Patent FAQs | Trademark FAQs

Patent FAQs

What can be patented?

The statute provides that whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereto may obtain a patent therefor, subject to the conditions and requirements of the patent statute. A “machine” is an apparatus such as an automobile, a television set, or a computer. A “manufacture” is an article or object that is made by manufacturing, such as a light bulb, a baseball bat, an automobile tire, or a computer diskette. Examples of a composition of matter include a chemical compound, a candy bar, or a soft drink. A “method” is a process such as a series of steps for making soap. There is often an overlap among these areas but all that is required is that an invention qualify under any of the above categories of invention. What do the requirements that the invention be new and useful mean?

First, under American law, the invention must not only be new, it must also not be obvious. All that is required for an invention to be “new” is that it is different from what is already known. An invention is not obvious if a person of ordinary skill in the field (also known as “art”) of the invention would not have known how to make or use the invention without undue experimentation. In other words, our law does not permit the issuance of patents for trivial or routine modifications of known inventions.

Generally, an invention is “useful” if it works. There is no requirement that an invention be better than prior inventions. All that is required is that the invention performs some task. This is not generally difficult to establish. An old joke in the Patent Office goes as follows: if you throw an object on grass and the grass dies, the object is a defoliant; if the grass grows it’s fertilizer!

Can I lose my rights to patent after inventing?

Yes, first if you publish the invention in writing or make a product embodying the invention and sell it or use it publicly more than one year before filing a patent application covering the invention, you have lost your right to patent in the United States. In addition, many countries have laws that provide that an inventor who publishes the invention before filing an application covering that invention has lost his or her right to patent. There are other situations that may also lead to loss of rights to patent.

Why should I patent my inventions?

Inventors have many reasons to obtain patents for their inventions. The chief reason is to make money from an invention. In the ultimate analysis, obtaining a patent is not worth the effort or money if nobody else will ever use the patented invention. However, if an invention is successful, it will be imitated and if the invention is not patented, the inventor will not participate in the profits of his or her competitors. Investors in companies recognize this and will seldom invest in companies that do not protect their inventions.

How does one get a patent?

In the United States and other countries, an inventor must prepare, or have prepared, a written application for a patent. A patent application is not a form that is filled in. Rather, the law prescribes certain parts of a patent application that must be present but there is much room for creativity and variety in approaches to drafting patent applications. Following the filing of the patent application before the U.S. Patent and Trademark Office (PTO), the inventor or his or her representative negotiate with the PTO on the appropriate scope of the claims, among other things. Once agreement is reached, the PTO issues a patent.

Can I apply for a patent without a patent agent or attorney?

It is possible for an inventor to represent himself or herself before the PTO in obtaining a patent but if the invention is important, it is important to get professional help in preparing the patent application. Drafting patent applications is a skill like many others where one gets better at it after years of experience. Moreover, the skills useful for invention are not the same as those useful for drafting a good patent application. The principal task of a patent attorney is determining the scope of the invention and expressing that scope by drafting claims that define the invention. The inventor is usually not the best judge of the scope of the invention.

Inventors should only patent their inventions if there is a substantial likelihood that others will use the invention. If that likelihood exits, the inventor should take steps to secure the best protection available. Getting a patent issued by the PTO is much easier than successfully asserting the patent against an infringer. lnfringers seldom agree that they infringe. More commonly, infringers resist the patent owner’s efforts to license the patent. Thus, infringers quite commonly challenge the validity or enforceability of the asserted patent or find ways to more narrowly interpret the invention than the patent owner. The greater the stakes, the more intense are these attacks on scope and validity. Therefore, a patent must be drafted not only for issuance by the PTO but for survival from the numerous legal challenges that it will encounter if it will produce royalties or other rewards for its owner. Like it or not, patents are legal documents and as such will be interpreted and upheld or invalidated by lawyers. Thus, seeking the services of a good patent attorney is generally the best course to take.

Isn't the Patent Office supposed to help patent applicants acting on their own behalf ?

Yes, but getting a patent issued by the PTO is not even half the task of protecting valuable inventions. As mentioned above, patents must survive attacks challenging their validity and scope of protection. Accused infringers just do not “take it easy” on patents procured by the inventors on their own. There are certain possible problems with patents that do not generally come to light until after issuance of the patent. One example is the obligation to disclose the best mode contemplated by the inventor for carrying out the invention. Another is the duty to disclose prior art known to the inventor as of the filing of the application.

Moreover, the PTO routinely rejects claims for being too broad. We have never seen a rejection on claims being too narrow, yet unnecessarily narrow claims will often allow others to use the invention without infringing the claims. Further, claims are interpreted differently by the PTO and the courts. Thus, just getting by the PTO is not enough. An applicant for a patent must understand how the claims will be interpreted by courts and draft the language accordingly.

How long does it take to get a patent?

It depends on various factors including the level of staffing and the workload at the PTO, but, in general, one should not expect a patent in less than eighteen months. An experienced patent attorney can expedite the process somewhat.

Can I do anything against infringers before my patent issues?

An inventor cannot do much against others using his or her invention until the patent issues. In order to sue, one must have an issued patent. However, negotiations on a license can begin before issuance.

What are the advantages of obtaining a patent as opposed to keeping the subject invention a secret?

The principal drawback to trade secrecy is that others can often legally reverse engineer a product to discover the underlying trade secrets. Another danger is that if someone else independently invents the trade secret and obtains a patent therefor, that person may be able to prevent you from making, using, selling, importing or offering the invention for sale.

Is computer software patentable?

Inventions embodied in computer programs can be protected with patents. Patents protect physical embodiments of inventions. Computer programs, as any other useful articles, may or may not embody inventions. It is important to understand that patents protect inventions, and those inventions may be embodied in many different products. Thus, an invention may be principally implemented as a computer program to be loaded into a general purpose computer, converting the computer into a specialized apparatus. Alternatively, the same invention may be implemented in an apparatus that is specifically made to carry out the invention. A good patent would cover both of these embodiments, and possibly others.

Can I begin marketing my invention before I get the patent?

Yes, but it is important to disclose ideas under a confidentiality agreement. Even when a confidentiality agreement is used there is no substitute for filing a patent application. A confidentiality agreement is not an absolute guaranty that confidential information regarding the subject invention will not be made public. If a person receiving information subject to a confidentiality agreement makes the information public some rights may be lost by the inventor and all the inventor may be left with is a lawsuit against the person breaching the confidentiality agreement.

Do patent attorneys do patent work for a contingency fee?

Some will, but generally the role of a patent attorney is not that of an investor. In most cases, patent attorneys will only accept a percentage of royalties or accept an ownership interest in a patent if the invention has great promise, and obviously, the inventor may not want to give up his or her upside for the mere cost of filing and prosecuting a patent application. The practice of accepting contingency fees is somewhat more prevalent in litigation but, again, the inventor gives up much. In any case, the inventor should select patent litigation counsel carefully create a question about contingency fees for trademarks.

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Trademark FAQs

Can I reserve a trademark?

In the U.S., one acquires rights to a trademark by using the mark. There is no procedure for reserving a mark. However, a person who has a bona fide intention, under circumstances showing the good faith of such person, to use a trademark may apply to register the mark on the principal register of the U.S. Patent and Trademark Office (USPTO). *

Do I need to register my trademark?

Although using a trademark first in a given territory establishes some rights in its user, there are important advantages to registration of the trademark in the principal register of the PTO. It is also possible to register a trademark in some states. A certificate of registration in the PTO has the effect of being prima facie evidence of* (see 15 U.S.C. § 1057). * This is called an intent to use application and even in this case an applicant for registration of the mark must show use of the trademark within six months after the date when a notice of allowance of the registration is issued. Such a showing requires a specimen or facsimile of the mark as used in commerce, and a verified statement that the mark is in use in commerce and specifying the date of the applicant’s first use of the mark in commerce. In these cases, an applicant should make sure that the mark is the same as the one set forth in the application for registration.

Should I determine whether a mark is available before I start using it?

We always recommend to our clients that they have an availability search performed before using a mark. This is important for various reasons. First, if no availability search is performed and you start using a mark, that use may infringe the mark of another person, and if no availability search was done, a court could find the infringement to be willful, resulting in enhanced penalties.

Should I register in other countries?

More businesses today have an internal component to their sales than ever before, This is especially true because of the use of the Internet. Therefore, careful consideration should be given to selecting and protecting the appropriate marks in various countries.

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