For Inventors

The Patent Act permits “utility” patents to be issued on four types of inventions: machines, compositions of matter, articles of manufacture, and processes. The invention must also be novel and “non-obvious,” as compared with the state of the art when the invention was created. Patents can also be obtained on new types of plants and on industrial designs.

Artistic works, such as recorded music, pictures, videos, documents, and software creations, can be copyrighted to prevent others from copying the artistic aspects of the work.

Branding identifiers, such as the names and logos used to identify companies, products, and services, can be trademarked to prevent others from using the same identifiers, and to prevent counterfeiting of goods and services. Proprietary business knowledge, such as industrial processes and business strategies, can be secured as a trade secret to prevent competitors from stealing and using the information.

More specialized forms of protection are also available, such as for semiconductor designs (“mask work” protection), boat hull designs, and architectural designs.

The inventor (or firm) prepares a patent application that describes and “claims” the invention, usually described at length in text and illustrated with figures. The application is filed with the U.S. Patent & Trademark Office, and after an indeterminate period (usually several years), a patent examiner reviews the patent application to decide whether or not to grant the patent. If the examiner decides that the invention is not novel or non-obvious (or fails to meet other requirements of patentability), the examiner may respond with one or more “rejections,” citing some “prior art” references that might be relevant. The inventor then replies to the rejection by explaining how the prior art differs from the invention, or by modifying the patent application to avoid the prior art. (Most patent applications go through one or more rounds of rejection and reply before a patent issues.)

This process, known as “prosecution” of the patent application, continues until the examiner reaches a final decision. The examiner may allow the application to issue as a patent, and provide an official patent document to the inventor. In other cases, the examiner may respond with a final rejection. The applicant may then continue examination (at additional costs), appeal to an internal board of the patent office or to the federal courts, or abandon the patent application.

Typically, the biggest expense is from the preparation of the application by a practitioner, such as a patent attorney or a patent agent. This is a time-consuming and delicate process, because the application must be carefully written in view of a complex body of patent laws, the state of the technical art, and the interests of the applicant. A poorly written patent application might provide little or no worth to the inventor, and it may be difficult or impossible to fix mistakes after the initial filing. In addition, the patent office charges some fees to examine the application and to issue the patent, as well as “maintenance fees” that keep the patent alive after issuance. Negotiations with the patent office regarding the application may involve additional effort by the practitioner and fees charged by the patent office.