Just about anything is patentable in the U.S. if it meets a few qualifications:
First, it has to be new. You can’t patent something that’s known to the public, even if no one ever patented it before.
Second, it has to be useful. The idea has to solve a problem and provide some useful benefit. Sometimes people will try to get a patent on a perpetual motion device, but perpetual motion violates an accepted law of nature, so the Patent Office will reject the claim as physically impossible, and therefore unable to provide any useful benefit.
The next thing is- it can’t be obvious. For example, imagine the guy inventing the first table. If that table happened to have a square top…. His competitor couldn’t make a table with a round top and then claim that as a separate invention.
Finally, the claims have to be worded properly.
So, what kinds of things are patentable? Lots of things- including all manner of physical devices, computer software, methods of doing business, methods of production, methods of sourcing, living creatures other than human beings, and so on.
If you have an invention and it meets the criteria, you may well have something that’s patentable.
What is a provisional application?
In March 2013 the US adopted a first-to-file system. Basically, that means in a race to the patent office; whoever files first gets the patent. A provisional patent application allows an inventor to file quickly, without having to meet all the requirements of a formal utility patent application. It is only a first step, but it gives a one year window during which an applicant can file a formal application. If no formal utility application is filed during that period, the priority is lost.
Although provisionals can be extremely short- perhaps only a few sentences and a couple drawings, and can omit the usual sections such as Background, Brief Description of the Drawings, and so forth, they must still satisfy the enablement, best mode, and written description requirements of a utility application.
Although not required, it is a very good idea to include at least some claims in a provisional.
Provisional applications are not examined by the USPTO. They hold your filing date for one year at which time you must file a regular utility application which then goes through prosecution.
Another benefit of a provisional application is that, if no formal application is ever filed off of the provisional application, the provisional application is never published. Thus, a provisional application provides a way to start the patent process for an invention without disclosing the invention to competitors.
An additional benefit of a provisional application is that the year of the provisional does not count against the patent term.
One critical word of warning. The inventor gets priority only for what is disclosed in the provisional. For new material added in a subsequent utility application, the inventor gets a second priority date.
The filing fee for a provisional is 140 dollars for small entities and 70 dollars for micro-entities. Attorney time to assist with drafting and filing can run anywhere from 500 to several thousand dollars.
Absolutely. Provisional applications are extremely useful where an inventor expects to develop some new wrinkles on his invention after filing of a first application. An applicant can’t file a second provisional application claiming priority to an earlier provisional application, but he can serially file multiple provisional applications, and then file a formal application that claims priority to any combination of provisional applications filed within the previous 12 months.
Another great use of a provisional application is to provide a quick and inexpensive priority date for a continuation-in-part (CIP) application, where the applicant files a new application adding additional disclosure.
A utility patent protects functional features- such as the way an article is used and works. A coating on the lens of a pair of sunglasses might be the subject of a utility patent because the coating is functional.
A design patent, on the other hand, protects non-functional aspects. A stylistic shape of the lens of a pair of sunglasses might be the subject of a design patent because the shape is merely ornamental. It has no function.
Utility patents are typically much more expensive to obtain. They can cost anywhere from 7 to 10 thousand dollars or more to search, draft and file with the patent office, and probably at least another five to seven thousand dollars by the time they are issued. They also take longer to get- from 2 1/2 to 4 years or more.
Design patents are more narrowly focused, so they normally cost less: a thousand dollars or less to place on file, and likely less than another thousand dollars by the time they are issued. And they typically take less than a year to issue.
Getting a patent in the U.S. typically costs between 15 and 20 thousand dollars. So, where does all that money go?
The process starts with a thorough search to see if the invention already exists someplace. If not, we work with the inventor to really understand the fullest potential of the idea, and then move forward by making drawings of the invention and carefully wording the patent according to the formalized rules required. It will then be submitted to the Patent Office with the necessary filing fees. Over the next several months or years, there will likely be quite a bit of back and forth- with the Patent Office finding issues and your Lawyers arguing for your patent.
Let me pause a moment to address a related question: you might wonder why, if you could technically file a patent yourself, you are paying someone else so much money to do it for you? The answer is that the process is not friendly- not at all easy. Every step of the way is going to be littered with what sound like rejections, terminology you don’t know, and discouragement. And once you start the process, it’s very hard, and often times impossible to correct mistakes made at the start of the process.
Your lawyers are going to advocate for you, and there is a peace of mind that comes with that. Yes, you pay for the expertise, but the reason we exist is because the process is so difficult to navigate. So back to where your money goes.
Once everything is ironed out and the Patent Office agrees you have a valid invention, another fee must be paid for them to grant you the official patent. Some firms will charge upwards of 30 thousand dollars just to file a patent, but a higher price doesn’t guarantee a better job.
The reason for the extra cost is most firms focus on the length of the patent rather than quality. This increases billable hours and is good for the Firm, not so much for the inventor.
On the other hand, it would be difficult to write a decent utility patent application for less than 6 or 7 thousand dollars. Keep in mind that if you want the protection extended to foreign countries, it will typically run about 15 thousand dollars per country.
The short answer is: Years. From around two and a half, to three or four years. Certain business method and Internet related inventions are taking 5 to 7 years.
The longer version covers WHY it takes that long.
The number one reason is that the Patent office is really backlogged! Over half a million patent applications are waiting in line, so it can be a few years before they even get to yours.
The second thing is- in almost every instance, the Patent office responds with some kind of refusal on any number of grounds.
You might think: Well if the lawyer were any good at his job, he’d be able to write something that would get by the first time! …. and he could. But his job is not just to get a patent issued, his job is to make it worth something. Patent applications that get through the first time are probably too narrow- meaning competitors can easily get around your patent and circumvent any value you’d get out of it.
The ideal is to get as much value out of the patent as we can by broadening the possibilities. The Patent Office pushes back against this and it is this process of back and forth that costs so much time.
There are some exceptions to the long wait times. The first is to pay more money and expedite the process.
The second is to file a petition for special treatment because the inventor is at least 65 years old.
But generally, the backlog is going to cause a long wait, and yes, it can be really frustrating. However, the last thing an inventor wants is to get a cheaper… but useless patent.
The term “prior art” is used in the patent field to mean any information that is relevant to determining patentability and scope of a claimed invention. Prior art includes patents, journal articles, newspapers and other publications, as well as prior use, sale, and even offers for sale of embodiments of the invention.
In the United States the scope of the prior art is determined by 35 USC § 102, which is a labyrinthine piece of writing even by government standards. There is a thick chapter on this in Chapter 2100 of the MPEP that delineates exactly what is meant by the terms “printed publications,” “on sale,” “public use,” “the invention,” “in this country,” and various other terms used in section 102.
All extrinsic materials cited in the application should be expressly incorporated by reference: (a) to provide a source for experimental data and other information that might be needed during prosecution; and (b) to provide express for enabling the currently claimed invention, without wasting a lot of space in the current application. It is a good idea to insert the following language shortly after discussing the first reference.
“This and all other referenced patents and applications are incorporated herein by reference in their entirety. Where a definition or use of a term in an incorporated reference is inconsistent or contrary to the definition of that term provided herein, the definition of that term provided herein applies and the definition of that term in the reference does not apply.”
A petition to make special is a request to push your application to the top of the stack, which can cut years from the time required to receive the first office action. There are currently 12 circumstances listed in the MPEP that qualify for such special treatment. Those are (1) prospective manufacture; (2) current infringement; (3) applicant in poor health; (4) applicant at least 65 years old; (5) inventions that materially enhance the quality of the environment; (6) discovery, development or conservation of energy; (7) inventions relating to recombinant DNA; (8) the applicant submits a statement that a preexamination search was made; (9) superconductivity materials; (10) HIV/ AIDS and Cancer; and (11) countering terrorism; (12) biotechnology filed by small entities. These petitions are routinely granted, but add $750 or more to the cost of filing.
Accelerated examination is actually a species of petition to make special, but with additional requirements. Among other things the application can only have 20 claims, and no more than 3 independent claims. In addition, the applicant must demonstrate that (s)he did an adequate patentability search, and must distinguish all of the references. If all the requirements are satisfied, the patent office guarantees that they provide sufficient resources to push the application through to final disposition (allowance or final rejection) within 12 months from the filing date. Added cost is at least $2500.
Petitions for accelerated examination must be filed when the application is filed. So applicants with long-delayed applications may want to file a divisional to take advantage of this procedure.
No, you don’t. You can draft and file a patent application by yourself. You can find guidance in Strategic Patenting and other books, as well as at the USPTO website. But the reality is that you will almost certainly do a bad job of it. Inventors and business people should understand how to write claims and specifications, and what distinguishes good claims from bad claims. That knowledge allows them to substantively assist in the patenting process. It takes many years to become good at drafting patent applications, and it just isn’t realistic for an inventor to write a good application himself.
First of all, the patent office is not rejecting the invention. The office is rejecting the pending claims. The invention may well be patentable with different claims. Second, it is important to appreciate that the patent office almost always rejects patent applications on the first office action. Indeed, that is usually a good thing. If the patent office allows the claims as filed, the filer is probably guilty of having sought claims that are too narrow. In any event, the correct response is to amend the pending claims and then argue that the amended claims are allowable. Sometimes the patent examiner is just wrong in issuing the rejection, and then the proper response is to point out the error. Patent responses are formalized, and will be rejected out of hand if they fail to follow the proper format.
Final rejections just mean that the patent office wants more money. They spent the filing fee searching the claims and issuing office actions, and now they want more money to continue the process. The proper response is usually to file a Request For Continuing Examination (RCE), along with a preliminary amendment that amends at least one of the rejected claims. The process of rejection and response can go on for years.
When we file through the European Patent Office (EPO), all countries necessarily have the same claims (albeit as translations) because there is only one prosecution. Outside the EPO countries, however, the claims almost always vary from country to country. We could minimize the differences by conforming the claims in each country to a single updated set, but the degree of conformity would still be limited by the fact that the patent laws differ from country to country. In addition, conforming the claims in each country to a single updated set would mean that any obnoxious examiner in any country would have a choke hold on the breadth of claims in all countries, and the common claim set would be unnecessarily narrow. For all these reasons, we do end up with different claim sets across different countries, and that is the correct result.
The patent offices in New Zealand and some other countries give deadlines for “acceptance of the application” and applicants often worry that their applications will go abandoned if that deadline is not met. The reality is that the deadline is set to push the application forward. If the applicant is responding correctly to office actions, and in other ways the prosecution is proceeding properly, the examiner will usually keep extending the deadline.
Even if the deadline is reached, the applicant can appeal the then-existing rejections, and continue the prosecution.
An applicant is entitled to file new patent applications off of a currently-pending application. This allows for an applicant to obtain additional patents for subject matter that was discussed but not claimed in the original application. This can be done repeatedly, effectively “daisy-chaining” patent applications together to create a patent family.
In patent-speak, we call a prior link in the chain the “parent” application and the applications filed off of the parent, “child” applications.
One of the biggest benefits of filing child applications is that, for all of the subject matter carried over from the parent(s), the benefit of earliest filing date of the parents carries over to the child applications. For patent families with long chains, this means that an applicant could still be filing claims with a benefit date years in the past, long after the original parent application was issued!
To be able file a child application, the parent application must still be pending at the Patent Office. This means the parent must not have issued into a patent yet or have been abandoned.
Why would you file a child application?
- To claim subject matter allowed in a parent application more broadly or from a different perspective;
- To claim different inventions that are described but not claimed in the parent application;
- To keep the subject matter “alive” at the Patent Office, which allows you to draft claims to adapt to developments in technology and the marketplace;
- In certain circumstances, to add additional developments to a prior invention while keeping the possibility open to keep claiming inventions from the parent application.
There are three types of child applications: a continuation application, a continuation-in-part application and a divisional application. These are discussed in more detail in this FAQ.
A continuation patent application is a type of child application that is filed with the goal of obtaining additional patent claim coverage over variations of the invention claimed in the parent.
Situations where a continuation application may be appropriate include:
- If the Patent Office allows claims that are narrower than what we feel are actually allowable, it may be beneficial to take the allowed claims to get an issued patent and then fight for the broader claims in the continuation.
- If there are aspects of the invention that should be claimed but do not necessarily fit with the claims of the parent, then a continuation application would be a good way to cover those aspects of the invention.
- To tailor the claim language of allowed parent claims to more specifically cover a competitor’s product.
Since the invention claimed in the continuation application is described in the parent application, the continuation application will receive the benefit of the earliest filing date that applies to the parent application. However, to take advantage of the parent application’s filing date, the continuation application must be filed while the parent application is still pending.
The costs of filing a continuation application are significantly lower than those of an original patent application because most of the work has already been done in drafting the parent!
In the real world, development and refinement of an invention does not stop simply because a patent application is filed. Often, the further development of an invention can lead to new features that are worthy of inclusion in a patent application.
In certain situations, a continuation-in-part (“CIP”) application is the appropriate way to incorporate these new features into the patent family.
A CIP application is a child application that includes at least some subject matter carried over from a parent application, as well as new subject matter that is not in the parent.
An important wrinkle of a CIP application is that claims that are entirely derived from the subject matter carried over from the parent application can take advantage of the priority date of the parent, while claims including anything new to the CIP can only rely on the CIP’s own filing date.
Because of this wrinkle, CIPs tend to be filed primarily in situations where the applicant wishes to keep the parent subject matter “alive” at the Patent Office for subsequent applications or where the CIP is filed soon after the parent is filed.
In most other situations, it’s often better to just file a new application with the new subject matter without claiming the priority.
If this sounds like it applies to you, we can discuss the advantages and disadvantages of a CIP as it applies to your specific invention and application to help you make the most informed decision possible.
The cost of a CIP tends to be lower than that of drafting a new application because at least some of the subject matter is brought in from the parent. However, the cost can vary depending on the amount of new subject matter that is brought into the CIP.
Sometimes, a patent application can describe more than one invention. For example, a machine might be made up of components that are independently patentable. However, patent laws specify that each patent is for a single invention. Accordingly, when you file a patent application, you pay the Patent Office a fee to search and analyze the patentability on a single invention.
If the Patent Office decides the claims in your patent application are directed to multiple inventions, the Office will require that you choose which of the different inventions you want to proceed with.
The claims to the other inventions are not necessarily lost. A divisional application is a type of child patent application that allows you to obtain a patent for those other independently patentable inventions.
Since the invention claimed in the divisional application is described in the parent application, the divisional application will receive the benefit of the earliest filing date that applies to the parent application. However, to take advantage of the parent application’s filing date, the divisional application must be filed while the parent application is still pending.
The costs of filing a divisional application are significantly lower than those of an original patent application because most of the work has already been done in drafting the parent!
37 CFR §41.31(a)(1) states that “[e]very applicant, any of whose claims has been twice rejected, may appeal from the decision of the examiner to the Board by filing a notice of appeal.” Unfortunately, what seems like a simple rule could be tricky to understand.
The issue is whether claims that were rejected once, and then only slightly amended before being rejected again, can be counted as claims having been twice rejected. Amended claims are obviously not the same claims, but they could be almost the same claims. That issue was addressed head on in Ex Parte Lemoine, 46 USPQ2d 1420 (Bd. Pat. App. & Inter. 1994). There the PTAB held that there is no “exactness requirement” in the “twice rejected” rule. Determining whether the claims have been only slightly amended, and therefore qualify as the same claims, is a matter of judgment. The bottom line is that the dividing line is going to be up to the examiner. Likely if the scope of the claims has changed so little that another rejection would simply reiterate a prior rejection, one can file an appeal, even if the subsequent rejection is non-final.