What are the basic requirements for patentability?
A: For an invention to be patentable, it must be:
new, 2. useful, 3. non-obvious and 4. patentable subject matter.
For an invention to be new, it must not have been known or used by others
in the United States or in any foreign country before the invention was
conceived by the applicant.
if the invention is in use, on sale, or offered for sale in the United
States for over one year prior to the date of filing of a patent
application, a patent will be denied.
For an invention to be useful, it can not be frivolous, contrary to
public morals or a contradiction of the basic laws of nature. A well known
example is the perpetual motion machine.
For an invention to be non-obvious, it must not be obvious to the
"skilled practitioner skilled in the art." In other words, even
if the invention is new, if a hypothetical person who has access to all of
the information concerning that particular field of technology would have
considered it to be obvious, the invention will be rejected as being
Patentable subject matter includes processes, machines,
manufactured articles, compositions and improvements to patentable subject
matter. Typical subject matter that is not patentable includes
mathematical equations and laws of nature.
Provisional v. Design Patents:
Are there different kinds of patents in the United States?
A: Yes. The information described above applies to utility or
provisional patents which protect the function of an invention. Another
type of patent is a design patent which protects the ornamental
features of an invention. In other words, a design patent protects the way
an article looks, while a utility patent protects the way an article
How is a provisional patent application different from a non-provisional
A: A provisional patent application establishes a filing date under
section 35 USC Section 102(e) of the Patent Statue but is not examined and
does not result in an issued patent. Fundamental content requirements must
be met but the format of the provisional application is more relaxed than
for a non-provision patent application. Claims, a formal oath or
declaration and an information disclosure statement are not required with
a provisional patent application. The provisional application allows for a
one year delay in the filing of a corresponding non-provisional
application. The filing fee to the U.S. Patent and Trademark Office for a
provisional patent application is currently $75.00 for a small business
the Patent Office Records:
Practically speaking, how is an invention evaluated to determine whether
it is patentable?
A: The records of the United States Patent Office are searched to locate
all patents that concern related technology. The patents which are located
are then compared with the disclosure of the invention to determine
whether the invention is new and non-obvious. It is also important for the
inventor to provide all literature, brochures, drawings, photographs or
other related printed matter to the patent attorney if a patent attorney
is employed to assist with the patentability search and patent application
Is it possible to estimate a probability of successfully obtaining a
patent after conducting a patentability search?
A: Yes. Although it is not possible to guarantee results, generally there
is an 85% or better probability that a patent will issue to the extent
described in the patentability report.
How many of the patent applications filed result in an issued patent?
A: On average, more than one out of every two patent applications filed
results in an issued patent.
What is the life of a patent?
A: The life of a utility patent is 20 years from the date of filing the
patent application. The life of a design patent is 14 years from the date
What is included in a patent application?
A: A patent application includes: a description of the invention including
how use the invention, the best mode known to the inventor for making the
invention, one or more claims and usually drawings of the invention. The
patent application must also include an oath or declaration signed by the
inventor and a filing fee payable to the US Patent and Trademark Office.
Do any other documents need to be filed with the US Patent and Trademark
Office for the patent application?
A: Yes. An Information Disclosure Statement (IDS) must be filed within
three (3) months after the application has been filed. The IDS includes a
listing of all of the prior patents and any other printed literature or
any other information relative to the subject matter of the invention.
How important are the claims in the patent?
A: The claims are considered to be the most important component of a
patent because they define the specific area protected by the patent
grant. Claims in a patent are very much like the boundary lines on a
parcel of real estate. They define the "metes and bounds" of the
invention. The specification and drawings are used to interpret and
understand the claims.
What happens after a patent application is filed?
A: After a patent application is filed, it is assigned to a Group Art Unit
and then to a patent examiner within that Group Art Unit. The Group Art
Unit is determined according to the specific area of technology of the
subject matter of the invention. The examiner evaluates the patent
application in comparison to the prior art to determine whether the claims
are patentable. It is quite common for the examiner to reject the claims
as being obvious over the prior art. It is also common for the claims to
be objected to as to form.
How do you overcome rejections or objections presented by the examiner?
A: Objections as to form are generally easily overcome. Rejections based
on obviousness require careful analysis and the preparation and filing of
a response which shows specific reasons why the claimed invention is not
obvious over the prior art.
What kinds of reasons can be used to overcome a rejection based upon
A: There are many different ways to persuade a patent examiner that an
invention is non-obvious. For example, if a problem has existed for a long
time and is solved by the invention, this is an indicator of
non-obviousness. Also, substantial commercial success in the market
created as a direct result of the invention is an indication of
Can I file a patent application on my own?
A: Yes. There are many inventors who file their own patent applications
“pro-se.” However, this can be risky. The scope of the invention is
defined by the claims and if the claims are drafted too narrowly, then it
will be possible for competitors to design around the patent without
infringing the claims. In such a case, the value of any issued patent will
Costs of Obtaining a U.S. Patent:
What does it cost to patent an invention?
A: There are several costs involved:
a search needs to be conducted. The fee for conducting a search and
providing a written patentability opinion for relatively straight forward
subject matter is between $1000 and $1400.
a patent application must be prepared and filed. The fee for preparing and
filing a patent application ranges from $5,385 to over $10,385. A written fee estimate is provided with a patentability report for
complex or high-tech inventions.
here for a current Schedule of Services and Expenses
a government filing fee presently is $385 for a small entity.
claims in a patent are allowed, an issue fee of $665 is presently
required; and maintenance fees are due at 3 1/2, 7 1/2 and 11 1/2 years.
Proceed to Patentability Search