).

In all the years the Disclosure Document has been in existence, there are no reported cases of which we are aware in which the Disclosure Document did any good whatsoever - and there were several cases where statements were made in Disclosure Documents which were later held against the patentee to limit the scope of the patent. We do not recommend filing Disclosure Documents.

The ability to claim the filing date of the Provisional Application makes them much more useful than the older Disclosure Document program (which only serves as evidence of conception), and with the introduction of the Provisional Application, the Disclosure Document program has become for all intents and purposes obsolete (although it remains on the USPTO fee schedule).

You need to file for patents in foreign countries within a year of filing a US Patent Application, if you want to use the filing date of the US application as the effective ("priority") filing date in the foreign countries. This can be very important, since most foreign countries do not permit any sale or publication before filing for a patent. In the past, many applicants used this year to test the waters and see how the USPTO was going to respond before committing to the enormous cost of filing in other countries.

The Provisional Application starts the 1-year period for foreign filing, if you are going to use the earlier Provisional filing date as your "Priority Date" for the foreign application(s).

Thus, if you are planning to file in foreign countries, you'll need to file both the US and foreign (or PCT) applications before the end of the year from your PPA filing date. As a practical matter, this usually means filing them at the same time, which could be a very large expense which would otherwise be spread over a year.

This could mean that most of the one year grace period most applicants rely on before deciding where to file could be used up before the formal application is prepared and filed. Of course, you could always use the later filing date of the formal application as your priority date, unless there's a publication or the like which will make this impossible.

The best time to involve a registered patent advisor, is at the beginning. It is best to know the rules before starting to play the game. Most registered patent professionals will be willing to conduct an initial consultation with a prospective client, for a modest fee, for the purpose of providing some initial information and advice. At this consultation an inventor can find out more about what types of protection are available, and at what cost. Often a fee estimate can be made of how much it might cost to proceed with any further work.

machines, tools, toys, electronic devices, computers, computer programs, games, chemical formulas, articles of manufacture, and an infinite variety of apparatus, devices, systems, etcetera.

A patent may not be granted on a useless device, on printed mater, on an improvement in a device which would be obvious to a person skilled in the art, or on a machine which will not operate, particularly on an alleged perpetual motion machine.

A patent may be granted to the inventor or discoverer of any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, or on any distinct and new variety of plant, which is asexually reproduced, or on any new, original, and ornamental design for an article of manufacture.

Sure, it is not recommend, though. There are a number of books on the subject and, as in any legal matter, you do have the right to represent yourself, or to be pro se as we attorneys would say. However, what you get when you pay a patent attorney or patent agent to file and prosecute your application for you is training and experience. By using an attorney or agent, you not only get the benefit of experience, but you also gain objectivity. You have a personal stake in your invention. You know it inside and out and invested time, effort and energy in bringing it to the world. When you get your first Office Action from the USPTO with most, if not all, of the claims rejected, you may be confused as to the grounds. You may also be prone to give up due to the energy you have already expended in the inventing process. When an attorney or agent gets an Office Action from the USPTO and most of the claims are rejected, we consider that par for the course, notify you, tell you how we will overcome the objections and tell you not to worry. Then we do it and the matter is done, over, no worries on your part. Our added objectivity and experience also add value to the patent when it is granted – we can think of things that are equivalent to parts of your invention and add them to the application when you may have missed them. Another important aspect is that the specification, claims, and amendments must be written with legal precision; otherwise, even if you can get your patent awarded, you may find that it is worth much less than you thought after a court (in an infringement case) or attorney (of a potential licensee) determine your patent is unenforceable for any number of detailed legal reasons.

Beginning March 2001, the USPTO began "publishing" utility patent applications (not design patent applications) filed on or after November 29, 2000 (including International applications). In exchange for the publication of a patent application, patentees may be able to obtain a reasonable royalty during the period beginning on the date of publication of the application by the USPTO and ending on the date the patent is issued ("provisional rights"). An application may be published earlier than the end of such eighteen-month period at the request of the applicant. An application will not be published if an applicant makes a request upon filing the application certifying that the invention has not and will not be the subject of an application filed in another country, or under a multilateral international agreement, that requires eighteen-month publication.

Is there any danger that the Patent and Trademark Office will give others information contained in my application while it is pending?

All patent applications are maintained in the strictest secrecy until the patent is issued or the application is published. Publication is limited to only certain applications. After the patent is issued, however, the file containing the application and all correspondence leading up to issuance of the patent is made available in the files information room for inspection by anyone, and copies of these files may be purchased from the Patent Office.

If one person furnishes the ideas for invention and another person employs him or finances his experimentation, should the patent application be filed by them jointly?

No. The application should be signed by the true inventor and filed in his or her name.

I have made some changes in my invention after the filing of my patent application documents. May I amend my patent application by adding a description and illustration of these features?

No. The law provides that new matter cannot be introduced into the disclosure of a patent application. However, there is a procedure called "continuation-in-part application" that allows the patent applicant to file a new application which contains new subject matter to replace or supplement the original. You should notify your patent practitioner immediately of any changes you make in your invention.

While in a foreign country, I found an article on sale which has not yet been introduced into the U.S. or patented or described in the U.S. May I get a U.S. patent on this invention?

No. According to the law, a U.S. Patent can only be obtained by the true inventor, not by one who learns of the invention of another.

If I obtain a patent on my invention, will that protect me against claims of others who say that I am infringing their patents?

No. There may be a patent of a more basic nature on which your invention is an improvement. If your invention is a detailed refinement or feature of such a basically protected invention, you may not use it without the consent of the patentee, just as no one will have the right to use your patented improvements without your consent. Seek competent legal advice before you commercialize your invention, even if your invention is protected by a patent granted to you.

They are used by a manufacturer or seller of an article to inform the public that an application for patent on that article is on file in the Patent and Trademark Office. The law imposes a fine on those who use these terms falsely to deceive the public.

Can an inventor sell his right to a patent or patent application to someone else?

Yes. The inventor can sell all or any part of his interest in the patent application or the patent. The patent application must be filed in the Patent and Trademark Office as the invention of the true inventor, however, and not as the invention of the purchaser.

No. The U.S. patent protects your invention only in this country. If you wish to protect your invention in foreign countries, you must file an application in the patent office of each such country within the time limit permitted by law. Check with your patent practitioner about costs before you decide to file in foreign countries.

I mailed myself a description of my invention. I'm protected by the patent laws now, right?

No. All you have done is establish that you have invented your invention by a particular date. This does prove useful if there is ever a dispute over who invented what and when, but that's all it does. The problem is that there is no disclosure to the world as to what you have done. Therefore, if someone (Inventor 2) invents the same invention the day after you do, he is none the wiser. It is not fair to Inventor 2 if you could then enforce your SASE as a patent. In fact, if Inventor 2 also invents and files for a patent within 1 year of the day you invented the invention and obtains the patent while all you do is hold on to the SASE, you lose. Why? Because sitting on it for a year and doing nothing leads to a strong assumption you abandoned your invention, cutting off any rights you may have as a prior inventor. We reward the disclosure with a patent, not the invention itself. Also, in the U.S., there is a one-year window from the point the invention is filed where prior art is not counted. Your invention would be prior art, but if Inventor 2 files before the year has elapsed, your prior art does not count. Inventor 2 would get to keep the U.S. patent, for the full term, with all rights and privileges, including preventing you from using, selling, etc.

It depends on USPTO manpower. If the art is crowded, and there are many applications to process, it could take over 2 years. If it is not crowded, then the process could take as little as 18 months.

Art refers to the type of invention. Is it a computer part, a new engine for automobiles, a business method, a chemical compound, a toy? All of these are just examples of what an invention can actually be. No one would presume a toy is the same thing as a new organic chemical compound, and because one understands toys does not means one understands chemistry, and vice versa. Therefore, the USPTO has divided all technology into individual arts, or classes. Anything man can make can be categorized in one of the hundreds of classes or subclasses that the USPTO has defined - even if it is defined as miscellaneous. By “art,” it is meant a particular area of technology, like toy making or organic chemistry, usually defined by a class and a number of subclasses.

What’s the difference between a design patent, a provisional patent, and a utility patent?

A design patent protects non-useful, ornamental designs and lasts for 14 years. A provisional patent does not really exist – it is a provisional patent application, which waits for perfection into a utility patent application for up to one year, during which time you may label your invention as “Patent Pending.” The Utility patent is the traditional “patent” for a new, useful and non-obvious invention. It lasts for 20 years from the date of filing, but in no instance less than 17 years from the date of issue.

Can I file for, obtain a design patent, and still enforce it like a utility patent?

Yes and No (You love those weasel lawyer answers, don’t you?). A design patent is a patent, and can be enforced as such to the extent of what it protects. The problem is, what it protects is ornamental design. In other words, it protects how something looks or, to sum it in one word, prettiness. If a person wishes to get around a design patent, all he/she has to do is add a different feature or two and, if it is the right feature or two, Viola! They avoid your design patent. Also, woe to you if it goes to court and the court finds the protected features are actually useful! Design patents are NOT for useful designs, utility patents are – that’s one way to void your design patent in a hurry. Do design patents have a place in our society? Of course they do, when used properly – possibly even in conjunction with a utility patent.

You need to realize that inventing is hard work, manufacturing and marketing on top of that is even harder. Generally, the further along in the process you are the better you are for a number of reasons. First, there is less start-up cost and time to potential buyers. Second, you can establish a track record. Third, patent protection. Fourth, you acquire knowledge about the market. Fifth, you get a good dose of reality. Very few inventors will make a profit off an invention. It is not because most inventions are duds, it can be a number of factors ranging from the “dud” factor to inability to capitalize the invention, market trends, someone invented it first, it flopped then and no one wants to touch it now. There are too many variables to say what you can “sell your idea for.” A good rule of thumb, if it is an idea and an idea only – probably not (99.999+% of the time). If it is an invention, you have a patent and it has a high demand as shown by success in a couple of test markets – maybe.

What we in the business call “reduction to practice.” You have an idea, but how do you make it work? Have you built a prototype? Do you know what the chemical formula is to make the invention? Have you tested it? Can somebody take what you know and, in an almost rote fashion, recreate it with no inventive or inspirational step from what you disclose to what the invention is? If you can embody the idea; give it form; the only thing stopping you from building the prototype is the budget; then you can move on and obtain patent protection because you have an invention. If you cannot say how the parts of the invention fit together; if the budget is preventing you from answering how things fit together; if you have no clue as to what chemical compounds you have to use to treat the given substance, or even what the given substance is, in order to create your new invention – you have an idea. You should talk to somebody (i.e. a patent attorney) about this to make a final determination as to how far along you are.

What is not patentable?

An inventor cannot receive a patent for perpetual motion devices, abstract ideas, laws of nature, or naturally occurring substances. An inventor cannot receive a United States patent for an invention publicly disclosed more than 12 months ago.

Public disclosure includes any sale, exhibit at trade show, or printed in a publication, with a few exceptions. You should seek a Patent Attorney's opinion if you have any questions whether your invention is patentable. It should also be noted that you do not need a prototype when seeking patent protection - you only need to be able to describe the invention in sufficient detail so that one skilled in the art could construct your invention.

The first thing all inventors should know is that they do not need a prototype to file for patent protection. Many inventors mistakenly believe they need a working prototype prior to filing for patent protection. However, prototypes can be useful when determining whether your invention will work properly.

If you plan to license or sell your "patent rights" to your invention, there is no need to build an expensive prototype unless you need to determine if your invention will work properly. Obviously if you are going to manufacture products under your patent rights you will need to design a working prototype prior to manufacturing the product.

To qualify for patent protection, an invention does not have to be totally new. It can be an improvement on existing items or methods. Even a small functional or decorative improvement may be patentable.

There are two major parts to the definition of "patentably new". The first of these requires the invention to be new in a narrow, but unambiguous sense. The invention satisfies this first test as long as there is no earlier patent, product, or published reference that has all of the invention's claimed features. The second part of the definition requires the invention to be more than just a small straightforward improvement. In the US this limitation is stated by requiring that the subject matter of the invention, taken as a whole and considered at the time at which the invention was made, is not obvious to a person having ordinary technical skill in the art. In the European Patent Office and in international applications under the Patent Cooperation Treaty (PCT) the same sort of prohibition on patenting small, obvious improvements is handled by requiring "an inventive step". Either one of these approaches puts a healthy dose of ambiguity into the examination process. There is always room to argue about what would have been obvious when the invention was made, or how big a step has to be before it becomes inventive.

The degree to which the invention is new and different sets a basic limit on the breadth of available protection. A patent novelty search can often help the inventor decide if seeking patent protection is worthwhile.

How the patent application is written also sets important limits on protection. A poorly written patent can deprive an invention of all protection.The prospective patentee should expect his or her agent or attorney to ask about alternate ways of carrying out or using the invention so that the application can justify the broadest allowable claims.

What is protected by a patent is what is described in its claims. The claims should be written to withstand a hostile reading by someone who would like to design around, or otherwise avoid the patent. From a patent owner’s perspective, no other reader matters.

The most commonly asked question. The best answer for most people is "No". Although about 95% of all patent applications filed eventually issue as Patents, probably less than 5% of these actually generate income or provide a significant advantage for their owners. For solo inventors, the percentage is probably even less.

Whether or not an invention makes money for an inventor depends upon the merits of the invention itself, and also the amount of effort the inventor puts into the invention. A great invention, no matter how great, will languish for lack of inventor involvement with regard to development, prototyping, and marketing. Similarly, a mediocre invention will probably not succeed no matter how much it is developed or promoted.

A Patent will not cause the invention to succeed or fail in and of itself. The Patent will only provide you with ownership rights to the underlying inventive concept. It may be useful in preventing others from copying your invention or it may be useful when the time comes to sell your invention and business. However, the Patent, by itself, will not likely make money on its own. The underlying invention must also have some merit.

The lawyer answer is "it depends". The serious answer is "a lot". What many people don't realize is that obtaining a Patent is not like filling out a form for your driver's license. It is not simply a matter of completing some forms and submitting them and waiting for the Patent in the mail.

The reason for this is that the scope of your Patent depends upon how the claims are drafted and how carefully the Specification is drafted as well. Patent Examiners examine the application, and in about 90% of the cases, reject the claims. These rejections usually are not serious - it is just the Examiner's way of getting you to argue what your invention is, and more importantly, is not. This examination process can be confusing to an individual inventor. However it puts on record what the Examiner and more importantly what the inventor considered their invention to be. During litigation, these arguments and amendments are usually critical to an understanding and analysis of the Patent.

Unfortunately, there are unscrupulous lawyers out there (and invention brokers) who will file for narrow "picture claim" Patents for solo inventors, figuring that the inventor will never succeed with his invention anyway, so a narrow Patent will not matter. A "Picture Claim" Patent is so narrow in scope that the Examiner will allow it on a first Action. Unfortunately, such Patents are easy to design-around to avoid infringement. For example, one attorney would add a suitcase-type "handle" to each invention (whether it needed it or not!) and claim that handle in excruciating detail in the claims. If an infringer did not use that exact handle, or left it off entirely, the Patent was not infringed.

Thus, if you want a real Patent, with claims of some scope, it is necessary to carefully prepare the Specification, Drawings, and Claims, and prosecute the Patent before the Patent & Trademark Office. This process can take anywhere from 1-5 years or more.

Your relationship with your attorney is going to be a long term one. When shopping around for an attorney, get a written price quotation for the cost of preparing the application, prosecuting the application, and also an estimate of issue-related costs.

As the prosecution process is open-ended it is impossible for any attorney to guarantee a fixed price to "get you a patent". If an attorney does offer you such a "fixed price" - beware.

Get it in writing. If an attorney claims them can't accurately quote you a cost in writing, chances are you can't afford that attorney.

That being said, as a "ballpark" estimate, presuming that the invention is a "simple" mechanical one, and the prosecuting is not overly extended (e.g., two Office Actions) the cost of "getting a patent" could run anywhere from $4,000 to $12,000 depending upon the attorney you use. Note that this is not a price guarantee or price quote for services.

I saw a book by David Pressman called “Patent It Yourself”. Is this a good book? Should I buy it? Why can’t I “Patent It Myself?”

Generally, such books get a mixed review in the IP community. Of course, there is a need for some sort of instruction manual for the pro se (do-it-yourself) inventor. However, the legal liabilities in writing such a book are great, both for the applicant and the author.

It is, generally, a very bad idea to “Patent It Yourself”. Not because takes work away from patent practitioner, but because you can end up with a worthless Patent. The patent system is arcane and complex and it takes years of experience to understand it fully. It is widely accepted that a patent application is one of the most complicated legal document to draft correctly.

The Pressman book is probably good background information, and reading it will help educate you a lot about the Patent system. However, it Is not a substitute for experience in the business, and lack of such experience is costly. Read the book, try to draft your own application, then submit it to a register patent practitioner. If done well, your efforts and education could save you a lot of money.

There are so many ways to shoot yourself in the foot when writing and prosecuting a patent application, you should definitely not try to “Patent It Yourself”.

Most Examiners (like most attorneys) view pro se applicants as a nuisance and don’t believe their inventions will ever be successful. They suggest narrow claims to get the inventor “out of their hair”. The inventor, not knowing any better is happy that his patent is “allowed” even though he doesn’t realize that it may be of little value.

In many instances, broad patent protection has to be hard fought and hard won. What the Examiner is willing to hand to you often isn’t worth paying the issue fee on.

The safest course of action is to tell no one about your invention except your patent attorney or agent until you have filed a patent application. Patents are awarded only for inventions that are not already known to the public, so revealing your invention to anyone except your patent counsel could prevent you from ever obtaining a patent. And, of course, another person who knows of your invention may file a patent application before you, and/or start producing knock-offs.

Disclosing your invention without having a patent application on file is a little like jumping off a cliff—you cannot change your mind once you have jumped, so you had better be sure that you will like the landing. At minimum, you would need to have written, signed, enforceable non-disclosure agreements with everyone who is NOT a patent attorney or agent.

Although a nondisclosure agreement may offer some protection, it is difficult to draft an agreement that covers every situation that may arise, and even more difficult to enforce such an agreement in the event of a dispute between the parties. You are in the strongest position if you have an application on file before you approach a potential buyer or licensee. If you are in a hurry, a provisional patent application (described below) may allow you to file sooner.

The US gives you a one-year "grace period" between the date you disclose or sell your invention to the public and the date after which your invention can no longer be patented. However, most other countries offer NO grace period, so disclosure can instantly terminate potential patent rights in much of the world. You may not be thinking of international markets at this point, but if your invention does well in the marketplace, carelessness now may cost you dearly later.

Some inventors attempt to obtain financial backing or even sell their invention before filing a patent application. However, manufacturers are often wary of inventors who approach them with "an idea." A manufacturer who evaluates and rejects an inventor's idea runs the risk of later being sued by the inventor if the manufacturer markets anything that the inventor might imagine to have been derived from the idea, even if the manufacturer's product is basically different and/or was invented independently in-house. A company may therefore be unwilling to sign an agreement or evaluate an invention because it might then be hampered in its own development and marketing efforts. Consequently, some companies have a flat policy of refusing to even LOOK at independent submissions.

If you've defined your idea well enough to formulate patent claims, the manufacturer can at least look to the claims to determine what it can and cannot do. On the other hand, a manufacturer who signs an agreement that essentially forbids it from disclosing or using your invention without clearly defining your invention opens itself to liability. A manufacturer or investor will also take you much more seriously if you own a property right in your invention.

shapes of articles, fonts, dolls, toys, jewelry, tools, parts, castings, sculptures, the ornamental appearance of an infinite variety of items, etcetera.

patent frequently asked questions (FAQ)

Information regarding the best approach to Patent protection

Frequently Asked Questions (FAQ) about Provisional Patent Applications

What about those “Do it Yourself Provisional Patent” kits?
Where can I get a "Provisional Patent Application Form"?
How do I turn my Provisional Application into a patent?
What's the difference between a Provisional Application and a Disclosure Document?
What About Foreign patents?

Frequently Asked Questions about Full, Utility Patent Applications

What is not patentable?

patent frequently asked questions (FAQ)

Information regarding the best approach to Patent protection

Frequently Asked Questions (FAQ) about Provisional Patent Applications

What about those “Do it Yourself Provisional Patent” kits? Where can I get a "Provisional Patent Application Form"? How do I turn my Provisional Application into a patent? What's the difference between a Provisional Application and a Disclosure Document? What About Foreign patents?

Frequently Asked Questions about Full, Utility Patent Applications

What is not patentable?

What about those “Do it Yourself Provisional Patent” kits?
Where can I get a "Provisional Patent Application Form"?
How do I turn my Provisional Application into a patent?
What's the difference between a Provisional Application and a Disclosure Document?
What About Foreign patents?