What is Patentable?
Subject matter eligible for a “utility patent” includes “any new and useful process,
machine, manufacture, or composition of matter, or any new and useful improvement thereof.”
35 U.S.C. §101.
A “design patent” can also be granted for “a new, original, and ornamental
design for an article of manufacture.” 35 U.S.C. §171.
A “distinct and new variety of plant” that
is invented, discovered, or asexually reproduced likewise may be eligible for a “plant patent.” 35
Some subject matter cannot be patented. This prohibited subject matter includes laws
of nature, physical phenomena, or abstract ideas such as purely mental processes or algorithms,
which are naturally occurring concepts or something that provides “no useful, concrete,
During the pendency of a U.S. patent application, the applicant should include the words
“patent pending” on the item disclosed and claimed in the application. Once a patent is granted,
the applicant should mark the item disclosed and claimed in the patent with the patent number
or the words “patented” or “U. S. patent” to notify the public that the article is patented.
What Benefits are created by a Patent?
A patent creates the patentee, or owner of the patent, the right to exclude others
from making, using, selling, offering to sell, or importing products that would read upon the
claims of the issued patent. These basic rights embedded in a patent are limited to a term of
usually 20 years from the date that the patent application was filed. During this patent term, the
patent is maintained through the payment of maintenance fees paid to the Patent Office. In this
fashion, patents are a valuable for a company whose products are covered by its own patents
or patent’s licensed from others. A patent or a portfolio of patents is evidence of a strong
technological position in a market or industry. Patents also can provide a source of revenue
through licensing the patented technology to others.
When is an Idea Patentable?
Inventions typically occur as the result of confronting some problem for which no
apparent solution exists, or when the solution that exists cannot be used because of cost or
certain disadvantages. Thus, solutions that are new and original and are not obvious may be
patented. Such ideas result from insight into a problem. These ideas are a creative act to
envision a new way to assemble several complements, to arrange the steps of a process, or to
eliminate or replace something that is unnecessary.
When this “Discovery!” moment happens, it is time to write down a description of the
problem and the solution and the date that the idea came into being. When shared with others,
this record is called a disclosure of invention. The inventor should, however, consult a patent
attorney to evaluate what should be done with the idea before discussing it with others. What is Involved in Getting a Patent?
Obtaining a patent starts with a conference with the client. The conference usually
involves determining the invention and whether it is the proper subject for a patent, discussing
the costs and timing involved in obtaining patent, discussing patents, and answering questions
that the client has about patents.
Although there is no legal requirement for preliminary research to determine the state
of the art of the subject of the invention, a patentability search is usually appropriate and the
client will decide whether a patentability search or other preliminary research is to be
conducted. Preliminary research is a separate item of work billed separately for a quoted fee.
Obtaining a patent generally takes about two years, sometimes slightly less and
sometimes considerably longer. It starts with preparation and filing of a patent application, the
cost of which is generally billed at an attorney’s hourly rate. Cost also includes the out–of–
pocket expenses, such as payment of government fees and payment to independent contractors
such as draft persons who prepare application drawings. A professional fee for preparing and
applying is usually quoted, the quote being based on the attorney’s hourly rate and estimated
time involved. Sometimes, however, clients carry out development work while a patent
application is being prepared and substantial revisions may have to be made to the originally
prepared application to incorporate the ongoing development work. In such cases the attorney
fees for preparing the application may be considerably more than originally quoted.
After an application is filed in the United States Patent and Trademark Office (PTO) it is
examined by a Patent Examiner and written communications from the PTO to the attorney,
called Actions, are sent. First Actions almost always involve rejecting all or some of the
application claims as filed. First Actions normally are received about nine months to a year
after the application is filed and a response to an Action must be filed within a time specified. If
a timely response to an Action is not filed, the application will become abandoned. While the
patent application is pending, there may be more than one Action which requires a response.
Typically, a patent will issue (or the application will become abandoned) within about two years.
If an Appeal from the adverse Action is required, the time before a final PTO decision is
obtained is considerably longer.
An attorney cannot guarantee a favorable result. The client must understand that
efforts to obtain a patent may be unsuccessful and that if a patent is obtained it may not
produce an economic advantage for the client.
Work involved when responding to Patent Office Actions is billed at an hourly rate and
normally a response to Patent Office Action involves no additional PTO costs. Attorney fees
are usually approximately one third of the attorney fees required to prepare the original
application. This amount can be different depending upon the complexity raised by the PTO
When an application is allowed by the PTO a Notice of Allowance will be mailed to the attorney by that agency. Actual issuance of a patent can take place only after an Issue Fee is
paid to the PTO. A charge equivalent to roughly two hours’ attorney time will also be billed to
the client for communications and other work involved with issuance of a patent.
Virtually each step of the procedure requires separate authorization from the client and
the client can stop the procedure at any point. For example, after patentability research a
client can decide not to apply, or after an application is filed and a PTO Action issues a client
can decide not to respond. Each increment of the work is separately billable, for example, the
fee for preparing a patent application includes no advance for future prosecution.
INVENTION DISCLOSURE FORM:
Title of Invention:
While some of the information on this form will not be applicable to every invention and sometimes all of the information requested will not be available to the inventor, a conscientious effort should be made to complete this form as completely as possible. Do not limit answers to the space provided. Feel free to include as many pages of disclosure as necessary, including drawing figures, graphs, charts or other data compilation(s), spreadsheets, or photographs, to meet your requirement of teaching how to best use, make and appreciate the invention, and the best mode to practice the invention. 35 U.S.C. § 112
- Circumstances of Conception. [When and where you first thought of the invention].
- Laboratory notebook pages on which this disclosure is based.
- Date of first drawing, if any, illustrating the invention.
- Date of first written description of the invention.
- To whom was the invention first disclosed?
- What was the date of first disclosure?
- When did you first do experimental work toward carrying out the invention?
- When were you first satisfied that you had solved the problem toward which your invention was directed?
- Who observed the progress of your experimental work?
- Purposes and advantages of invention. [Complete description of the advantages, improvements, business method, safety, etc. offered by the invention over existing or prior art B please use additional pages to answer this and any subsequent disclosure questions].
- [Complete description of the invention by all individual component parts, including, but not limited to, block diagrams, logic flow diagrams, e-commerce building blocks, formulas, algorithms, equations, and the like].
- [Complete drawings showing the invention, the method, e-commerce building blocks, logic and program flowcharts (using ISO flowchart standards where applicable)].
- [Include any alternative combinations or substitute components for the invention].
- Possible novel features. [List any component or combination of components in the invention that is believed by you to be novel].
- Closest known prior art. [Refer to or list any known components or assembly of components within the invention found in commerce or literature (prior art), including, but not limited to, any prior art novelty or patentability searches conducted, relevant technical literature, and the like]. List all prior patent (including patents of your Company, if applicable) and published articles of which you are aware that are related to this invention.
- Statement of the problem the invention solves.
- Statement of what had been done previously in the art to solve the problem.
Statement of how this solution [your invention] is better than the prior art.
BUILDING AND TESTING
- Any previous disclosure of conception. [Describe when and where it took place].
- [Describe when and where you constructed proto-types or working models of your invention].
- [Include any alternative combinations or substitute components for the invention as a result of knowledge gained in constructing the proto-type(s) or model(s)].
- [Describe any tests, giving date(s) and location(s) for each such test].
- Test results. [Describe the results of tests, giving the data, graphical representations thereof, date(s) and location(s) for each such test].
STATUTORY BAR ISSUES
- Has the invention been sold or offered for sale or license? If so, when, and where?
- Has the invention been described in a printed publication or at a public forum including, but not limited to, doctoral thesis? If so, when and where?
- Has the invention been used in public? If so, when and where?
- Was the invention known or used by others in this country before invention by the applicant(s) in this disclosure? If so, when and where?
- Was the invention patented or described in a printed publication, in this country or in a foreign country, before invention by the applicant(s) in this disclosure? If so, when and where?
- Is the invention the subject of assignment by virtue of contractual employment terms or similar instrumentalities? If so, please provide a copy of the assignment provision.
Inventor(s) ___________________________ Date: ________________
Inventor(s) ___________________________ Date: ________________
If the above described and detailed invention will be owned by or assigned to a legal entity, please identify the entity by name:
Please describe the type of entity (i.e., stock corporation, Subchapter-S corporation, partnership, Limited Liability Company, or such), the Date and State of Formation, and the physical address of the entity’s principal place of business:
Please provide the authorized officer for the above identified entity who will serve as the liaison for all legal matters and billings for the entity, and include that identified officer’s direct telephone number, email address, and postal mailing address: