David S. Alavi, PhD
Registered Patent Agent

Why file a patent application?

Disclaimer

I am not an attorney! I am a patent agent, and I am only authorized to practice before the Patent and Trademark Office to help clients try to obtain a U.S. patent. The information presented on this page is for general information purposes only. For legal matters associated with a patent or patent application (including licensing, assignments, commercialization, contracts, infringement issues, and so forth), the assistance of an attorney should be sought, preferably an attorney specializing in intellectual property matters.

What is a patent, and what can be patented?

A patent is a legal instrument issued by the government of the United States that may be used by the patent holder for a limited time to attempt to exclude others from using the patented invention. "Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent." ( 35 USC 271a) What can be patented? "Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor . . ." ( 35 USC 101)

How can a patent be exploited?

The exclusionary rights described in the preceding may be exploited in various ways. For example, a patent holder may commercialize the invention him/herself, and use the patent to exclude all potential competitors. A patent holder may license the patent (exclusively or non-exclusively) to others in return for royalties and/or licensing fees. A patent holder may sell outright all rights to the patent (known as an assignment). In all cases, it up to the patent holder to enforce a patent. The Patent and Trademark Office only issues patents; enforcement is typically handled in the courts.

How is a patent obtained?

To obtain a patent, an application must be prepared and filed in the U.S. Patent and Trademark Office. The application comprises a written specification and drawings. "The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention. The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention." ( 35 USC 112) A filing fee must be paid to the Patent and Trademark Office when the application is filed. The Patent and Trademark Office conducts a search to determine whether the invention is new and non-obvious in light of the prior art, and examines the application to insure that the invention is adequately described in the application. If these conditions are not met, the application may be rejected. If they are met, a patent issues. The time from filing an application to issuance of a patent may range from 10 to 36 months (and sometimes longer).

What is "Patent Pending"?

"Patent Pending" simply means that a patent application has been filed and is currently pending before the Patent and Trademark Office. No enforceable exclusionary rights are associated with this status. It does, however, put the public on notice that a patent may issue soon, and may therefore discourage potential competitors.

How can a patent application be exploited?

While a pending patent application cannot be used to assert exclusionary rights, it may still be exploited in other ways. In particular, the owner of a pending patent application may try to enter into licensing, royalty, and/or assignment agreements based on a pending application.

How does one proceed with a patent application?

Prior to filing a patent application, one should carefully consider the relative costs and benefits of having a patent, along with the probability that a patent application would be successful. If it is decided to move forward with a patent application, consultation with a registered attorney or agent is strongly advised. He/she may suggest a preliminary search of the prior art before preparing an application, or may proceed directly to preparation of a patent application as the circumstances dictate.

Where can more information be found?

The U. S. Patent and Trademark Office provides an Independent Inventors Website where much useful information may be found.

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