Patent Protection—Utility Patent
utility model patent
A patent is an exclusive grant giving its owner (called the patentee) the right to exclude others from
making, using, or selling within the United States (and as of January 1, 1996, also the right to exclude
others from offering for sale within or importing into the United States) the invention as defined in the
claims of the patent for a fixed period of time. This period of time is ordinarily 20 years from the date of
filing the patent application. However, for a patent in force on, or that results from an application filed
before June 8, 1995, the time period is 17 years from the date the patent is issued or 20 years from the
date of filing the application, whichever is greater. Both the 17 and 20 year time periods can be extended
up to five years in certain instances.
4.05 Patent Protection—Utility Patent
A patent is obtained by filing an application in conformance with the various statutes enacted by
Congress and the numerous rules promulgated by the United States Patent and Trademark Office. Upon
filing of the patent application, an examination is made to determine if the application adequately
describes the invention, if the invention includes patentable subject matter, and if the invention is novel
and unobvious from what is already known in the field to which the invention pertains.
A patent application includes a specification, one or more claims, one or more drawings (if the
invention is of a type which can be illustrated), an inventor’s oath (or declaration), and a filing fee.
The specification is the portion of the application which describes how to make and use the invention.
It is very important that this portion of the application be accurate, clear and sufficiently detailed so that
any person skilled in the particular field of your invention could make or carry out your invention using
only your disclosure and knowledge generally available in the field.
The claims, on the other hand, are not intended to explain the operation, construction, or use of the
invention. Instead, they serve to define specifically the subject matter which the inventor is trying to
patent. Traditionally, that subject matter is defined in anywhere from several (for a simple invention) to
many (for a complex invention) claims of varying scope. Thus, if one claim is later held to be invalid or
noninfringed, perhaps another claim will be held to be valid and
The drawings must conform to numerous specific rules promulgated by the Patent and Trademark
Office. Thus, drawings which you think are adequate (and which may be perfectly adequate for
manufacturing purposes) will typically not be found adequate for Patent and Trademark Office purposes.
infringed.
The inventor’s
Finally, the filing fee is a function of the number and type of claims in the application. Currently, the
basic filing fee for a small entity, such as an independent inventor, is $370 (fee as of 1 October 2001
subject to adjustment periodically by the U.S Patent and Trademark Office). It is usually not a major
element of the cost of filing a patent application.
must sign an oath before a notary or in lieu thereof, a declaration (not notarized) which
is usually a printed form with relevant information filled in by your patent attorney. You should read it
carefully, that you understand it (discuss it with your attorney if need be), and make absolutely certain
that you can truthfully make all the statements required by the form. If you cannot truthfully make all of
the substantive statements required by the form, but you sign the form anyway, you will not only be
subjecting yourself to possible federal prosecution, but any patent which you obtain may be invalid
anyway!
A patent application is a complicated document, the preparation of which is governed by many laws,
rules, and customs. Although it is possible to prepare and file a patent application on your own, you are
strongly urged to retain a patent attorney to prepare your patent application. If you do prepare and file
your own application, there is a good chance that it will cost you more later to have a patent attorney try
to “patch up” your application than it would have cost to have had him prepare the application in the first
place. Moreover, it may well be that the patent attorney will not be able to “patch up” your application,
and that you will lose the benefit of your filing date, if not the opportunity to patent your invention
altogether.
The cost of preparing and filing a patent application varies considerably, depending on the complexity
of the invention. Most of the cost is for the time your attorney spends working on your application.
Although it is impossible to predict that time with precision in advance, by the time your attorney has
reported a patentability search on an invention, he will be able to make a fairly good “ballpark estimate”
of the cost of preparing and filing a patent application. At that point you can agree whether he will
prepare the application for you for a fixed price, at an hourly rate, or on some other basis. In most cases
the attorney will require a “retainer” (i.e.
The cost of preparing and filing a patent application does
, an advance partial payment) before beginning work on the
application, with the balance to be paid after preparation of the application but before it is filed.
not include the cost of prosecuting the
application (i.e., corresponding with and interviewing the examiner) or the cost of the government
printing fee if the application is allowed. These costs are also difficult to estimate in advance. However,
once your patent attorney knows what your invention is and has some idea of the prior art (courtesy of the
patentability search), he should also be able to give you some broad estimates of these costs.
While the difficulty of estimating prosecution and issue costs leaves the door open for some unpleasant surprises, prosecution typically does not begin until about a year after the application has been filed. By that time you may have a better idea of the value of the invention. If the invention then appears to be extremely valuable, the value of patent protection on the invention will be well worth the filing and prosecution costs. On the other hand, if the invention then appears to be valueless, you can allow the application to go abandoned at minimal further expense. With signing into law of what is referred to as the American Inventors Protection Act, all US Patent Applications will now be published eighteen (18) months after the filing date. An individual inventor may request that the application not be published. However in order to prevent publication the applicant for a patent must give up filing foreign patent applications that correspond to, or are based on, the US Application. There are specific rules relating to publication which should be consulted by the applicant prior to filing a US Patent Application. Publication of a US Patent Application gives rise to the possibility of the patentee or patent owner collecting a reasonable royalty from an infringer for the period beginning with publication up to the date a patent issues on the application, provided the claims that were infringed in the application are also in the issued patent. After issuance of the patent, the patent owner has the same rights to enforce the patent as before passage of the new law. After your patent has issued, maintenance fees must be paid 3.5, 7.5 and 11.5 years after issue in order to maintain your patent in force. The exact amounts of the maintenance fees vary with inventor status and time for payment. For individual patent owners and small entities they are presently $440, $1010, and $1,550 (as of 1 October 2001), respectively, at the three due dates given. The quoted maintenance fees are those in effect at the time of publication of this edition. It is possible the fees can change annually, thus a current fee schedule should be consulted.
While the difficulty of estimating prosecution and issue costs leaves the door open for some unpleasant surprises, prosecution typically does not begin until about a year after the application has been filed. By that time you may have a better idea of the value of the invention. If the invention then appears to be extremely valuable, the value of patent protection on the invention will be well worth the filing and prosecution costs. On the other hand, if the invention then appears to be valueless, you can allow the application to go abandoned at minimal further expense. With signing into law of what is referred to as the American Inventors Protection Act, all US Patent Applications will now be published eighteen (18) months after the filing date. An individual inventor may request that the application not be published. However in order to prevent publication the applicant for a patent must give up filing foreign patent applications that correspond to, or are based on, the US Application. There are specific rules relating to publication which should be consulted by the applicant prior to filing a US Patent Application. Publication of a US Patent Application gives rise to the possibility of the patentee or patent owner collecting a reasonable royalty from an infringer for the period beginning with publication up to the date a patent issues on the application, provided the claims that were infringed in the application are also in the issued patent. After issuance of the patent, the patent owner has the same rights to enforce the patent as before passage of the new law. After your patent has issued, maintenance fees must be paid 3.5, 7.5 and 11.5 years after issue in order to maintain your patent in force. The exact amounts of the maintenance fees vary with inventor status and time for payment. For individual patent owners and small entities they are presently $440, $1010, and $1,550 (as of 1 October 2001), respectively, at the three due dates given. The quoted maintenance fees are those in effect at the time of publication of this edition. It is possible the fees can change annually, thus a current fee schedule should be consulted.
Informative article. Thanks for sharing.
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