Patents K.C. Gillette   No. 775,134.   Patented Nov. 15, 1904.     RAZOR

Ten Frequently Asked Questions

Q1. What is a U.S. patent?

A1. A patent is a grant issued by the federal government giving an inventor (or his Assignee) the right to exclude all others from conducting any of the following activities within the United States: making, using, or selling the invention. For example, if a knock-off is made in another country but sold in the U.S., the U.S. patent can be used to stop those sales. The U.S. government grants this limited monopoly in return for a full disclosure of the invention in the patent application.

Q2. What is a provisional patent application?

A provisional application is an informal, yet complete, disclosure of an invention filed at the U.S. Patent and Trademark Office. It is never prosecuted by the Patent Office and does not, by itself, result in a patent. It buys the inventor (or his assignee) one year to decide whether or not to file a "regular" (a.k.a. "Utility") patent application. If the regular application is filed within that year, the regular application is accorded the same date as the provisional application.

Q3. How long do U.S. patents last?

A3. Since June 8, 1995, the term of any U.S. Utility patent has been basically 20 years. The 20 years is measured from the date the application for patent was filed, not the issue date of the patent. After the patent expires, it cannot be renewed and anyone is free to copy the invention described in it.

Q4. Can we get a worldwide patent?

A4. There is no such thing. There are some foreign conventions, however, that allow a single application to be filed in multiple countries at a reduced price. For example, a single European patent application can cover over 30 countries belonging to the European Patent Organisation. They include almost the entire European Union, plus some additional countries.

Q5. What is a PCT search? A5. It is an International Search process by which a company can seek a second opinion from a foreign Patent Office as to the patentability of its invention. Companies typically file the PCT search request concurrently with a U.S. patent application, and use the U.S. disclosure as the basis for the International Search. After the process is completed, approximately 22-24 months later, a company can decide then whether its invention is profitable enough to warrant filing foreign patent applications.

MICHAEL H. McGEE Toilet Training Assembly for Cats No. 3,688,742. Patented Sept. 5, 1972.

Q6. What subject matter can be patented?

Q7. What does "patent pending" mean?

A7. It is a great deterrent, used by a manufacturer or seller, to inform competitors that a patent application is on file at the U.S. Patent Office. Rather than run the risk of "buying a lawsuit" when your patent issues, a would-be copier will probably steal someone else's product - one that does not have a "patent pending" designation on it.

A. JACKSON, Jr. Glasses for Chickens No. 730,918. Patented June 16, 1903.

Q8. If one of our employees invents something, who owns it? A8. Generally, in the absence of an express agreement, the only instances where your company may have a right to or an interest in the invention and any patent acquired for it are: Where the employee has been specifically designated or employed to invent a specific thing and does so at your company's expense, title to the invention and to the patent becomes the property of your company; Where the employee has not been specifically designated or employed to invent a specific thing, but the invention is made on company time and with the company's tools and materials, your company acquires what is known as "shop rights." Those shop rights entitle the company to make, use and sell the invention in the conduct of its business, though it cannot prevent the employee from securing a valid patent and even peddling the invention to a competitor; and Where the employee permits your company to use the invention without any reservation as to the employee's rights, this may constitute a constructive or implied license to the company to make and use the invention even outside the scope of its business.

Q9. Can our general lawyer write patent applications and represent us before the U.S. Patent Office?

A9. No, not usually. According to federal statute and the Patent Office rules, an attorney cannot represent a client before the Patent Section of the U.S. Patent and Trademark Office unless that attorney has been certified for prosecution by the Office. To be registered or certified, an attorney must have a technical background sufficient to question the inventors, such as an undergraduate engineering degree or a degree in the physical sciences, and that attorney must have passed a bar exam geared specifically for patent prosecution.

Q10. Should we conduct a search of patents and other records before finalizing a product?

A10. Yes, if the patent search shows that the product is old, then exclusive rights to it cannot be obtained by a patent. It may not make sense to invest any further money in developing or promoting that product.

Practical Advice About Patents

There are many routes to take in applying for a patent. One way is to file a "regular" ("Utility") application immediately in the U.S. Patent and Trademark Office and to let the Patent Examiner in charge of the application do a search to tell the patent attorney whether the client's invention is new or old. Unfortunately, the first response from the Patent Office on the merits normally takes at least 12-18 months. Few clients want to wait that long to see whether they should gear up for production or start putting together a campaign to sell the invention. They need a more immediate answer.

Another way to proceed, and clearly the most advisable, is for the patent attorney to initiate a search for the invention immediately at the U.S. Patent and Trademark Office. This type of search normally takes only 8-10 weeks and gives a good indication whether the particular invention can be protected by a patent and whether it infringes any existing U.S. patents. Ideally, this step should be taken before any money is invested in either building a prototype or finalizing any molds.

If the search shows that the invention may be patentable, clients usually prefer to file a provisional patent application. Since the provisional application is kept confidential by the Patent Office, competitors cannot ascertain that it is only a provisional application, not a regular one. After the application is filed, the "patent pending" designation comes into play, and the time is right to promote the product.

The client can then wait for some initial feedback from the marketplace before deciding whether it's worthwhile to file a regular application. Any regular application usually has to be filed within 12 months after the provisional was submitted.