Patent FAQ

Frequently Asked Questions regarding Patents. Also videos regarding patents by Kelly G. Swartz, Esq.

No. A monopoly implies that the inventor would have the exclusive right to make, use, sell or offer to sell the invention. Instead, the patent right provides the inventor the authority to exclude others from making, using or selling or offering for sale their invention. Accordingly, the grant of a U.S. patent does not necessarily translate to the right to make your invention. For example, an inventor may obtain a patent on a weapon, but does not necessarily have the right to build or make that weapon.

A plant patent protects asexually produced varieties of plants including cultivated sports, mutants, hybrids and newly found seedlings. For more information on the different types of patent applications, please click here.

A design patent protects ornamental aspects of an invention. For more information on the different types of patent applications, please click here.

A utility patent protects a useful, novel and non-obvious device, system, article of manufacture, machine, process, or composition. For more information on the different types of patent applications, please click here.

A provisional patent application does not grant patent protection on an invention. It merely secures a filing date within the patent office. In order for a provisional patent application to become a patent, it must be converted by filing a utility patent application. A provisional patent application discloses the invention, but does not include claims setting forth the protection that is sought. A utility patent application claims the benefit of the filing date of the provisional patent application, and includes claims that lay out the boundary of protection of the invention. If a utility patent application claims the benefit of a provisional patent application, the claims of the utility application must be fully supported by the provisional patent application.

No. There is no requirement to file a provisional patent application before filing a utility patent application. The provisional patent application is a good tool to get a patent application filed in a shorter time frame and, usually, at lower expense.

If a provisional patent application is not converted to a utility patent application within one year of filing the provisional patent application, the provisional patent application will be abandoned.

A provisional patent application can advantageously provide a fast and less expensive way for an invention to obtain “patent pending” status. Upon filing a provisional patent application, the inventor may take up to one year to determine whether or not to move forward with the utility patent application. A disadvantage of the provisional patent application is that it never comes to fruition as an issued patent. Provisional patent applications must disclose all that the inventor intends to claim upon filing the utility patent application. If a claim in the utility patent application is not fully supported by the provisional patent application, the utility patent application cannot claim the benefit of the provisional application.

A utility patent lasts 20 years from the date of filing. A design patent lasts 14 years from the date of issue.

No. A prototype is not required for filing a patent application. An inventor must move with diligence to reduce their invention to practice. Reduction to practice can be accomplished by either building a prototype or by filing a patent application.

No, but it is not a bad idea to conduct a patentability search. A patentability search will allow you to locate prior art and determine the possible scope of patent protection. With that being said, not all prior art can be located. For example, patent applications are pending in secrecy in the Patent Office for at least 18 months and sometimes until they are issued. Therefore, most patentability searches cannot be conclusive, but can give you a very good idea of the prior art that already exists.

Prior art is any information that can be used to determine whether or not your invention is patentable as being novel and unobvious. For more information on what constitutes prior art, please view this article.

The patentability of any invention will generally depend upon the Patent Office’s decision, initially expressed by an Examiner, as to whether the invention is useful, novel, and unobvious. These requirements are set forth in the Patent Statute. In particular, Sections 102 and 103 relate to the differences between the invention and the prior art. Section 102 requires that an invention be novel in the sense that it has not been disclosed by any single prior art reference. Section 103 requires that the differences between the invention and the prior art be such that the invention would not have been obvious, at the time it was made, to a person having ordinary skill in the art.

Examination of a patent application can vary depending on the technology. Generally, you can budget between 18 and 24 months after the patent application is filed to receive an initial answer from the Patent Office in the form of an Office Action. Some technologies take longer than others, such as software and pharmaceuticals.
For up to date visual information on the patent backlog, please visit the USPTO Patent Dashboard.

Patent applications are published after they have been pending for 18 months. There is a mechanism to prevent publication of a patent application if so desired.

In short, yes. In return for providing you with the patent right, the Federal Government requires that you disclose prior art that you believe to be relevant to your invention. For more information on the duty to disclose prior art during the patent prosecution process, please read this article.

If you qualify as a small entity, you are eligible to pay 50% of the governmental filing fees associated with filing a patent application. If you qualify as a micro-entity, you are eligible to pay only 25% of the governmental filing fees. For more information on what is required to qualify as a micro-entity, please read this article.

A utility patent application must include at least one claim. The claim has to be supported by a specification. In other words, the claim has to be described in the specification such that one having skill in the art would be able to carry out the invention without any other information. The patent application should include a background, a summary of the invention, a description of the drawings, a detailed description of the invention, and an abstract. The application also has to include drawings. Please review this article for more information.

It is possible to file an application that is related to your current application to obtain even more claim scope and claim the benefit of the original filing date. Read this article for more details.