Patents - Frequently Asked Questions

What can and cannot be patented?
What can be patented – utility patents are provided for a new, non-obvious and useful:

• Process
• Machine
• Article of manufacture
• Composition of matter
• Improvement of any of the above

What cannot be patented:

• Laws of nature
• Physical phenomena
• Abstract ideas
• Literary, dramatic, musical, and artistic works (these can be copyright protected). Go to the Copyright Office.
• Inventions which are:
• Not useful (such as perpetual motion machines); or
• Offensive to public morality

Invention must also be:

• Novel
• Non-obvious
• Adequately described or enabled (for one of ordinary skill in the art to make and use the invention)
• Claimed by the inventor in clear and definite terms

What is a patent?
A patent for an invention grants an inventor legal ownership rights for his/her invention. Once a patent has been obtained, an invention may not be lawfully manufactured, copied, used, sold or imported into the United States without the inventors consent. The patent laws provide for the granting of patents in three major categories: utility, design and plant patents.

Which type of patent will protect my invention?
A utility patent protects the "structural and functional" aspects of an invention and is normally applied for in those instances where it is desired to protect how an invention is made (its structure or composition), or how it works, or how it is used. The utility patent can be issued to any person who invents a new, useful and non-obvious (1) process, (2) machine, (3) manufactured article, (4) composition of matter, or (5) any new and useful improvement to any such inventions. Process means any process or method. Manufacture refers to articles that are made. Composition of matter relates to chemical compositions and may include mixtures of food ingredients in recipes, as well as new chemical compounds.

A design patent is strictly directed to protecting the overall appearance and decorative aspects (i.e., how it looks) of an invention. It can be granted for a new, original and ornamental design of an article of manufacture. Design patents, if obtained, will not include protective coverage for the structural and functional aspects of an invention. Design patents are appropriate for certain inventions, but not all. For example, recipes do not qualify for design patent protection. However, a food container or packaging for a food product may qualify for design patent protection. Similarly, the actual shape and appearance of the food product itself might be design patentable.

A patent attorney should review the facts of your case in order to determine which type of patent is best suited for protecting your invention. Please contact our office for further details.

How should I begin the patenting process?
The first step in the patenting process is to contact a qualified attorney. The attorney will review your case and make a recommendation based on the specifics of your invention. In order to determine the novelty of your invention, the attorney must conduct a patent search. The patent search will inform the attorney about prior inventions currently in existence that may be similar to your invention. A patent search enables the attorney to make an informed decision regarding the potential patentability of your invention.

Performing a novelty search does not provide "Patent Pending" status. "Patent Pending" status is achieved only when an application for a patent has been filed in the patent office. If it is determined that an invention might be patentable, it is important to pursue "Patent Pending" status in a diligent manner and file your application promptly. "Patent Pending" status can be important if a dispute arises as to who was the first inventor of the invention.

What are the advantages of a provisional patent application?
One advantage of a provisional patent application is that you may display "U.S. Patent Pending" on your invention after the PTO provides you an official filing receipt. A provisional patent application establishes your priority with a "date of invention" and is much faster and easier to file than a non-provisional patent application. A non-provisional patent application can take months to prepare, and it can cost several thousand dollars or more.

Furthermore, you can tell people about your idea, seek funding to develop your invention, even begin selling your invention, with confidence that the conception date of your invention has been documented at the PTO. This way, you can assess your invention's complete potential before spending significant sums of money on a non-provisional patent.

What are the limitations of a provisional patent application?

The U.S. patent law, specifically, 35 U.S.C. 112, requires the specification to contain a sufficient written description to show possession of the claimed invention by the inventor(s) at the time of filing. The specification must also provide sufficient teachings to enable one of ordinary skill in the art to make and use the claimed invention without undue experimentation at the time of filing. In addition, it must disclose the best mode of practicing the claimed invention known to the inventor at the time of filing. While the USPTO does not examine provisional applications, these applications must still satisfy the requirements of 35 U.S.C. § 112 in order for a later filed non-provisional application to claim the benefit of the provisional filing date. For instance, in order for a claim of broad, intermediate or narrow scope to be entitled to the priority date, those embodiments must be disclosed in the provisional application. As the priority analysis proceeds on a claim-by-claim basis, each claim of the non-provisional application must find support in the provisional to claim the priority date.

A provisional application will never mature into a patent. A provisional application becomes automatically abandoned when its pendency period expires 12 months after the provisional application filing date by operation of law.

You must file a non-provisional application claiming benefit of your earlier provisional application filing date before the provisional application pendency period expires in order to preserve any benefit from the provisional application.

Please note, a provisional patent application is not examined on its merits. A provisional patent application records your date of conception at the PTO. Without filing a non-provisional application, you will not obtain patent rights to exclude others from making, using and selling your patent application.

Further, an applicant whose invention is "in use" or "on sale" in the United States during the one-year provisional application pendency period may lose the right to ever patent the invention if a non-provisional patent application is not filed within such a one-year pendency period. If you add new or different information about your invention, it will not receive the benefit of your earlier provisional application filing date when you file a non-provisional patent application.

What is an office action and how does the attorney respond?
After your patent application is filed at the U.S. Patent and Trademark Office, an examiner will be assigned to your application. The examiner will review your patent application to determine whether your invention claims patentable matter. If the examiner decides the invention is not patentable, he/she will send us his/her reasons therefore in an office action. The patent attorney can then respond to the office action by making legal and technical arguments in an amendment. After filing an amendment, the examiner will reconsider his/her position and either issue a statement that the claimed invention is patentable or not. Often, several office actions and amendments may be filed during the course of prosecuting the patent application.

If the examiner maintains a position of unpatentability, there are several courses of action available with one option being an appeal to the Patent Appeals Board. At the time, your patent attorney can discuss the options available to you in light of the examiner's position and your business goals. Most patent applications either mature into a patent or are otherwise disposed of by the PTO within two to three years, depending upon the applicant's field of endeavor.