Mechanics of US Patents
1) What is a Patent?
A US Patent is a right to exclude others in the US from making,
manufacturing, or selling, a device or a device made according to the claims
of the subject patent.
This patent coverage lasts from date of issuance to 20
from the filing date (if filed after June 8, 1995), or 17 years after
issuance (if filed before
June 8, 1995). The most important underlying principle
is that a patent is an exchange between the public and the
inventor. In exchange for fully describing the invention and
advancing the knowledge of the art of the invention, the inventor is
given a monopoly to practice that invention for approximately 17 years
(20 years less approximately 3 years of examination at the PTO - Patent
and Trademark Office).
This exchange means everything about the invention needs to be fully
explained in the
specification of the patent.
2) What are the parts of a Patent?
There are two basic parts of a patent. The first
part is the "Specification", which comprises the drawings and written
description of the
invention, which includes an optional review of the prior
art (what people did to solve the problem before your solution).
The specification is written to explain fully and completely
to "one skilled in the art" how to practice the invention to a
sufficient level of detail to enable them to build your device from
your patent. This standard of disclosure often bothers inventors,
but it is an essential element of the intrinsic exchange of a
patent. The specification is important because new material
cannot be added to it during the life of the case.
The second part of the patent is the
"Claims" section, which succinctly describe exactly what is the
property of the patentee. The claims are generally amended and
modified during the course of patent prosecution to overcome rejections
by the PTO.
The claims must be fully "enabled" by the specification, and
terminology used in the claims is understood according to how it was
set forth in the specification. If the claim recites a
the specification only describes a bipolar transistor, the claim will
interpreted to mean only that particular type of transistor,
and not an FET or any other type of device.
The inability to amend the specification after filing to
enable claims is one of the principal reasons that careful drafting of
the specification is critical.
3) What is patentable?
A machine (device), method or process, method of
manufacture, or composition of matter are all statuatory classes for
Utility patent is permitted. Patent law is an "opt in" system -
any inventor is entitled
to a patent unless the invention:
- was described in a patent or publication more than 1 year ago (
35 USC 102, 103)
- was offered for sale more than one year ago (35 USC 102)
- was invented by someone else (35 USC 102)
- is obvious to one skilled in the art (35 USC 103)
- is not properly described in the patent application (defective
specification 35 USC 112)
- was abandoned (see below relating to "continuous reduction to
- has no utility (perpetual motion machines, for example)
In contrast with the countries of the rest of the world,
where patent priority goes to the first person to file a patent, the US
is a "first to invent" country, where the inventor receives priority
according to the "date of conception" so long as it is followed by
diligent reduction to practice (the invention was not abandoned).
When your later-filed patent is rejected over issued patent prior art,
you may file a proper "antidating affidavit" showing first conception
and continuous reduction to practice, which will be compared with the
filing date of the subject prior art reference. If
successful, the PTO then removes the prior art reference, thereby
allowing your patent to issue. The PTO does not disturb the
earlier issued patent - you merely now have the right to enforce your
patent rights on the prior art assignee, which may become quickly
complicated as the prior art reference probably didn't invent their
device on their filng date, either. The US is very slowly moving
towards a "first to file" system, with patent application publication
being the first step in this process.
4) What are the types of patents?
A Utility patent covers a utility (device, process,
method of manufacture, or composition of matter).
A Plant patent covers a plant which is propagated
through asexual reproduction (Mr Lincoln tea rose, for example)
A Design patent covers "an ornamental design", such
as the appearance of the Apple MacIntosh computer.
A Reissue patent is just a Utility patent that
required revision or correction after issuance.
You can download and view some of these types of patents for free here
5) What are the types of Utility
A) A non-provisional patent application is a
complete and proper patent application ready for examination. Of
non-provisional patent applications, there are 4 types:
1) A regular patent
application (referred to as "the parent" if any of the below cases
occur). In general, the below types of "child applications" must
be filed during the pendancy of the parent application:
2) A continuation-in-part
(CIP) application is a new patent application where new matter is added
to an existing parent
patent application. The new material gets the filing date of the
CIP, while the old material retains the filing date of the parent
3) A divisional application
is a new patent application filed when the PTO issues a "restriction
requirement", generally because the
parent application contained more than one invention, and the inventor
is being asked to select one invention, and is allowed to file a
application on each the other inventions, preserving the filing date of
the parent application on each of the divisional applications.
4) A continuation
application is filed when the parent case has had claims twice rejected
for the same reason, and the applicant desires to continue prosecution
of the original case. There are several mechanisms to do this,
all of which preserve the original filing date as long as new matter is
not added to the application - otherwise it becomes a CIP application
B) A provisional patent application is one that is
missing a critical element required to secure a filing date, or was
filed specifically as a provisional patent application. A
basically sits in a holding tank without being reviewed or considered
until it is
converted into a non-provisional case, which must be done within one
of filing, or sooner if it was filed with certain types of filing
6) How can I avoid the one year after
public use bar?
Show your device under "non-disclosure", and don't
offer it for public use or sale until it is ready to sell. Then,
use this one year after public use interval to sell vigorously, and
apply for a patent during this
one year window. Alternatively, if the invention has great value,
and an early patent is desired, an early filing may be justified, but
this should be done carefully to avoid patenting an idea that doesn't
in the product. This "avoid public use until sales start" policy
has some problematic
implications for networking companies and website companies, for
example, where some form of public use is hard to prevent, and
non-disclosure is meaningless.
7) Can I use my US filing to file for
a patent in another country and visa versa?
Yes. The Patent Cooperation Treaty (PCT) is a
reciprocal agreement whereby a US patent may be filed abroad after
foreign filing license (which is customarily printed on the patent
filing reciept issued by the PTO 4
months after filing), but prior to one year after the US filing
date. There cannot be a non-publication notice in effect at the
time of the foreign filing. While PCT is a common mechanism to
file abroad, the per-country filing fees, verified translation fees,
maintenance fees, etc tend to add up quickly.
8) What happens during "prosecution"?
Approximately 1-3 years after filing, an "office
action" is sent by the PTO advising the applicant of the allowability
of claims, and this begins a series of correspondence between the
inventor or his agent and the PTO. The claims are being reviewed
against the prior art and the specification, and these claims are
usually the subject of rejections over prior art or objections over
form and presentation. During patent prosecution, the
claims are amended to overcome the prior art, or to better recite the
mechanisms described in the specification, after which they become
"allowable". The specification
cannot be amended without filing a new patent application (called a
"continuation in part" application). It is essential that the
specification of the originally filed application be as complete as
possible when it is initially filed.
is a patent good for?
Think of a patent as an expensive fence. There had better
be something really good inside to be worth the expense of building and
maintaining the fence.
2) What is the best use of a patent?
- To an individual who intends to personally own the patent:
The patent can actually represent a liability rather than an
In addition to paying many thousands to file and prosecute the patent
application to issuance, you then have the privilege to pay thousands
more to the PTO
to maintain the patent. For those who have an idea and imagine
royalty checks- it generally doesn't happen
except on late night television promotions and under very rare
actual life circumstances. Getting those royalty checks requires
($250K and up) litigation over many years resulting in a settlement in
the form of a royalty agreement. All of the big patent
settlements make it into the newspaper headlines, but none of the folks
out of money along the way do.
- To a company that contemplates manufacturing a product
based on the patent: proceed cautiously. Filing a
patent too early can be expensive, as the product development can go in
different ways than was described originally in the patent
application. Since the patent specification represents the body
of information that future claims can be drawn to, a product change
that doesn't make it into the patent represents functionality that
cannot be claimed. Typically, when an early patent application is
filed on an undeveloped product, a second patent application follows
(often in the form of a Continuation in Part (CIP) application) which
the actual product, and then two patents issue for the product when one
would have sufficed.
- To a company that has completed product
development and is ready to offer for sale the product containing the
invention: you have one year after first public use, first offer for
or first actual sale to apply for a patent.
- If your product has been offered for sale for more than one year
and contains the invention - its too late to file! There is
a 35 USC 102(b) on-sale bar
preventing the application for a patent. Future improvements to
the product in the form of new inventions are still patentable within
the one year window following offer for sale, however.
Patents are most useful in the hands of an entity
to fully defend them. For a startup, this often means building a
patent portfolio which covers the products manufactured and sold by the
company, and then when sales grow to sufficient levels, the patent
portfolio represents one component of Intellectual Property (IP) value
as part of protecting the sales of the
company against competitors who may copy the protected product
features. In the case of an acquisition, the patents
IP value in the form of protection of the current and future sales of
the product to the
3) What is the worst use of a patent?
Late night television advertisements convincing
inventors to pay for "invention promotion". See
what the USPTO says about them.
Why don't I just Patent it Myself?
1) I read a book that says I can just file my own patent. Why
shouldn't I just do that instead of hiring you?
You are certainly welcome to do this. Here is
the expressed theory on how this will work:
1) The inventor does a writeup of
his own case, and files it with the USPTO as a non-provisional
2) After 2-3 years of
sitting in the examination queue, the case comes up for examination,
and the examiner finds patentable matter among rejectable claims.
3) Using a seldom-used section
of the MPEP, the examiner "writes claims for the applicant where it is
clear that the application contains patentable matter".
It would be great if this
What actually happens is the
examiner correctly finds the specification missing essential matter,
issues 35 USC 112 rejections, which are for lack of enablement -
the patent does not fully and completely describe the thing it is
claiming. Often, 35 USC 102 prior art rejections are provided as
well. The problem is that the only way to overcome these
rejections on a thin or incomplete writeup is to add new material, and
the only way to do this is to file a "continuation in part"
application, which is a new case with a new filing date, effectively
starting the entire patent process over. The filing fees and
from the first case are lost, and the case proceeds from a fresh start,
years after the original filing. If the inventor has been selling
a product based on this
patent application for more than a year, a statuatory one year "on
sale" bar prevents filing the required Continuation in Part, and
the original case dies a quiet death with irrecoverable 35 USC 112
Surprisingly enough to the filing
inventor, this fatal trajectory occurs all the time. So far, I've
been handed 12 of
these cases to attempt to rescue after a fatal office action was
of these cases were irrecoverably flawed at the time of filing, and the
inventor didn't find out until they were rejected for 35 USC 112 by the
PTO, many years after the
initial patent filing.
Why don't I just file a
1) What is a provisional patent, and
do I want one?
Provisional patent status used to be the harsh penalty for
filing an application which was received by the PTO with one of the
following fatal flaws:
- Failure to include a specification (pretty hard to do)
- Failure to identify at least one inventor
- Failure to contain any required drawing
- Failure to set forth at least one claim (which is the preferred
form of intentionally filing a provisional application)
The penalty for filing a flawed application in this manner is refusal
of the PTO to issue a filing date until the fatal defect is
remedied. Until then, no patent examination occurred - the patent
sat in repose until the missing element was submitted, upon which it
would be accorded a filng date and placed in the examination queue.
2) So what is a provisional patent
A provisional patent application is valuable in the
case where multiple simultaneous inventions take place, but the value
of the inventions will not be known until within a year from the
initial filing. The best
example is a pharmaceutical company which develops 200 different drugs
common family, but doesn't know which ones to file patents on, and
won't until some initial clinical trials are conducted. So
the pharmaceutical company files provisional patent applications on all
200 drugs, and hope the
clinical trials show promise for some subset that they then convert
into non-provisional (regular) patent application within the next
year. All the other applications are then
abandoned. An alternative way to do this on the non-provisional
track is to simply describe all of the drugs in a single patent
application, and then amend the claims in favor of the ones that work.
3) But the USPTO has forms for
provisional patent applications!
If there is urgency to file a patent application, then file a
proper non-provisional case, which will get placed in the examination
queue. When non-provisional patent cases are written, they are
written complete with claims, and the claims are reviewed against the
patent specification to verify that each and every element of the claim
present and fully described in the specification and drawings. In the
written claims, it is not
possible to test the specification to determine whether it is fully
Since claims have to be written to perform this 35 USC 112 enablement
entire application might as well be filed as a (regular)
How much will it Cost?
1) What is the cost for filing a
non-provisional utility patent application?
The preparation fee to prepare the application depends on how
clearly written the original writeup is, how complicated the case is,
and how crowded is the field of art (number of previous patents and
publications on the same topic). Very generally, patent
applications are in the range of $5,000-$9,000 to prepare and file,
plus costs for formal drawings and actual PTO fees. If you
provide a complete writeup, we can provide a written quote for your
2) I don't have the thousands of
dollars to file a proper non-provisional patent application. What
should I do?
Product development is expensive compared to patent
expense, and product promotion
and sales is very expensive compared to product development. If
patent expense of the new product represents a large fraction of the
operating budget of the company, something is seriously
wrong with the execution strategy for the company. It is probably
wiser to spend the scarce resources of the
company on building a prototype and making initial sales to verify
there is a market for the product. If you introduce your
investors to distributors excited about your product, you'll have no
problems raising money for your company. Just remember to file
your patents within
a year of first public use or sale.
Disclaimer: The information on
this page is subject to change and review, and is provided for
informational purposes only. The information contained herein is
not legal advice. Some content, particularly relating to value
judgements on uses of patents and the like, is purely the author's
opinion. The patent practice of www.File-EE-Patents.com is
restricted to filing and prosecuting patents before the Patent and
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