We’ve put together answers to some of the most commonly asked questions about patents in general and about our service in particular. If you have any specific questions, please use the contact form here to ask us.
Questions
What makes something patentable?
What are some benefits of getting a patent on my invention?
If I employ your design services, does this make you a co-inventor?
Am I safe in disclosing my invention to you?
How do I decide if a Provisional Application is right for me?
How do I decide if a Design Application is right for me?
Where can I get more information?
Answers
In the United States, patents are granted to individuals only. Individuals can assign ownership to companies or institutions, or they can license patent rights to others, typically for a fee. As of March 16, 2013, under the America Invents Act (AIA) of 2011, patents are now granted to the first (inventor) to file. Previously, it was the first to invent. The first applicant (inventor or assignee) receives the right, unless the invention was derived from another.
What makes something patentable?
A patentable invention must have utility, novelty, and it must not be obvious to one skilled in the art at the time of the invention. Certain things, such as mathematical algorithms and natural laws, are not patentable.
The statute that governs the US Patent system (37 CFR) specifically mentions “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” In practice, anything made by the hand of a person is potentially patentable, so long as it is also useful. An inoperable concept, for example, would not be useful. A good example of an inoperable concept is a perpetual motion machine. Because perpetual motion machines are not possible under the laws of physics, they are not patentable under the laws of the US Patent system
What are some benefits of getting a patent on my invention?
Patents represent a grant of exclusivity for 20 years (in the case of utility patents) from the filing date of a non-provisional patent application. They convey property rights (termed “Intellectual Property”) in the sense of legally preventing others from making or using the claimed invention. When you have a patent, you have an exclusive monopoly on who can make, use, or market your invention within the jurisdiction of the United States.
If I employ your design services, does this make you a co-inventor?
In most cases, my design services would not go beyond developing a “Reduction to Practice” of your invention. Reduction to practice involves taking the inventor’s concept and translating it into a working embodiment. The working embodiment might be an engineering specification, a prototype, or even a specification in a patent application. In any case, reduction to practice is the same as inventing inventing, and it comes after the inventing is done. However, if I were to suggest a novel feature which then appeared in a claim of a subsequent patent application, I would then need to be added to the patent application as a co-inventor to protect your patent’s validity. In such a case, I would guarantees to make an assignment back to you (for the token price of $1), effectively transferring any rights that might accrue to you as a result of my co-inventorship.
Am I safe in disclosing my invention to you?
As a Patent Agent, I am registered and credentialed through the US Patent & Trademark Office. Protection of client confidentiality is one of the tenets of ethical practice as laid out by the USPTO
How do I decide if a Provisional Application is right for me?
This is best advised on an individual basis. If you have limited resources and are looking for a partner to take over and assume financing, a Provisional might be appropriate. A Provisional must be followed up with a Non-Provisional within 12 months. Claims in the Non-Provisional which are not supported in the Provisional disclosure cannot rely on the Provisional for an effective filing date. Since the AIA, however, places new emphasis on early filing, a strategy of filing multiple Provisionals during development may be appropriate.
How do I decide if a Design Application is right for me?
Like the Provisional vs. Non-Provisional decision, this is best advised on an individual basis. However, if you want to protect “Looks Like”, versus “Works Like”, a Design might be appropriate.
Where can I get more information about how patents work?
There is excellent educational information on patents at www.simplepatents.com.
