Guide to Patents

What is a patent?

A patent is a grant by our government, acting through the Patent and Trademark Office, to an inventor, conferring the right to exclude others for a limited time from making, using or selling the invention throughout the United States, its territories and possessions. It is a printed document in which the invention is fully described and the scope of the invention defined. Patent rights are granted for invention of new and useful processes, machines, manufactures, compositions of matter or any new and useful improvement thereof. U.S. patents run for a term of about 20 years from filing.

The importance of patents

It is natural to ask why the Government makes this offer of protection under the patent law. The answer is in the Constitution itself, which provides that Congress may secure this right to inventors in order to promote the progress of the useful arts. The public benefits from this system for three reasons:
First, the offer of patent protection encourages the inventor to make the invention;
Second, if the inventor succeeds with the help of the patent in developing and marketing the invention, the public is given the opportunity to use it; and
Third, since the inventor must describe the invention in the patent, and copies of the patent may be purchased by the public, the knowledge of the invention is made available to everyone.

Who may apply for a patent?

According to the U.S. patent statute, only the inventor or inventors may apply for a patent.

The U.S. patent statute requires that the applicant (inventor) make an oath or declaration that the applicant believes himself to be the original and first inventor of the subject matter of the application. The oath or declaration must also include a statement required by the Patent and Trademark Office rules indicating compliance with all of the patent statutes.

What can be patented?

U.S. patent law specifies the general fields of subject matter that can be patented, and the conditions under which a patent may be obtained.

In the language of the statute, any person who "invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvements thereof, may obtain a patent," subject to the conditions and requirements of the law. These classes of subject matter taken together include practically everything made by man and the processes for making them. Patent protection is also available for plants and new and ornamental designs for useful products.

The statute specifies that the subject matter must be "useful." The term "useful" in this connection refers to the concept of operativeness -- that is, a machine which will not operate to perform the intended purpose would not be called useful. For example, alleged inventions of perpetual motion machines are refused patents.

Standards of patentability.

In order for an invention to be patentable it must be new as defined in the statute.

Under our new first-to-file system, the one year grace period that previously existed is no longer available, except in very strict circumstances. A grace period should not be relied upon because whoever files first will normally be entitled to patent rights.

You should seek professional advice prior to disclosing, publicly using, commercially using your invention, or offering for sale a product that incorporates your invention if patent protection may be of interest to you.

To offer an exact definition of what constitutes a patentable invention is difficult. Even the courts that have struggled mightily have not arrived at any universally accepted definition. Generally however, if a new result is accomplished, or if an old result is accomplished in a new and unobvious way, an inventive act capable of patent protection has probably occurred.

Your role in the patent procedure.

When an inventor recognizes that he or she may have made an invention, patent counsel should be contacted as soon as possible.

Immediately prepare an invention disclosure. The invention disclosure provides an early written record that can be helpful in determining the first inventor when similar inventions are developed at about the same time. It need not be in any special form. Simply write a description as you would in a letter. Include sketches or snapshots of your invention. Have each sheet signed and dated by a trusted friend or associate.

The invention disclosure is not a patent application; a patent application is a more formal document submitted to the U.S. Patent and Trademark Office. The invention disclosure is a witnessed document that will help you to establish the date of your invention if it is ever in question. You should keep it in a safe place.

Summary of basic steps.

The questions uppermost in the minds of most inventors are these:

  • Should I try to obtain a patent?
  • If I decide to try to obtain a patent, what steps can I take to secure the best possible patent protection?
  • What steps can I take to improve my chances of developing and marketing my invention successfully?

It is important that you realize there is no way to get assurance in advance that you will be granted a patent, or that you will be able to profit if you obtain one. However, you may improve your chances greatly by following the suggestions made below if your invention is useful and new. If on the other hand the features you consider important are not new or are not useful, these suggestions will help you to discover this early enough to avoid needless expense. The steps you should take are:

  • Study your invention in relation to other available ways of doing the job, and decide whether the invention provides advantages that make it salable;
  • Get a trustworthy friend to sign his or her name as witness on a dated invention disclosure, and keep careful records of the subsequent steps you take and their dates;
  • Have a search made to find the most closely related prior patents. This can be done for you by patent counsel. Be prepared to describe the invention fully to your patent counsel so the search can effectively cover the technology relating to your invention;
  • Compare the patents found in the search with your invention. Your decision whether to seek patent protection should be based on your own comparison of these patents with the features of your invention which you believe to be new and valuable, and on the advice of your patent counsel;
  • If you find that your invention includes valuable features not shown in the patents found in the search, promptly instruct your patent counsel to prepare an application for patent and to file it in the Patent and Trademark Office.

Help prepare a good application by providing all the useful information you have available.

Keep in close touch with the progress of your application in the Patent and Trademark Office. Tell your patent counsel promptly of any changes you may make in your invention and of the steps you take to develop and market it. Study the patents which the examiner of the Patent and Trademark Office may cite against your application. Help your patent counsel to overcome rejections raised by the examiner by pointing out in what way your invention differs from those described in earlier patents.

Patents in foreign countries.

Patent rights are strictly national -- the protection afforded to your invention by a U.S. patent extends only to our national boundaries. Since a patent provides exclusive rights to make, use or sell your invention, others cannot produce it in another country and import the invention for sale here after your invention is patented. This would violate your exclusive rights to sell and use the invention in the United States. But others can produce and sell it outside those countries in which you hold patents.

If you contemplate a need for patent protection outside the United States, it is very important that this be discussed with patent counsel from the beginning to avoid loss of patent rights in foreign countries. There is no general international patent system or application. In most instances, applications must be filed in each selected country. Where larger groups of countries are involved, economies in filing and prosecuting foreign patents should be explored through the Patent Cooperation Treaty or the European Patent Office.

Marketing and developing the invention.

Let us assume now that you have obtained your patent and that you want to know what you may do to profit from it. You cannot hope to profit unless your invention provides some result or feature having an advantage which would enable you to sell it. It is equally true that you are very unlikely to profit, even after you have received a patent, unless you either use the invention yourself or persuade others to use it by pointing out to them the advantages which it provides. Patents seldom promote themselves. It is unlikely that other people, merely by reading the patent, will recognize the advantages and come to you with an offer to purchase the patent or license rights under it.

Neither the Patent and Trademark Office nor any other Government agency can help you to the extent of acting as a salesperson on your behalf to encourage others to adopt the features of your patent and pay you for their use. However, the Patent and Trademark Office and other federal and state government agencies provide services which may help in your own activities.

When may your invention be revealed?

Many inventors ask when they may safely reveal their inventions to others in their efforts to obtain financial backing or to induce some person or business organization to buy their patent rights. No answer can be given to this question which may be applied to every individual situation; you should seek competent legal advice in regard to your particular problems. However, the following general statements may be helpful:

  • After the patent is issued it is safe to reveal to others everything that is actually described or illustrated in the patent. These details are then no longer secret, for they are published in the printed copies of your patent which are available to anyone. However, you should be guided by legal counsel in deciding what to say to a prospective purchaser or licensee in connection with later inventions or improvements which are related to the patent.
  • If you decide to try to sell the invention or license rights under it while your application is still pending in the Patent and Trademark Office you will need to consider another point. Your patent application serial number and filing date are maintained in confidence by the Patent and Trademark Office, and these and other dates may be important if any question arises as to who is the first inventor. You should avoid revealing this information prematurely or carelessly, and get legal advice on this point in connection with negotiations.
  • It is also possible to negotiate with a purchaser for sale of rights in your invention even before you have applied for a patent, but such a procedure involves other problems. Many people submit their inventions to prospective manufacturers, after having them witnessed, without having first applied for patent protection. The inventor may feel that this is the only course available if he or she has no way of determining whether the invention has merit, or if unable to afford the cost of a patent application. If you contemplate taking such a course, you are strongly urged to seek legal advice before doing so.
Invention developers.

While many reputable governmental and private organizations assist inventors to market inventions, you should be cautious in dealing with groups who undertake marketing efforts for an up-front fee. Experience has shown that many have very low success rates and derive their main income from inventors, not from successful marketing of inventions. Before entering into any substantial agreements involving fees for development services or accompanied by high pressure sales tactics, consult your legal counsel.

Portions of "A Guide to Patents" were excerpted and edited from the following U.S. Government publications:

  • "Patents & Inventions: An Information Aid for Inventors", Patent and Trademark Office, U.S.   Department of Commerce;
  • "You and the Patenting Process", U.S. Department of Energy.