Patent Basics – USA

Definition: A patent is a set of exclusive rights granted by a state (national government) to an inventor or assignee for a limited period of time in exchange for public disclosure of an invention.

Purpose: Success of a patent application results in the government granting the creator or assignee monopoly control and explicit right to preclude others from making, using, selling or offering for sale the subject matter as defined by the patent claim(s) for some limited period of time. The monopoly incentive secures the assignees right to financial benefit, helping to enable a prosperous society.

Types: There are three types of patents within the United States Patent and Trademark Office USPTO that define the general nature of an invention.

Utility patents may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof;

Design patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture; and

Plant patents may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant.

Claim(s): The most important aspect of a patent is its claim. The claim relates the invention to its commercial application, or “art”, to which the patent pertains. This is where the value of a patent lies, and is the focal point of most legal proceedings. The claim illustrates the technical use and various embodiments of the invention by setting limits on the extent of protection conferred or sought by the patent.

Protection: The current patent term in the United States is 20 years which provides a sustainable competitive advantage to the assignee, usually a commercial enterprise or corporation, to directly or indirectly commercialize their invention for profit. The patent, in and of itself, provides no legal protection to a patent holder, protection only comes in the form of an infringement lawsuit filed by a patent holder against a patent infringer, making the defense of patents a rich mans game and not a simple process.

Process: In the United States, an inventor has a period of one year to file a provisional patent application from the date of first public disclosure, first public sale, or first public offer to sell an invention. A provisional application serves as a place holder within the USPTO for the eventual filing of a non-provisional application. The provisional application applies only to utility patents and can be as short or extensive as necessary to encompass the nature of the invention including drawings, data, and descriptions, but can be void of any claim(s), oaths, or information disclosure statements.

Once opened, a provisional application can be updated and expanded upon for a period of one year during which time a full non-provisional patent application must be filed in order to benefit from the earlier filing date and support provided by the provisional application. To be useful, the material contained in the provisional filing must adequately support as best as possible the subject matter of the claim(s) made in the non-provisional application. Once granted, the patent date will become the non-provisional application filing date.

Jurisdiction: For a small company with limited time and money, the largest and most fruitful market to apply for patent protection is the USA. Then depending on the nature of the invention, potential for profit, and further need for protection, additional applications can be made with other jurisdictions around the world as deemed necessary. Unfortunately there is no such thing as an international patent.

To be safe, all filings should be made as early as possible since most jurisdictions consider anything filed one year past any public disclosure makes the invention public domain, and voids any right for patent protection.

Cost: For a small entity, if done by oneself working directly with the USPTO, and preferably written by the inventor, filing for a patent is initially more of a time consuming process than a financial expense. For a small business, the cost to file a provisional patent is only US $110, plus the cost of a non-provisional patent which is US $165. After which, the bulk of the expense becomes the patent maintenance fees of US $490 due after 3.5 years, US $1,240 due after 7.5 years, and US $2,055 due after 11.5 years. All costs are double for non-small entities.

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