Patents R Us: Information and Services for Inventors and Patent Owners

Patent Basics

Types of Patents and Patent Applications
There are three types of Patents (Utility Patent, Design Patent and Plant Patent) and two types of Patent Applications (Provisional Patent Application and Non-Provisional Patent Application).

• Utility Patent: The most common patent is called a utility patent, which is basically a patent on an apparatus or a method. 

• Design Patent: A design patent is sometimes compared with a copyright, and is basically a patent on a very specific design. 

• Plant Patent: A plant patent is a patent on a new species of fruit, vegetable or other asexual organism.

Provisional Patent Application
A provisional patent application is not an application that will be examined. It is used instead to establish a priority date. A provisional application is designed to buy the inventor more time to work on the invention and decide if he (or she or it) wants to pursue a non-provisional patent application, which requires more work and is typically more expensive. A provisional patent application is a simple description of the proposed patented invention along with applicable drawings. 

It currently costs just $100 to file a Provisional Patent Application, while a Non-Provisional Application costs at least $500. A provisional patent application is automatically abandoned at the one-year anniversary of the Provisional Patent Application’s filing date.

As long as a Non-Provisional Patent Application is filed before the one-year anniversary of the filing of the Provisional Patent Application, the Non-Provisional Patent Application may claim the date of the Provisional Patent Application. The advantage of filing a Provisional Patent Application is that any references that describe the inventor’s idea that is dated after the date of the Provisional Patent Application cannot be used against the Non-Provisional Patent Application!

An inventor who questions if his invention will eventually be profitable enough to justify applying for a patent can file the less expensive Provisional Patent Application. That will give him one year to test market the invention before deciding whether or not to file the more expensive Non-Provisional Patent Application.

Non-Provisional Patent Application
A non-provisional patent application requires a few more components than the provisional patent application. It requires a set of claims, a description of the invention, any applicable drawings of the invention, an abstract, a filing fee, and an oath or declaration.

Filing a Non-Provisional Patent Application
There are several key elements to a Non-Provisional Patent Application, and each is critical to the application being accepted and a having a patent awarded.

• Claims: These are the most important elements in a patent application. It is in each Claim that the invention is described in one sentence, and each claim is interpreted very literally by the patent examiner. Several claims may be – and often are − included if there are several aspects of the invention that the inventor wants to protect. Patent law allows only one patent per invention, so if a patent application includes several claims, and they were dissimilar enough to be construed as creating two distinct inventions, the Patent Office will require the patent applicant to choose between the two inventions. Only one will be considered, and the inventor will have to file a separate application for the other. If a Patent Application has more than twenty Claims, the Patent Office will charge an additional fee for each. Once the claims are stated, the purpose of the rest of the application is to essentially support those claims! 

• Description: The Description is usually text with reference to drawings that illustrate the invention. Patent law requires that the invention be described in enough detail so that someone of “ordinary skill in the art” will be able to make and use the invention. It is also required that the most practical ways to make and use the invention are disclosed in the Patent Application. The Description should include alternate methods of producing and making use the invention. It is very important that each Claim be fully supported in the description.

• Figures: If the invention can be shown in a figure, it must be included with the Application. Figures are typically referenced in the Description.

• Abstract: This is a summary of the material disclosed in the Description.

• Declaration: An inventor is required to sign a Declaration stating that he believes himself to be the true inventor of the invention in question, that he is familiar with all items included with the Patent Application, and he will disclose to the Patent Office any information he has that will help the Patent Examiner determine the patentability of the invention. Anyone who contributed to any one of the Claims is considered to be an inventor. 

• Assignment: Ownership of a patent usually belongs equally to all inventors, regardless of how much each contributed to the patent’s claims. Businesses, universities and other organizations will typically require their employees to assign ownership of the patent to the organization if the invention was developed while they were in the employ of that organization. The organization will own the patent and the inventors will be asked to sign an Assignment (a document transferring ownership of the patent to the organization). Such Assignments are usually executed when the Declaration is signed.

• Information Disclosure Statement: This may be filed with the Non-Provisional Patent Application, but it may be filed at any time during the patent application process. An Information Disclosure Statement is a list of the references that the inventor and the Patent Agent and Patent Attorney believe might affect the patentability of the invention. There is a form provided by the Patent Office that an inventor uses to list these references. Most of the references are typically U.S. Patent references, but foreign patents and non-patent references also must be submitted. If there is any doubt about whether or not a reference will affect the patentability of the invention, the applicant should submit the reference.

Application Fees
The U.S. Patent and Trademark Office is a self-funded agency. No taxpayer dollars go to support the agency. It pays its own way from the fees it collects. The Patent Office has a two-tiered fee structure. Most applicants will qualify for what’s called “small entity” status. That means the applicant is either an individual or a business with fewer than 500 employees. The total in fees to file a Non-Provisional Patent Application is $540 and breaks down as follows:

• Filing Fee: The initial fee to file the application is $165.

• Search Fee: The fee to conduct a search for similar patents is $270.

• Examination Fee: The fee to review the applicant’s documentation is $110.

• Issuance Fee: If and when the patent is issued, the applicant is charged $755.

Maintenance Fees
Once a patent is issued, there are fees that must be paid to keep the patent current and valid, and these are due and payable at three points in time based on the date of issuance of the patent.

• 3.5 Years: $490

• 7.5 Years: $1,240

• 11.5 Years: $2,055

Patent Agents and Patent Attorneys
Just as plaintiffs and defendants are represented in court by attorneys, there are patent practitioners who represent patent applicants before the U.S. Patent and Trademark Office. The process of applying for a patent is referred to as “patent prosecution.”

• Patent Agent: This is a person who has passed an exam administered by the Patent Office and has demonstrated technical expertise. Patent agents are registered with the Patent Office, and they assist applicants through the patent prosecution process.

• Patent Attorney: A patent attorney is an attorney-at-law (that is, he or she is a member of a state or DC bar association) who also meets the same qualifications as a patent agent. A patent attorney can represent a patent applicant before the Patent Office and can also represent a patent applicant in a court of law.

• Cost of a Patent Practitioner: The fees that patent agents and patent attorneys charge varies, but it will typically cost between $3,000 and $5,000 for a patent practitioner to assist with the prosecution of a Non-Provisional Patent Application.

• Finding a Patent Practitioner: PatentsR.Us offers a free Patent Agent – Patent Attorney Referral Service.