Frequently Asked Questions

How do I find out if I can receive a patent on my idea?

Who will prepare my patent application?

Should I Be Able to Speak With My Attorney?

What is a US patent?

What is the process to receive a U.S. patent?

Are there different kinds of patents?

What do I need to tell my Patent Attorney about my invention?

What does it cost?

What is an Office Action? Is it a Rejection?

Are there really differences in quality between issued patents?

How long does the patent process take?

Is it possible to receive a patent without any rejections from a patent examiner?

What is a Registered Patent Attorney?

How do I find out if I can receive a patent on my idea?

The first thing to do is to write down your idea in as much detail as you can. You need to fully define your idea. Explain what it is, what it does, what problem you are solving, what materials it requires (for physical, mechanical ideas), what steps are needed for the idea to function properly (for software and methods). The more information, the better.

Second, you need to decide what you want to do with your idea. A patent (or trademark) is a property right and allows you to perform certain actions in the marketplace. Ultimately, it allows you to make money. Do you wish to manufacture and market your product? Do you want another option?

Next, speak with your patent attorney. Make sure you’re a good match and that he’s in tune with your concept and goals. Based on the information you provide, you and your patent attorney can decide whether the idea has what it takes to become a patent. A patent search may be a good idea. If you think your idea has what it takes for success, proceed carefully before deciding to prepare a patent application. Before writing a patent application, it is usually a VERY good idea to do a Google search as well as a search of Patent Office records to see if someone else has already claimed the idea. A professional patent search is an inexpensive way to determine if a patent application might be a good idea, or if it might be a waste of money. Speak with your attorney about having a professional search done. After the patent search is finished, you should discuss the results with your patent attorney.

Who will prepare my patent application?

I will. I have years of experience in preparing quality patent applications. I have prepared many new patent applications and I have experience with the prosecution of even more patent applications, both utility applications and design applications. I have a proven record of success.

Should I Be Able to Speak With My Attorney?

This almost sounds like a silly question, but it’s very serious. You need to be able to speak with your patent attorney about your individual application. I am an inventor myself. As an inventor, I would not be satisfied speaking with a customer-relations person, or a non-lawyer technician/salesperson that is not qualified to give a legal opinion. You deserve to speak with the patent attorney who is working directly on your application. Don’t settle for less. Your patent is an important matter. It’s too important to be given impersonal service. I offer you personal service in plain terms. I speak with you directly. I do the writing. I explain the entire process to you so you can make informed decisions. Knowledge is power.

What is a US patent?

A patent is a grant from the government of the United States of America authorizing the inventor rights to the invention claimed in the patent for a limited time, such as 20 years for a Utility Patent (or 14 years for a Design Patent). Unless the inventor has sold or licensed the rights to the invention to someone else, no one else may legally perform or produce the invention within the United States, without the patent owner’s permission. Similar patent protection arrangements are also available in other nations and regions.

What is the process to receive a U.S. patent?

First, a patent application must be filed with the US Patent and Trademark Office. The application must contain a full written description of the invention as well as any drawings necessary to understand the invention. The patent will include a number of claims which clearly specifies what the invention is. The disclosure must be sufficient so that another person who is skilled in that particular technical field can create the invention based on that disclosure. This is the trade-off to receive a U.S. Patent: In exchange for the temporary monopoly (20 years), you must tell the world what the invention is and how to make it.

Are there different kinds of patents or applications?

Yes. There are several different kinds of patents that satisfy different purposes:
Utility Patents

• In very general terms, these patents protect what an invention does or how it is made. Typically, chemical, mechanical, or electrical inventions fall under this heading.
• A Utility patent application (provisional or non-provisional) is appropriate where the inventor wishes to protect howthe invention is made or how it functions. A Utility patent application may lead to full Utility patent rights. A Utility application may “piggyback” from a Provisional application (see below) if it is filed within one year of the filing of the Provisional application. Speak with your attorney regarding recent changes in U.S. Patent law.

• A very short-term (1 year) application that is not examined at the US Patent and Trademark Office. It is simply a bookmark in time at the USPTO. A provisional application is often very useful before filing a Nonprovisional application, but there are some potential drawbacks. Speak with your attorney for more details.
• A Provisional patent application gives the applicant temporary patent pending status. ‘Patent Pending’ means that an application is filed at the Patent Office, and that it is being prosecuted. A regular Utility (or Nonprovisional) application must be filed within one year of the Provisional application’s filing date to preserve your rights to the material disclosed in the Provisional application.
• A Provisional application may be useful if you’re not totally finished refining the idea, but you want to protect what you have. It can be done very quickly and inexpensively.
• However, you will not have any property rights in your idea until your Non-Provisional patent application and claims have gone through the examination process and issued. Remember, a Provisional application will never issue. Only a Nonprovisional application can become an issued patent.

• Protects the way something looks or other decorative or non-functional qualities.

• Protects certain kinds of cultivated plants.

What do I need to tell my Patent Attorney about my invention?

Briefly stated, your Patent Attorney needs your full disclosure. You cannot protect what is not disclosed. Don’t worry, your disclosure is protected by the attorney-client confidentiality/privilege rules even if you decide not to go through with the patent application. You should tell your Patent Attorney the answers to at least six questions: Who, What, When, Why, Where, and How. The answers should be quite detailed and may have numerous parts and subparts. It’s not as bad as it sounds. You simply tell your story of how your invention came to be.
A partial list of what the Patent Attorney needs to know:

• Who is the inventor?
• Are there one or more co-inventors?
• Where did you invent it?
• When did you invent it?
• What is your invention?
• What does it do?
• What problems does the invention solve?
• What difficulties or obstacles did you overcome to invent it?
• What do you want to do with your invention?
  • Do you want to manufacture it?
  • Do you want to license it?
  • Do you want to sell your idea or patent?
  • Nothing?
  • Do you want to stay local or national level, or do you want to go international, too?
• Why did you invent it?
• Are you dissatisfied with something else that is already in the marketplace?
• Did you modify an existing device?
• If you are improving an existing product, what shortcomings are you correcting?
• How did you invent it?
• Did you already make the device, or is it just a concept?
• Have you sold or offered to sell the device to anyone?

How much does it cost?

It all depends on the subject technology and the level of complexity. We need to discuss the options up front. An experienced patent attorney can give an estimate that’s reasonably close. It’s likely that you can arrive at a compromise satisfactory to both you and your attorney. Never be afraid to ask questions. Many people are most comfortable with a flat rate, where they know what the attorney’s fee (for all or part of the process) is right from the start. An hourly rate is fine as long as you receive a full accounting of the hours spent and expenses incurred.

What is an Office Action? Is it a Rejection?

Virtually every communication from the USPTO, whether letter or email, is an Office Action. Most of these communications are simply administrative in nature. However, after the application is processed and assigned to an Examiner, the communications may become substantive rejections. However, a rejection is not the end of the road, just the beginning. The Examiner will provide reasons for the rejection, such as one or more prior art documents that the Examiner believes are particularly relevant. We have the opportunity to respond to the rejection and provide arguments against the suitability of the prior art documents, amendments to the application’s claims, or both. This give-and-take process (prosecution) may go two or more rounds.

Are there really differences in quality between issued patents?

The quality of a patent ultimately depends upon the nature of the invention. A ground-breaking new discovery may provide a lot of material for a very broad and powerful patent application. However, almost always, the inventor must be willing to battle through one or more rejections (Office Actions) to convince the Patent Examiner that his invention is entitled to more than a trifle.
It is not unusual, in fact it is typical, for a patent application to be rejected the first time (and second time) the Examiner sees it. You should not take this personally. Patience and perseverance, by both attorney and inventor, can produce some fantastic results, but both the patent attorney and inventor must believe in the invention and be willing to stick with it. Talk with your patent attorney to find out if he believes in your invention and is willing give it that extra effort.
Each round of arguments with the Examiner means more legal fees, but it also means a greater chance that an issued patent (and your products) will be worth something in the marketplace.

How long does the patent process take?

It’s difficult to say, except that it will be at least a year. The Patent Examiner tries to give a first response to a new application within 14 months. Sometimes the Examiner responds more quickly, but don’t plan on it. Sometimes the wait exceeds two years. However, you are “Patent Pending” as soon as the application is filed.

Typically, the patent application is rejected at least once by the Examiner. Don’t take it personally. The process moves much more quickly from this point.

Is it possible to receive a patent without any rejections from a patent examiner?

Yes, however, this might not be a great situation if you intend to market, sell, or license your invention. My philosophy is that if the Examiner gives you everything the first time you ask for, you didn’t demand enough. The give-and-take of the rejection/response process helps to answer any questions the Examiner may have about your invention, and further aids in refining the idea in comparison to the prior art. A first-round allowance means that the Examiner may believe you are sufficiently far away from existing prior art documents that he feels comfortable giving you what you asked for. This may be bad for you. A first-round allowance means that the Examiner believes there is a gap between your application and what is already out there. This means that a competitor could try to claim that gap between your patent and the other existing patents, effectively limiting your market. One solution for you is to file multiple patent applications in the technology field to build a defensive ‘wall.’ This makes it more difficult for others to ‘design around’ you with their own patents or products.

What is a Registered Patent Attorney?

A Registered Patent Attorney is a person who is both a member of a state bar (any state of the U.S.) AND who is registered to practice before the U.S. Patent and Trademark Office. The USPTO registration examination is a separate and challenging examination in addition to a state’s bar examination. The US Patent Office requires that every attorney registered to practice before the USPTO, have a technical background, typically a Bachelor of Science degree, in a “hard” science, such as chemistry, physics, engineering, and similar disciplines.