 |
 |
  |
Under federal law, a patent can be granted for “any new and
useful process, machine, manufacture or composition of matter or any
new and useful improvement thereof”.
Typical Items That May Be Protected:
| • |
Utility Patent :A utility patent covers “any
new and useful process, machine, manufacture or composition
of matter or any new and useful improvement thereof”.
A typical utility patent could cover something like a new biotech
method for detecting cancer, a new way to store tools in a truck
bed, a new business method, a new computer program, a new screwdriver,
etc. |
| • |
Design Patent: the unique shape of an article such as a toy,
flashlight, tennis racket, or cell phone. |
How a Patent protects your invention:
A patent enables you to sue competitors who copy your invention, giving
you a temporary monopoly on your idea, which you can use to either
corner the market, license your idea to one or more other companies
which will pay you royalties to use your idea, or sell your patent
to a company which will then make your invention.
Duration of Patents:
Utility Patent: 20 years from date of filing.
Design Patent: 14 years from date granted.
Area of Coverage:
USA and/or Country of Grant
PCT/Paris Convention: (International Patent treaties - Available For
Multi-Country Filing)
Renewable: No
General Description:
A provisional patent is a brief (compared with utility patents) application
which gives the inventor one year from date of filing the provisional
application to file a full utility patent application.
Duration: 1 year from date of filing.
Renewable? No.
Advantages over filing a full utility patent application:
A provisional patent application is less expensive and easier/quicker
to prepare, and will give the inventor one year from date of filing
to see whether the invention is going to be enough of a success to
warrant filing the more expensive and time-consuming utility application.
Since we can use the information contained in the provisional application
for a utility application later on, the inventor is not “paying
twice” for applications dealing with the same invention.
Disadvantages over filing a full utility patent application:
Inventor has to decide within a year whether to proceed with the full
utility application. Also, it is important that the provisional application
accurately reflect the entire invention, as if it fails to do so,
the USPTO can later restrict the utility application to what was described
in the provisional application.
Bottom line on provisional applications: If you are sure your invention
is going to be a success, don’t waste time on a provisional
-- go right to the utility patent; if you would prefer to have a year
to explore the financial feasibility of your invention before committing
to paying for a utility application, go with a provisional first.
Should you get one? You need to honestly assess your invention. Will
it make money? Would getting a patent in foreign countries increase
your income and/or discourage copying of your invention overseas?
If you answered yes to both of these questions, you may wish to consider
applying for patents outside of the United States
There are two main approaches to international patents
The Paris Convention allows an inventor up to one year to file patent
applications in other countries (which adhere to the Paris Convention)
around the world and to claim the priority date of the first-filed
application. Most of the major international countries are signatories
of the Paris Convention.
The other main international patent program, which can be used in
conjuction with the Paris Convention, is the Patent Co-Operation Treaty,
or PCT, which allows an inventor to file a single patent application
with one Patent Office. The PCT allows the inventor (or the assignee
of the patent) to make one filing which can apply (depending on how
much the inventor wants to pay) to any or all PCT countries. This
allows the inventor to defer much of the filing costs usually required
on filing before the respective national Patent Offices.
As a practical matter, some combination of the Paris Convention and
PCT can allow an inventor to delay his/her decision whether to pay
for individual patent applications in foreign countries for up to
30 months after the filing of a utility patent application in the
US. Just as with the provisional patent in the United States, these
international methods serve as an inexpensive way to “buy time”
to see whether the invention will be profitable before investing significant
money into utility patent applications.
Depending on the number of countries in which an inventor wishes to
file, the cost of preparing a typical Paris Convention application
is around $1,100, and a typical PCT application will run $3,500, excluding
filing fees. These rates assume that the inventor has already filed
a solidly prepared utility patent application in the United States.
Careful! Many foreign countries require absolute “novelty”
in patent applications, so that you must file your foreign applications
prior to disclosing your invention to the public (as opposed to the
United States where you have one year after disclosure to file your
application). So, bottom line: if you are thinking of foreign filing,
don’t tell anyone about your idea other than your patent attorney.
|
|
| This information is provided for
educational purposes only. You should not rely on the information
presented here as a substitute for professional advice. Legal advice
needs to be tailored to specific circumstances, and you should therefore
consult with an attorney for advice regarding your particular situation.
No attorney-client relationship is created by presentation of this
information. |
|
|
|
|
 |
|
