David S. Alavi, PhD
Registered Patent Agent
Why file a patent application?
- 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
- How can a patent be
- 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
- 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
- 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
- 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
- The U. S. Patent and Trademark Office
provides an Independent
Inventors Website where much useful information may be found.
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