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Patent FAQ




Patent Frequently Asked Questions (FAQ)



  1. What is a U.S. patent?
  2. How long is a U.S. patent valid for and how many times can one renew it?
  3. Who may obtain a patent?
  4. What are non-patentable subject matters?
  5. How can an inventor profit from the invention?
  6. What is the address of the U.S. Patent Office?
  7. What is Pat. Pend. or Patent Pending?
  8. Can one use a U.S. patent to enforce against infringers worldwide?
  9. When must an inventor file a patent application?
  10. When can a U.S. inventor apply for patent protection outside the United States?
  11. What is a PCT application?
  12. How do I claim the priority of an earlier application?
  13. What is Foreign National Phase?
  14. What is the difference between a registered patent attorney or agent and an attorney not registered before the patent office?
  15. What are invention promotion firms and how can they help an inventor to market the products?

What is a U.S. patent?

A patent is a grant of an exclusive property right by the federal government to the inventor to exclude others from importing, making, using or selling the invention in the U.S. There are three main types of patent:
  • Utility patent covers new and useful process, machine, manufacture, or compositions of matter (such as chemical compositions and compounds), or any subsequent new and useful improvement.
  • Design patent covers new, original and ornamental design for an article of manufacture, and it is only the ornamental appearance of the article that is protected.
  • Plant patent covers a distinct and new variety of plant that has been reproduced asexually. Generally all inventions must be novel, and non-obvious to those skilled in that particular discipline in order to qualify for patent protection. For a utility patent, the invention must also be useful.

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How long is a U.S. patent valid for and how many times can one renew it?

A utility patent is now valid for a term of 20 years from the U.S. patent application filing date, while a design patent is valid for a term of 14 years from the date of patent issuance. Generally a patent is not renewable except for extremely rare special circumstances. After the expiration of the patent term, the patent owner loses the exclusive patent rights to the invention.

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Who may obtain a patent?

Only the true original inventor, or his authorized representative such as an assignee or licensee, may file a patent application for the invention.

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What are non-patentable subject matters?

A patent cannot be obtained on simply an idea or suggestion, without actually putting it into practice. However, in recent years contrary to earlier rulings, the USPTO has accepted computer software and computer programs to be patentable subject matter. Also, since 1998 computer business models were upheld by the Court of Appeals of the Federal Circuit to be patentable subject matter.

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How can an inventor profit from the invention?

The inventor may sell his ownership interest (or title) in the invention to anyone through assignment, and the inventor may receive either a lump sum payment, and/or a royalty payment based on the future sales of the invention by the assignee. Frequently an inventor may want to keep the title to the patent but allow others to use the invention through the grant of a patent license in exchange for a fixed fee or in conjunction with royalty payments. Large companies with significant patent portfolio and/or exposure to patent infringement lawsuits frequently have complicated cross-licensing agreements with other companies. Patent licensing is a complicated matter and it is recommended for an inventor to consult with a professional (such as a registered patent attorney) early on regarding assignments and licensing of the invention.

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What is the address of the U.S. Patent Office?

The mailing address of the U.S. Patent and Trademark Office (USPTO) is:

Commissioner of Patents and Trademarks
Washington, DC 20231

Form more information visit the U.S. Patent and Trademark Office http://www.uspto.gov/

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What is Pat. Pend. or Patent Pending?

After the inventor has submitted a patent application to the U.S. Patent and Trademark Office (USPTO) the inventor may insert the notice 'patent pending' or 'patent applied for' onto the invention and accompanying material (such as brochures) to inform the public and potential infringers that a patent application for the invention is on file at the USPTO.

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Can one use a U.S. patent to enforce against infringers worldwide?

No. A U.S. patent is valid only within the United States and if one would like to have patent rights and protection in other countries, the owner will need to file the patent in those countries, which generally is a very expensive process. For example, it is not uncommon for a Japanese patent to issue after four years of prosecution, at a cost of well in excess of $50,000.

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When must an inventor file a patent application?

In most countries outside the U.S., any public disclosure of the invention (such as public sale or offer to sell, or published in a journal) prior to filing the patent application will render the inventor to forfeit all rights to apply for a patent.

  • Generally, in the U.S., there is a grace period of one year from the date of public disclosure whereby the inventor has to file for the application. One of the main reasons for such a one year period is to provide small inventors an opportunity to market the invention to determine whether it is feasible to obtain patent protection.
  • However, most other countries do not have such leniency toward small inventors. Therefore, a U.S. inventor who would want to obtain foreign patent should NOT make any public disclosure until the patent application has been filed at the USPTO. It is recommended an inventor consult a registered patent attorney regarding patent application filing requirements and deadlines.

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When can a U.S. inventor apply for patent protection outside the United States?

A U.S. inventor may file patent application in other countries either after obtaining a foreign filing license from the USPTO, or after six months from the U.S. patent application filing date.

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What is a PCT application?

A PCT application is an international application filed under the Patent Cooperation Treaty (the "PCT"). It allows you to designate any or all PCT contracting states and simultaneously seek patent protection in each of a large number of countries.

Advantages of filing a PCT application:

  • Allows you to evaluate your chances of protecting your invention before incurring major costs in foreign countries.
  • Keeps all of your options open for protecting your invention while still investigating its commercial possibilities abroad. Usually gives you an extra 18 months more in which to file in designated foreign Offices.
  • Obtains more reliable patents abroad.
  • Basic PCT facts - This will take you to the WIPO PCT Web Site (PDF)
  • Claiming priority
  • PCT contracting states

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How do I claim the priority of an earlier application?

In an international patent application, you may claim the priority, under the Paris Convention-and to a certain extent within the framework of the World Trade Organization, of an earlier patent application for the same invention, whether it was a national, a regional (for example, European) or an international (PCT) application, for up to 12 months after the filing of that earlier application. If you do not claim priority from an earlier application, the priority date will be the international filing date of the international application (http://www.wipo.org/pct/en/).

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What is Foreign National Phase?

  • Whether going through the PCT route or directly filing with individual foreign countries, the applicant must fulfill national requirements which differ for each country chosen.
  • The process is expensive and fees vary according to each country.
  • Timeline:
    • Direct: usually must file in a foreign country within one year of the priority filing date. E.g. if a US application is filed on 01/01/2002, the foreign national phase must be entered by 01/01/2003.
    • PCT: must file within 30 months from the priority filing date. This gives the applicant another 18 months to enter foreign national phase.
  • Most countries require absolute novelty. Therefore, inventors should NOT make any public disclosure of the invention, including offers to sell, until a US application has been filed.

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What is the difference between a registered patent attorney or agent and an attorney not registered before the patent office?

In order to become registered before the USPTO, an attorney or agent must demonstrate that he possesses certain academic credentials in science and engineering, pass a moral character investigation and also pass a very rigorous examination relating to patent laws and patent examination procedures. Only registered patent attorneys and agents may practice before the USPTO on patent matters.

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What are invention promotion firms and how can they help an inventor to market the products?

Invention promotion firms generally claim to assist inventors to promote the product and help them find venture capital or manufacturers that have the resources to put the invention into mass production and onto retail store shelves. There are many invention promotion firms that promise inventors special access to independent manufacturers looking for new product. It is recommended for an inventor to obtain clear answers to the following questions before engaging an invention promotion firm:

  1. What will be the TOTAL cost of its services?
  2. What criteria and system of review does the invention promotion firm use to determine whether an invention is worth pursuing?
  3. Who are the firm's invention evaluators and what are their qualifications?
  4. What are the names of the manufacturers and/or inventors with whom they have prior working relationships to provide references?
  5. What are the firm's success and rejection rates?

It is also recommended that one should investigate the firm before making any commitments, by contacting the local Chamber of Commerce, Better Business Bureau (BBB) , consumer protection agency, or Attorney General Office to learn if these organizations have received prior complaints on this firm.

The U.S. Federal Trade Commission has a booklet designed for consumers and inventors on the subject of Invention Promotion Firms. One may obtain a copy from any of their regional offices, or contact IPLG.

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