Frequently Asked Questions
What does a patent do for me?
A granted patent allows its owner to exclude others from possessing, selling, or performing the items/activities described in the claims of the patent. Claims are a list of numbered sentences at the end of a patent that succinctly describe the patented invention and which provide the patent’s owner with legal protection. If a product or service performs or possesses each step or element in a claim it infringes the patent.
Keep in mind, a patent does not grant you the right to the products and services it covers. Patents only allow an owner to exclude activity by others. Your product or service may in fact infringe another patent.
What is a provisional patent and how does it differ from a non-provisional patent?
However, it does allow an inventor to obtain a filing date with the U.S. Patent and Trademark Office (USPTO). A provisional patent is never examined by the USPTO nor is it published by the USPTO. Except for certain special circumstances a provisional patent can never be granted as an official US patent. A provisional patent is valid for one year during which time the inventor can file a nonprovisional patent that receives the same “effective” filing date as the filing date of the provisional patent. Generally, the closer a provisional comes to satisfying the requirements of a standard, non-provisional, patent application the more thoroughly it protects your invention.
When should I file a provisional patent, and when should I file a non-provisional patent?
A popular use of a provisional application is to obtain a filing date while attempting to obtain investment to build a product or service. This tactic may permit an inventor to defer major patent application costs until securing investment or testing the commercial viability of an invention. Patent prosecution entails additional costs after the initial filing and obtaining a provisional application allows the inventor to defer these costs for up to an additional year.
What is the importance of the filing date?
With the introduction of the America Invents Act, which went fully into effect in March 2013, US patent law now operates on a first-inventor-to-file system. This means the first person or entity to file a patent for an invention will have rights over that invention. Additionally, once given a filing date, an inventor may refer to their invention as “Patent Pending.”
How much does it cost to obtain a patent?
In addition to Patent Office fees which may range from several hundred to several thousand dollars from filing to issuance, there are also labor costs for your attorneys and/or agents. This cost comes at multiple stages of prosecution of the patent application. First, there is labor involved in the preparation of the initial application. Later, there are additional labor costs while your representative argues the patentability of your application with the Patent Office.
Traditionally, law firms will charge you based on 6 minute increments of work at exorbitant hourly rates. Soquel Group offers a fixed fee system where before action is taken, you will be notified of exactly how much that action will cost you. The amount of the fee varies based upon the extent of the action and the complexity of the material involved. Through use of a fixed fee system, Soquel Group typically performs services at less than half the price charged by standard law firms.
After your patent is allowed, an issue fee must be paid. After your patent issues, the Patent Office charges maintenance fees every several years to keep your patent alive.
What does patent prosecution entail?
Filing: When you decide to file a non-provisional patent application the first step is to disclose your idea to your chosen patent representative (patent attorney or patent agent). Depending on the material and complexity of your idea, the character and length of this phase changes as one would expect. Your representative will then prepare your application including claims, specification and drawings and file it with the US Patent and Trademark Office (USPTO).
Once filed and minor administrative matters are attended to, it is not uncommon for the patent office to take 1.5-2 years to begin to examine your application. Once a USPTO examiner has looked at your application they will typically issue an “office action” that rejects the various claims based on prior art or for other reasons. This is typicaly, so don’tt let this discourage you. It is rare for an application to be allowed on the first examination. In fact, it is normal for the application be rejected 2 to 4 times before it is finally allowed. After each rejection your representative will submit a response to the Patent Office that argues the merits and law in favor of the allowability of your application and may make amendments to the claims to circumnavigate prior art cited by the Examiner.
In the course of the prosecution of a patent application it is distinctly possible that the patent office will want to divide a single application into multiple applications or to only allow part of an application. If this happens, the remaining material may be pursued in additional applications referred to as continuing applications, which include divisional patents and continuations.
How long does it take to obtain a patent?
As mentioned above, after filing, it is common for an application to sit unexamined in the USPTO for 2 years. That said, the USPTO aims to have the prosecution process take no longer than 3 years. It does not always meet this target. When the USPTO misses some deadlines, it is sometimes required to add additional life (duration) to your patent. Suffice to say that the prosecution process is measured in years as opposed to another unit of time.
What is patent infringement?
Patent infringement occurs when another performs the exact sequence of steps or includes the same elements or structure described in one of the claims of an issued or granted patent. For example, pretend a make believe claim for a make believe widget in a patent you own reads: 1. A widget comprising: a doohickey; and a gizmo, the gizmo mounted on the doohickey.
This claim has two functional components, and a statement as to the relation of the two components. Thus, were a company to develop a product where a a gizmo is mounted on a doohicky then the company’s product infringes upon your patent.
Now imagine someone has manufactured a widget which consists of a doohickey with a gizmo mounted on it, but also has a sprocket (another make believe item) mounted on top of the gizmo. This would ALSO infringe your patent. Adding additional parts will not prevent infringement.
However, if the parts are assembled in a materially different way, another person can avoid infringing. For example, if the widget was constructed by first having a doohickey that has a sprocket mounted on it, and the sprocket further includes a gizmo, this may not be an infringement. This is because the sprocket, which is not included in your patent, is now interspersed between the two parts your patent claims are mounted to each other.
Keep in mind that this example uses make believe parts and that with a real invention, using real parts (or steps when a process is concerned), that a court may determine that certain parts are not legally relevant.
What do I do if a product or service infringes my patent?
You can request the manufacturer cease and desist or you can request that they pay you a royalty or license fee. Alternatively, you can sue them in a Federal District Court.
The sorts of relief a patent lawsuit may provide are an injunction to sales (prevent a product or service from being sold), the profits you lost competing with this product, and the profits that product made your competitor. Also, monetary damages in patent infringement cases may be tripled in some cases.
Although Soquel Group does not perform patent litigation we can introduce you to a patent law firm that specializes in litigation. In some cases, such a firm will agree to receive a portion of its fees on a “contingency” basis, i.e. they receive a percentage of the amount awarded to you by the court. Soquel Group can assist you to negotiate a contingency fee agreement.
What is the difference between patentability and infringement?
Above, there is a discussion of what infringement is. Though producing a product that infringes is rarely a good idea, you can obtain a patent for a product which would infringe upon another product. Not only is this allowed, it is common.
The example above includes a discussion of two widgets. One of these widgets has an extra sprocket on it. This second widget infringes upon the first widget; however, the second widget is also patentable over the first. The idea behind this is that the addition of the sprocket (theoretically) improves the invented widget and the US government wants to encourage product improvement.
Should this occur the first widget owner can still exclude the second from producing the second widget. In turn, the second owner can exclude the first from making the improvement to the widget.
The goal behind obtaining a patent on an improvement to an existing, patented, product is to bring the owner of the first product to the negotiating table where a mutually beneficial licensing arrangement can be made.
Can I sell my patent? How much is it worth?
You absolutely may sell your patent. This presumes you have not already assigned the rights of your invention to your employer or are not legally obligated to do so.
The value of your patent primary depends on the marketability of the product it represents, but also depends on the strength of the claims in the patent and on the quality of the patent itself. The broader the claims, the more material covered, and more valuable the patent. In some cases, Soquel Group can act as a patent broker and help you find a buyer for your patent.
Should I do a patent search?
A patent search, also referred to as a “patentability” search, entails searching a variety of specialized patent databases to identify existing patents and publications, referred to as prior art, which may be relevant to your idea. The information provided by this service is important to find out what other patents exist in your inventive field, their relevance to you, and the strength of the claims of these patents. Soquel group recommends a patentability search in certain cases, such as (1) when you are contemplating developing a new product or service are unaware of who your competitors are, (2) if you are concerned that there may be blocking prior art, or (3) you are seeking investment from investors that are savvy about intellectual property and want some assurance that your core idea, or a patent you have filed is likely to be granted by the USPTO.
Can Soquel Group help me obtain a patent outside of the United States?
Yes! There are two ways of doing this. First we can simply file in the country of your choice. Keep in mind that different countries have wildly different governmental fees (Europe and Japan are notoriously high comparatively). Alternatively, we can file what is called a PCT application. This is an “international application” which is not examined. The PCT application does two things. First, the PCT gives you more time. Depending on which final countries are desired, you receive up to 30 or 31 more months to file in specific countries. Second, PCT applications make it easier to apply in many countries at once. The PCT application is generally appropriate when you wish to cover several countries. To file in foreign countries we need to enlist the aid of foreign counsel to do administrative work. Soquel Group maintains a network of patent agencies that specialize in their respective countries or territories to make this possible.
Keep in mind that a foreign application must be filed within one year after filing a US patent. After one year from the earliest, or “effective” filing date of your patent you lose the right to file a patent internationally. For example, if you first filed a provisional patent then both the US nonprovisional and/or any international patents must be filed on or before the 1 year anniversary of the filing date of the provisional patent.
You said my invention needs to be enabled, what does that mean?
In the end, obtaining a patent is an agreement with the US government. You agree to publically divulge the fruits of your labor, and the government agrees to grant you a limited monopoly on that idea. “Enablement” is your way of keeping up your end of the bargain. Your patent application must be able to teach another person “of ordinary skill in the art” (your field) how to practice your idea. You are allowed some leaps in logic, such that one with ordinary skill in the art could figure out on their own, but that does not include everything. As an example, if your idea was an app for a mobile phone, it is not necessary to include the actual code to accomplish the functions of the app and it is not necessary to describe the operation of a mobile phone in detail or of a mobile phone operating system; however, you must describe any unique processing performed by your app, for example novel algorithms, user interfaces, input and output data, etc. You must also describe the environment or system in which the invention operates.
My invention has a competitor with a similar concept, do I have to tell the USPTO about it?
Yes. Unfortunately, US patent law requires that you disclose everything you know about your competition to the Patent Office. Other countries are different. Here, prior art (relevant material that came before your idea) has to be reported. This is not to say you have to go looking for prior art (the examiner will do that), but if you know of any, you must disclose it.
What is priority, how do I get it?
Priority, or a priority date, refers to the earliest date your idea can be traced to legally. Under the recently enacted America Invents Act, US patent law is now on a first-inventor-to-file system, so nothing that occurs before filing with the USPTO is legally relevant to your priority date. The value of a priority date is that anything that came after that date cannot be used as prior art for novelty or obviousness bars. The reason is fairly self-evident: art may not be prior if it came after. Subject to a series of rules, new applications may sometimes claim priority from applications that came before. Thus, even though the filing date of an application may be one time, the priority date of that application may be years earlier. To obtain priority from an earlier application, the new application must be based on the same material as the old application, and certain time sensitive requirements need to be met.