Patent Filing FAQs
An idea or a suggestion has to be converted into a tangible invention, process, device, gadget, or any contraption that is unique and different and can add value for the end user. It is this tangible invention that can be patented; not the idea or suggestion directly.
This requires thorough research using different sources and resources. One of the best places to search is the USPTO website that has a very strong advanced search facility. On this website, you will be able to search for patents dating back to 1790. To search across countries and geographies, there are plenty of search engines that can help you to search for prior patents. Some of them are free to use whereas others require paid subscriptions. Some of these are listed below with their URLs:
United States Patent and Trademark Office
Espacenet Patent Search
Japan Patent Office
Google Patents
Patent Lens
Delphion
Apart from using these websites to search for existing patents, it is recommended that you engage the services of patent specialist Attorneys. Apart from searching, they can also help you with the entire patent filing process.
All of these are mechanisms to protect intellectual property. However, they have different scopes of operation and enforcement.
Trademark – this refers to the protection given to a word, phrase, symbol or logo that is used in conjunction with goods and/or services. Trademarks do not have an expiry date.
Copyright – this refers to an exclusive and assignable legal right that is given to an entity for a specific duration in years for any form of literary, artistic or musical material.
Patent – this refers to a government authority or license bestowing an exclusive right or title during a set period that prevents others from making, using or selling an invention.
There are several dates associated with the patent filing process. As per the USPTO, the actual filing date corresponds to the date of the patent filing application. After 18 months, these are published in the USPTO Gazette. This date is called as the publication date. When the examiner approves and grants the patent, this date is called as the Issue Date or Patent Date.
The patent is valid for 20 years from the filing date or 17 years from the issue date.
Once a patent is expired, the invention is placed in the public domain. Expired patents cannot be renewed. However, this procedure varies from country to country. Some countries do have a provision to extend the life of the patent post expiry.
The geographical scope of the patents depends on the scope defined at the time of filing the patent application. Generally, the scope is limited to the country of application by default. However, there is a provision to apply for patents in other countries to penetrate other markets apart from your own country.
Yes, all the patent applications are subject to scrutiny and review. Some countries have rules defined regarding inspection of patent applications.
The applicant, a patent practitioner of record, the assignee, inventor or joint inventor, a registered attorney or agent, all of these have the power to inspect the patent application. Apart from these, members of the general public can also inspect the patent application.
The number of patent applications varies from country to country. The below link gives US Patent Statistics Charts from 1963 to 2015. From the year 2013 onwards, there are nearly 600,000+ patent applications filed every year with 629,647 patent applications filed in the year 2015 alone.
Source: https://www.uspto.gov/web/offices/ac/ido/oeip/taf/us_stat.htm
Yes, there are various fees associated with patent filing process and can be found from the USPTO website (link mentioned below).
Source: https://www.uspto.gov/learning-and-resources/fees-and-payment/uspto-fee-schedule
The total fees can vary depending on how complex the application is, what is the product type of the patent that is applied for, and other factors. Refer to the link to the USPTO website that mentions the different charges that are payable for different aspects of the patent application. Some of these are also mentioned as maintenance charges during the life of the patent.
Source: https://www.uspto.gov/learning-and-resources/fees-and-payment/uspto-fee-schedule
Yes, information about previously granted patents is publicly available.
There are country specific patent databases that can easily be accessed either for free or for a fee. Some of the websites are listed below.
United States Patent and Trademark Office
Espacenet Patent Search
Japan Patent Office
Google Patents
Patent Lens
Delphion
Patent Attorneys are lawyers who have passed the mandatory state bar exam and additionally have passed the “patent bar exam”, which is a federal exam, which grants them the right to represent clients before the United States Patent and Trademark Office (USPTO). These lawyers specialize in Intellectual Property law as it pertains to securing and protecting an inventor’s property rights to a unique invention.
Patent Agents are similar to Patent Attorneys in many aspects, however, they cannot represent the client for prosecuting a patent infringement.
USPTO website recommends hiring a Patent Attorney for filing a patent application. These attorneys can help at all stages of the application process such as filing, responding to queries, representing the client in the USPTO, protecting client’s rights during infringement, etc. They have passed an additional exam and are licensed by the USPTO for patent applications and they specialize in intellectual property law.
It is not necessary to employ a registered Attorney or Agent while applying for a patent, however it is recommended that the services of one are availed to better guide through the entire patent application process.
It is not necessary to know the patent laws, rules, office practices and procedures. This is where the Patent Attorneys would be very helpful as they are well versed with these. They can give the necessary guidance to the client.
Registered Patent Attorneys and Agents have cleared a federal exam called as “patent bar exam” and have been issued a license by the USPTO. Hence these license holders’ names are published on the USPTO’s website. If their names are not published, then these can still be verified by contacting the USPTO.
The USPTO will communicate directly with the applicant for more information related to the patent application. There would be different types of communication which need timely responses. The Patent Attorney is well equipped to handle the responses for the various types of communication and letters that are sent by the USPTO. Some of the letters that are sent by USPTO are as mentioned below:
Office Action – this is generally issued when there are concerns or disputes regarding the patent application. The first time this type of letter is released, it is a non-final letter which seeks to address the queries raised. However, if the applicant fails to satisfy the disputes or queries raised, then a final office action letter is issued.
Examiner’s amendment – this is issued as a confirmation of the amendment in the application. This does not require a response unless the applicant does not agree with the amendment.
Priority Action – This is issued by the examining attorney after discussion with the applicant to confirm the points discussed. This requires a response within six months else the application will be canceled without fee refunds.
Suspension Letter – this is an information letter in which the applicant is notified that the patent application is suspended. This letter does not require a response.
Suspension Inquiry Letter – this is issued by the examining attorney when a suspended application is reviewed after six months. This requires a response and if none is given, the patent application is canceled without fee refunds.
There are no fixed guidelines as such, however, the fees for a non provisional application vary from $10,000 to $15,000 on an average depending on the complexity of the application. The fees also depend on various factors such as geographical location, attorney experience, complexity of the application, efforts involved, etc.
Yes, the patent application can have the names of all the inventors and stakeholders involved.
Yes, the patent application can have the names of all the inventors and stakeholders involved.
No, employees of USPTO cannot apply for patents.
The USPTO website (https://www.uspto.gov/) has information in the form of guides, search, rules, guidelines that are available for those who do not wish to employ a Patent Attorney to help with the application process. Apart from this website, there are plenty of other third party websites that provide this information and act as facilitators. These are readily available on Google search.
There are many ways in which patents can be violated listed below.
- Direct Infringement
- Indirect Infringement
- Contributory Infringement
- Induced Infringement
- Willful Infringement
- Literal Infringement
- Doctrine of Equivalents
- Doctrine of Equivalents
- Doctrine of Complete Coverage
- Doctrine of Compromise
- Doctrine of Estoppel
- Doctrine of Superfluity
When you find that your patent has been violated, then the first step is to send a written warning to the infringer to stop. Then file a lawsuit against the infringer and demand monetary compensation. If the patent has not yet been granted, there will be an injunction in your favour and still get time to file a lawsuit to claim for damages.
“Patent Pending” means that the patent application has been filed and is currently under review. The application has neither been rejected nor approved.
The more reliable method of applying for a patent in other countries is to apply in the patent offices of those countries directly and individually. The procedure is more or less similar. However, each application will be associated with its own set of fees in their respective currencies.
Yes. There is a provision for doing so provided your home country grants the same rights to US Citizens. Generally, a patent application needs to be filed in the home country and then filed in US within one year of the filing date in the home country.
The other option is to file a PCT (Patent Cooperation Treaty) Application in the country of residence to file patent applications that will be applicable in other countries. However, this will work if the countries are part of the PCT agreement.
Primarily, the invention must satisfy the initial criteria as described below:
Novelty – This requires that the invention description is not part of any prior published or unpublished patent application nor has it been in public use. The description should not have been part of any publication including those published by the inventor. After first publicly describing his invention, a patent application can be filed within one year. A year after public declaration, the invention is not patentable.
Usefulness – The invention must be useful although the interpretation of usefulness is vast. The marketability of the invention is not a parameter of its usefulness; nor does the applicant have to demonstrate that the invention is needed.
Obviousness – This is a subjective requirement. The invention should not be an obvious result of previous developments of any individual component. In the assessment of novelty and obviousness, the USPTO does consider relevant prior art, which is the state of technological knowledge up to the time of the patent application.
Once these criteria are satisfied, then a thorough patent search must be conducted with the help of Patent Attorneys. Own research must also be conducted to supplement the professional search for prior patents. This is necessary to avoid patent infringements and to increase the probability of acceptance.
- The owner is an individual who has not assigned, granted, conveyed or licensed any rights in the invention. The individual is under no obligation by contract or law to assign, grant, convey or license any rights in the invention. If the individual has transferred or is under obligation to transfer some rights in the invention to one more parties, can also qualify under small entity status either as an individual, small business or non-profit organization.
- The owner is a “small business concern” which means a business that meets the size standards set forth in 13 CFR 121.801 through 121.805 which state,
- Whose number of employees, including affiliates, does not exceed 500 persons.
- Which has not assigned, granted, conveyed, or licensed (and is under no obligation to do so) any rights in the invention to any person who made it and could not be classified as an independent inventor, or to any concern which would not qualify as a non-profit organization or a small business concern under this section.
- The owner is a Non-Profit Organization.
- The applicant, the inventor or the joint inventor (if any) should not have had a gross income (as defined by the IRS) exceeding three times the median household income for that preceding calendar year (as most recently reported by the Census Bureau). The “Maximum Qualifying Gross Income” to avail the fees at the micro entity discount rate is set at $169,548 as of March 2013.
- Not named on more than 4 previously filed applications.
- Determine the type of protection for your Intellectual Property you are looking for.
- Patent
- Trademark
- Copyright
- Check if your invention qualifies to be patented. This also involves conducting a search on prior patents.
- Determine the type of patent that you are looking for.
- Utility
- Design
- Plant
- Prepare the application. This also involves consulting a Patent Attorney, preparing the fees to be paid at various stages and to the Attorney (if his/her services are availed).
- Submit the initial application online.
- Coordinate with the Patent Examiner to resolve and answer any queries that arise within the given timelines.
- Receive the approval for the patent.
- Maintain the patent by paying the maintenance fees on time.
All patent applications received in the USPTO are published after 18 months in the USPTO gazette. These may be published earlier upon request by the applicant. However, there are a few exceptions under which patent applications are not published, which are:
- The application is no longer pending.
- The application is subject to secrecy order under section 181.
- There is a provisional application filed under section 111(b).
- An application for design patent is filed under Chapter 16.
This is a facility that has been provided by the USPTO for filing a provisional patent application to establish an early effective filing date. Filing a provisional patent application is purely optional and not mandatory. Provisional applications are not examined.
A profitable way for a patent holder is to issue a license to a company or several companies to manufacture, sell and/or use the product. As a patent holder, you are the exclusive holder of the invention and you earn royalty on the sales of the product. The licensee assumes liability of any product issues as they manufacture it. The downside is that licensing usage rights do not assure financial riches. Considering the royalty rates that vary from 5% to 20%, substantial amounts of the product will have to be sold to get good returns. It would also depend on the product performance in the market. If the product is a bestseller, then it will rake in the moolah else it could be a flop.
The rejected patents are not published in a public domain. Only, the received patent applications are published after 18 months from the filing date.
There is no assurance that you will get a response. However, the services of a Patent Attorney or a Patent Agent may be engaged to get an initial review done.
Yes, you can employ the services of a Patent Attorney or a Patent Agent only for the preliminary search. However, it is recommended that their services are availed for the life of the patent.
Previously patented invention copies can be availed of from the USPTO website on payment of a fee. There are various methods of requests that can be sent on payment of the requisite fees for each of the corresponding methods. Requests for copies of prior patents can be sent either online, by mail, by facsimile or in-person.
The USPTO will not recommend any specific Patent Attorney or Patent Agent. However, they do have a list of all the licensed Patent Attorneys on their website for the people to view and choose.
- One or more joint inventors.
- Registered patent practitioners who have a customer number.
- Ten or lesser patent practitioners, the names and customer numbers of each have to be mentioned in the power of attorney document.
- Invention is “Obvious” – This implies that the invention’s claimed elements are found in prior arts and there is reason to believe that these claimed elements can combine to build your invention.
- Lack of “Novelty” – This implies that there exists at least one prior patent, application, disclosure, article, product, etc., which resembles the claimed invention.
- Claims listed incorrectly – There are very strict guidelines for listing and writing the claims in a patent application that have been laid down by the Supreme Court. Hence, claims have to be accurately written else they will be a plethora of reasons for rejection.
- Inconsistent Drawings – drawings have to be strictly in black and white only. No other colour or shading is permitted. Presence of grey on the drawings is also a cause for rejection. Smudges, stray marks, or extra lines on the drawings will also be a cause for rejection of the drawings.
- Issues with written description – this is very subjective, however, there are three main reasons why this can be a reason for rejection. Firstly, the description may not describe the invention completely and/or correctly. Secondly, the manufacturing method and its usage may be missing. Thirdly, details mentioning the invention and its inventor may be missing or incorrectly mentioned.
When the first office action letter is issued, you will need to send your response within six months from the date of the mailer. This is applicable if there is no timeframe specified in the letter. If the timeframe is mentioned, it would be two to three months, if not, you have six months from the mailer date.
Yes, there are late fees to be paid as described in the USPTO fee schedule. Refer to the link (https://www.uspto.gov/learning-and-resources/fees-and-payment/uspto-fee-schedule).
Yes, there is a provision to file a petition to revive an abandoned patent application. USPTO does give a provision to file a revival petition within two months of the patent application abandonment mailer date. This is accompanied with the payment of the applicable fees.
In the event that the office action mailer mentioning the abandonment is not received, the applicant can still file for revival after two months and within six months of the abandonment date with payment of the prescribed fees.
After the patent application has been rejected twice, the next available forum to whom an appeal can be sent is the Patent Trial and Appeal Board. This would attract additional fees as outlined in the fee schedule on the USPTO website.
The schedule of fees on the USPTO website (link mentioned below) outlines the various amounts of the maintenance fees that are payable during the life of the patent.
Source: https://www.uspto.gov/learning-and-resources/fees-and-payment/uspto-fee-schedule
Patent maintenance fees need to be paid as per the schedule prescribed. If these are not paid as per schedule, USPTO provides a grace period to pay the maintenance fees with an additional surcharge. If there is a further delay, then the patent would expire. However, this can still be revived with payment of the due maintenance fees, surcharge and other applicable fees.
After the patent has been granted, minor clerical or typographical errors can be corrected on payment of a fee. These corrections should not constitute new matter nor should it require re-examination.
Yes, a patent can be transferred by means of an assignment in return for monetary returns. Alternatively, a patent holder can issue licenses to a company or a set of companies to manufacture and sell the product in return for royalty.
A design consists of the appearance and visual characteristics that are applied to a manufactured article. The subject matter of a design patent is related to the aesthetics and ornamental configuration of the article or the combination of the configuration and surface orientation. A surface design of an article cannot exist by itself and has to be applied to a manufactured article.
Design patents are valid for fourteen years from the date of the grant.
A design patent can have only one claim.
Plant Patents can be issued for new and unique, invented or discovered asexually reproduced plants that include cultivated sports, mutants, hybrids and newly discovered seedlings, other than tuber propagated plants or uncultivated plants.
Plant patents are effective for upto twenty years from the application filing date.
Drawings for a plant patent should be colourful as colour too is a distinguishing characteristic for plants.
Plant Patent applications are not permitted to be filed via EFS-Web.
Yes, the department of agriculture may receive instructions from the USPTO to furnish available information and to conduct appropriate research for special problems related to the patent application.
This applies specifically to patent applications filed in other countries and in US. The filing date of a patent application filed in another country can be used as the effective filing date for the same patent filed in the US subject to fulfilment of certain conditions and requirements. The conditions are specified in 35 U.S.C. 119(a)-(d) and (f), 172, 365(a) and (b), and 386(a) and (b), and 37 CFR 1.55.
Under the “Right of Priority”, subsequent applications can be filed within 12 months from the earliest foreign patent application filing date.
“Patent Cooperation Treaty” or PCT agreement enables patent protection for an invention by filing a single “international” patent application that will be effective in nearly 150 countries. This saves the hassle of filing the same application in each country.
A patent applicant can file for patent in a foreign country within six months of the filing date upon authorization by license from the Commissioner of Patents. This is applicable for a utility model, industrial design or model of an invention made in the US. Exception to this is that a license will not be issued pursuant to section 181 without concurrence of the heads of departments and the chief officers of the agencies who caused issuance of this order.
Yes. There is a provision for doing so provided your home country grants the same rights to US Citizens. Generally, a patent application needs to be filed in the home country and then filed in US within one year of the filing date in the home country.
The other option is to file a PCT (Patent Cooperation Treaty) Application in the country of residence to file patent applications that will be applicable in other countries. However, this will work if the countries are part of the PCT agreement.
Once a patent has been granted, if someone makes a small change and files a subsequent application, it will definitely show up during examination of the application. Whether the subsequent application is accepted or rejected would depend on case to case and how the responses are framed.
On the contrary, a patent for your invention gives you the exclusive right to use, build and sell your invention for a suitable sum of money. This can also be leveraged by selling licenses to manufacture your invention to manufacturing companies and/or units in which they will take care of the issues related to the product. This will ensure a royalty income in the range of 5% to 20%.
Patents provide protection to individuals for their creation and uniqueness of their invention. This also gives them an opportunity to monetize their invention by the process of licensing their invention to manufacturing companies to manufacture and sell their invention in bulk. Alternately, they can also sell their patent by assigning it to another company for a suitable sum of money. The inventor(s) and/or patent holder(s) can sue patent infringers for monetary compensation.
