Protecting Your Idea With Patents II
Welcome to Protecting Your Idea With Patents Part II
I am Nancy Flint and I regularly work with my clients to protect their ideas with patents.
When most people think of a patent, they are thinking of what is called a utility patent. Utility patents cover inventions like structure and methods.
For a utility patent, you can file a non-provisional application or you can file a provisional application.
While provisional applications are less expensive to file, you must file a non-provisional application within 1 year to have the application examined for a patent.
The provisional application is a placeholder for a filing date and can never become a patent. There is no such thing as a provisional patent, there is only a provisional patent application.
A provisional application must, however, still describe the invention in full detail for you to claim that invention in the non-provisional application.
The most important part of the patent application is the “claims” because the claims define your patent right.
Patent infringement means that someone has made the product or process described in one of your patent claims. This is why your claims MUST be written in a way that they cover what you want to protect.
Another type of patent is the design patent. This covers the ornamental design of an article.
This type of patent is useful when there are few or no moving parts of internal structure to be protected. You should consider a design patent when other products exist that perform the same function but have different designs.
The U.S. gives you a one year “grace period” after you publicly use your invention or offer it for sale to file your patent application.
But you will lose your right to a foreign patent in many countries if you publicly use or sell your invention even ONE DAY before you file your U.S. application.
The costs of preparing, filing and prosecuting a patent application depend on the type of patent and the complexity of the invention.
It also depends on whether you are a large entity, a small entity or a micro entity.
Costs include attorneys’ fees for drafting the application; filing fees; fees for prosecuting the application; issue fees; and, in the case of utility patents, maintenance fees
While you can draft and prosecute your own application, there are risks that you should be aware of before undertaking this.
For example, you cannot make changes to your application after it is filed. If you leave details out, 2 years later you may find out when you hear back from the USPTO that you need those details to overcome a prior art rejection. It is too late at that point to add those details to the application.
Everything that you say during prosecution of your application can be used against you by the USPTO during prosecution and also by opposing counsel during litigation, and you can limit the “scope” of your patent claims by your statements.
If you make a mistake, your application may be abandoned. If that happens, the invention is in the “public domain” and it is then free for anyone to use.
You need to consider whether you want a foreign patent early on. There are international treaties that allow you to first file a U.S. application, then file foreign applications within a certain amount of time. The treaties are complex and have strict deadlines.
Before filing your patent application, (1) conduct a search to see if your idea is novel; (2) consider whether you want foreign protection; and (3) file in a timely manner so no one beats you to the Patent & Trademark Office.
Contact me for a free consultation on protecting your idea with patents.