Patents Informational:

What to Know When Considering a Patent Application

P3ip works with clients to establish strong IP protections. This document outlines key considerations related to utility patents in the United States (US).

The goal of this document is to help you better understand the patent application process. Whether you operate a small business, desire to start a business, or are an independent inventor, P3ip strives to provide you with enough information so that you can make an informed decision on whether pursuing patent protection is a good option for your circumstances.

Please read through the following items carefully. These are a selection of considerations to keep in mind as you contemplate whether to file a patent application. However, this is not an exhaustive list, and other considerations may be appropriate for your situation.

Patent Application Filing Considerations

A. Purpose of Utility Patents

Utility patents protect inventions having useful functional and/or structural features that are novel and non-obvious over prior developments. For example, utility patents cover inventions in diverse areas including systems, mechanical devices, electronics, software, biotechnology, and manufacturing processes.

A utility patent grants the patent owner the exclusive right to exclude others from making, using, selling, or importing the invention for a limited time of 20 years from the earliest patent application filing date.

B. A patent application must name the inventor or joint inventors

1. Correct Inventorship

US law requires that the correct inventor or inventors be named on the patent application. Errors in named inventors can have negative consequences on patent enforceability.

2. Artificial Intelligence (AI)

AI cannot be a named inventor. Conception of the invention must be by a human being.

3. Conception

As it relates to inventions, conception is the formation of a complete and operative invention in a person’s mind such that the person has a specific idea that provides a particular solution to a problem and not just a mere goal or research plan.

4. Complete and Operative Invention

An inventor must have sufficient detail about the invention to teach a person having ordinary skill in the related art how to make and use the invention.

C. Be Careful to NOT Publicly Disclose, Commercialize, or Offer for Sale

1. Barriers to Patent Protection

Public disclosure, commercialization, or an offer for sale of the invention before filing a patent application could create a barrier to patent protection.

2. Considerations for Patent Protection

If any of these activities have occurred, discuss details of any such activities with a qualified attorney as soon as possible to determine how it may affect pursuing patent rights.

3. One-Year Grace Period in the US

US law provides a one-year grace period from the earliest date of any such activities to file a patent application. However, the US is a first-to-file patent system. As such, delaying your filing based on the one-year grace period increases the risk that others may file first to establish priority over the invention.

In addition, if patent protection in other countries is desired, it is important to keep in mind that other countries do not provide such a grace period. In such circumstances, a patent application must be filed first before any public disclosure, commercialization, or offer for sale activities have occurred.

D. Patentability Search

1. Purpose of a Patentability Search

Conducting a patentability search before filing a patent application is useful to uncover the existence of products or services that are the same or obvious variants of the proposed invention.

2. Patentability Search Process

A formal patentability search can be conducted by an experienced patent professional to search patent databases and the Internet for prior developments that may create hurdles to securing patent protection for the proposed invention.

3. Analysis of Patentability Search Results

Patentability search results should be analyzed by a trained patent professional to determine whether a reasonable opportunity exists to secure patent protection on the proposed invention. For example, patentability search results may be used to strategically define how the proposed invention may be protected even against the backdrop of the patentability search results.

E. US Provisional Utility Patent Application

1. Purpose of a US provisional utility patent application

A US provisional utility patent application can be thought of as a place holder filed with the US Patent and Trademark Office (USPTO) to secure a priority date over parties that subsequently file applications for the same or similar invention.

2. Contents of a US provisional utility patent application

A US provisional utility patent application should include a written description and drawings that, as completely as possible, describe the invention in sufficient detail to enable a person having ordinary skill in the art to make and use the invention.

3. A US Provisional Utility Patent Application Does NOT Become a Patent

A US provisional utility patent application will not itself become an issued patent. Instead, the provisional application provides a 12-month period from its filing date within which the applicant must file a follow-up non-provisional patent application. The non-provisional patent application can be the basis of an issued patent if the U.S. Patent and Trademark Office agrees that all patentability requirements are satisfied. The provisional application expires after the 12-month period.

4. A U.S. Provisional Utility Patent Application is Not Necessary

It is not necessary to file a provisional patent application before filing a non-provisional application. However, some applicants find the additional time provided by a US provisional utility patent application useful to decide whether to pursue a patent through the filing of a US non-provisional patent application. For example, this time may be used for market research, manufacturability research, business plan development, etc.

F. US Non-Provisional Patent Application

1. Purpose of a US non-provisional utility patent application

A non-provisional patent application is filed to formally pursue patent protection. A non-provisional patent application is examined by a U.S. patent examiner and can be the basis of an issued patent if the application satisfies all patentability requirements.

2. Contents of a US Non-Provisional Patent Application

A US non-provisional patent application includes a specification and drawings that describe the invention in sufficient detail to enable a person having ordinary skill in the art to make and use the invention.

3. Specification

The specification is a written document that includes a background section, a detailed description section, a claims section, and an abstract.

4. A Time-Limited Monopoly

A US non-provisional patent application is a disclosure to the public that promotes the advancement of science and technology. In return, if a patent is granted on the patent application, the applicant is awarded a 20-year monopoly of exclusive rights over the invention, as described above.

G. Attorney Fees

Attorney fees are billed based on the work performed for the client. A patentability search, a provisional patent application, and a non-provisional patent application have separate attorney fees. Attorney fees are payable directly to the law firm. In some cases, a retainer fee is required in advance of commencing any legal work.

H. Costs

Costs (also referred to as disbursements) include any third-party fees or official government fees. Official government fees are payable to government agencies such as The United States Patent and Trademark Office. Costs are set by corresponding third parties or set by government agencies for different types of filings and are subject to change from time to time. Costs are sperate from attorney fees.

IMPORTANT DISCLAIMER - The contents of this document are not legal advice, do not create an attorney-client relationship, and do not establish an attorney-client privilege. Instead, this document is for general informational and/or educational purposes only.

This document is not a substitute for consulting a licensed attorney. A consultation with a licensed attorney is necessary to consider a complete picture of your circumstances and to provide you with a personalized recommendation.