- Basic Information about U.S. Patents
- What is a Patent?
- A patent is a certificate issued by the government to an inventor which gives
the inventor the right to exclude others from making, using, or selling his/her invention
for 17 years. After 17 years, anyone can make, use, or sell the invention. A patent
application must be filed within one year from the time the invention is made public.
- What is Patentable?
- An idea by itself is not patentable. The idea must be "reduced to practice".
The statutory definition of what is patentable is: any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement thereof.
The term "useful" is generally taken to mean that the invention actually
works to accomplish some task; it is not a value judgement on the worth of an invention.
Recent decisions have determined that computer software and synthetic life forms
can be patented, but they still must be new and useful.
- The Application
- In the United States, an application for a patent must contain a description
of the invention which is in sufficient detail to enable someone familiar with the
technology to make and use the invention. For example, an application for a patent
for an improved electric razor must contain enough information to enable someone
familiar with electric razor technology to make and use the invention, that is the
improved electric razor which the inventor is trying to patent.
__ The patent application must also contain at least
one "claim". A "claim" is a legal description of the invention
which lets the public know what the inventor has actually invented, what is his/her
__ Lastly, the application must contain a declaration
signed and dated by the inventor and the filing fee. The declaration is very important
in the U.S. Patent and Trademark Office (PTO) and must be signed by the inventor
only after he/she has read and approved the application. The declaration may be filed
separately after the application is filed, but a late fee is charged.
- Owner vs. Inventor
- In the United States, an application for a patent must be filed "in the
name of the inventor". In other countries, the application may be filed by an
"applicant". What does this mean?
__ A patent is a valuable piece of property like a house.
The inventor is like the builder, but he might not own the house. I can hire a builder
to build a house for me, but I own it from the start, even before the first nail
is hammered. Big companies have research departments (inventors) on their payroll.
They pay these people salaries to invent things. These inventions are owned by the
big company, even before a patent application is filed. In the U.S. we call the owner
of a patent who is not the inventor an "assignee". We call them that because
the inventor must "assign", i.e. sell or give title to, the invention.
Why?, because in the U.S., the invention is owned by the inventor until it is assigned.
In the US, the "applicant" is always the inventor, but the inventor can
assign his rights to another.
__ An assignment can be made any time before the patent
expires (17 years after it issues).
- Once the application is filed, the inventor can use the phrase "Patent Pending"
in reference to the invention. Several months after the application is filed, it
is assigned to a patent examiner. There are hundreds of patent examiners working
in the PTO and they are arranged in groups according to technology. For example,
there is one group of examiners for inventions dealing with rockets and another for
inventions dealing with baby carriages.
__ The examiner determines whether the application meets
the formal requirements of the PTO, whether the invention claimed is useful, and
conducts a search to determine whether the invention claimed is new.
__ The examiner then issues the first "Official
Action" from the PTO. I say first because the applicant is entitled to 2 Official
Actions. The Official Action is written by the examiner who has been assigned to
the application. The examiner is an engineer, usually not a lawyer, sometimes experienced
and knowledgeable, often young and inexperienced. He or she is supposed to read the
application carefully and advise the applicant, by way of the "Official Action",
whether the patent will be granted or whether the application needs revision.
__ The reply to an Official Action is called an Amendment.
After the Amendment is filed, some time goes by and then the examiner issues a second
__ If all goes well, the second Official Action is a
Notice of Allowance. This means that the examiner believes the application can issue
as a Patent. The actual Patent is the application as amended and printed nicely with
a red ribbon and a gold seal.
__ In response to the Notice of Allowance, the applicant
must pay an issue fee on the date due (3 months after the date of the allowance).
__ After the issue fee is paid (several months after),
a receipt is mailed from the PTO which tells what day the patent will issue and what
number it will get.
- A patent lasts for 17 years if it is maintained. To maintain a patent maintenance
fees must be paid 3.5, 7.5, and 11.5 years after it issues. If the fees aren't paid,
the patent lapses.
This file was originally uploaded to AOL by Thomas A. Gallagher, ESQ., ©1990.
Please visit his web site for completely updated information on this and other legal
THOMAS A. GALLAGHER, ESQ.
Registered Patent Attorney
30-605 NEWPORT PARKWAY • JERSEY CITY • NJ • 07310
TELEPHONE: 201-653-4269 • FAX: 201-653-4364
TELEX: 6504023049 • MCI MAIL: 402-3049
- The above is not intended to be legal advice, but is merely informative
of the copyright laws. Anyone interested in obtaining information about copyright
protection should seek the advice of a qualified attorney.