Yet, many inventors are unfamiliar with the different forms of intellectual property protection that are available. Knowing your rights and the ways in which these rights may be challenged is very important to the development and preservation of intellectual property assets.

Many opportunities for obtaining intellectual property protection can be lost or severely limited by your action, by your failure to act, or by events that may or may not be under your control. No case is the same; therefore, an experienced patent practitioner should be consulted in all IP matters. However, your awareness of the basic information contained in this article may greatly improve your chances of obtaining adequate protection for your ideas.

An issued patent in the United States grants an exclusive property right to an invention for a period of generally 20 years. Throughout the term of a United States patent, the inventor(s) may prevent others from making, using, offering for sale, or selling the invention within the United States. A patent may be traded, licensed or sold at the discretion of the patent owner.

To obtain patent protection an inventor must file a patent application and successfully prosecute this application through several steps in the United States Patent and Trademark Office.A patent application is a technical and legal description of an invention that defines the scope of the invention and distinguishes it from what has been done before. Inventors may file patent applications for any new and useful process, machine, article of manufacture, or composition of matter that is both novel and non-obvious. There are several things that maybe negatively impact an inventor’s right to file and application for patent protection.

The use of inventions for profit in a business may constitute a public disclosure. Therefore, this business use, even if unknown by the customer, may result in a complete forfeiture of the right to file for patent protection in foreign countries, or may begin the one-year time period in which an application for patent protection must be filed in the United States

The use of inventions for profit in a business may constitute a public disclosure. Therefore, this business use, even if unknown by the customer, may result in a complete forfeiture of the right to file for patent protection in foreign countries, or may begin the one-year time period in which an application for patent protection must be filed in the United States

Marketing your invention prior to filing a patent application can be a public disclosure. Market acceptance of a particular invention is sometimes persuasive evidence for the allowance of patent claims. Therefore, after filing a patent application, a market for the invention should be quickly created and served, if possible. However, such public marketing efforts should not be made more than one year prior to filing for patent protection. Items may only be identified as “Patent pending” after filing, and only identified as “Patented” after issuance of the relevant patent.

*This list of potential challenges to obtaining patent protection is not to be construed as complete or all-encompassing. Rather, this listing is provided by way of examples to highlight some common barriers to patentability that should be considered prior to developing an intellectual property asset.

Since June 8, 1995, the USPTO has offered inventors the option of filing a provisional utility application. The provisional utility application is designed to provide a lower initial cost; however, it may be slightly more expensive in the long run than a non-provisional utility patent application, as the provisional patent is only pending for one year and then must be converted into a non-provisional patent application if the applicant wishes to continue the pursuit of patent protection. A provisional utility patent application does not require claims or an oath or declaration, and relatively informal drawings may be used.

A provisional utility application provides the means to establish an early filing date in a patent application and permits the term “Patent Pending” to be applied in connection with the invention. Provisional patent applications are often filed by inventors who wish to have patent pending status for their invention while pursuing marketing and further development of the invention.

The applicant has up to twelve months, after filing a provisional patent application, to file a non-provisional utility application claiming the benefit of the filing date of the provisional application.

The claimed subject matter in the non-provisional application is entitled to the benefit of the filing date of the provisional application if it has support in the provisional application.

Provisional patent applications are NOT examined. A provisional application will become abandoned by operation of law twelve months from its filing date. The twelve month pendency for a provisional application is not counted toward the twenty-year term of a patent granted on a subsequently filed non-provisional application that relies on the filing date of the provisional application.

An application is placed in line for examination only upon being filed as a non-provisional application. Therefore, filing a provisional application and waiting twelve months to file a non-provisional application typically adds twelve months to the time it takes to receive a first Examiner’s Action.

We encourage inventors who are confident in their own ability and financial resources to market and further develop the invention to file a non-provisional utility patent application, unless there are other circumstances that would favor a provisional application, such as the expense of obtaining formal drawings ($500-$1200) or timing (a non-provisional application takes longer to write due to the additional requirement of claims). Non-provisional patent applications do have claims and are examined by the PTO, usually within eighteen months. The examination process, also called prosecution, typically includes one or more Examiner’s Actions citing relevant prior art and possibly containing rejections or objections in view of the prior art, followed by our Response to any objections or rejections.

If the application is allowed (approved), issue fees are due prior to the patent issuing. Maintenance fees are required at three years and six months, seven years and six months, and eleven years and six months from the issuance of the patent.

In view of the prior art we have found before or during prosecution, or different prior art the patent examiner may find, we may need to narrow claims during examination to claim a specific embodiment. Further, in view of the prior art, there is always a risk of an invention not being patentable because it is not considered new and non-obvious.

A design patent may be granted to any person who has invented a new and nonobvious ornamental design for an article of manufacture. A design’s “point of novelty” need not be one, individual, newly-developed feature, but may instead by a specific combination of elements not found in prior art. The design patent protects only the appearance of the article, not its structural or functional features. The format of a design application comprises a description of the drawings, the drawings, and one standard claim that simply refers to the drawings.

The prosecution of a design application is the same as for other patent applications. A design patent has a term of fifteen years from the date of issuance, and no fees are necessary to maintain the design patent.

No reference characters (ie. numbers or letters) are allowed on the drawings, and the drawings should clearly depict the appearance of the object, since the drawings define the scope of the patent protection.

Filing both a utility patent application and a design patent application is appropriate when the invention not only has structural and functional features, it also has ornamental features. While a utility patent application is more conceptual and would apply to more embodiments, the success rate for utility applications is typically lower compared to design patent applications.  Summarily, a design application has a narrower scope, but tends to have a higher success rate in becoming an issued patent.