FAQ

When do I get Patent Pending?
What’s the Difference Between a Provisional and a Nonprovisional Application?
What is a Microentity?
What is a Small Entity?
Does a Provisional Application Imply Patentability?
What is a “Nonprovisional Application”?
Can a Design Patent Claim the Benefit of a Provisional Application Filing Date?
How Long Until I Have a Patent?
What Fees Will I have to Pay?
What constitutes public use?
Should I do a Patent Search?
What is “Prior Art”?
What is an “Office Action”?
Should I file a Provisional Application First?
What are “claims”?
Are Office Actions bad?
What is are “102” and “103” Rejections?
What is a Statutory Bar?
What Happens if I lose My Case?
What is a Continuation-in-Part Application?
Still Confused?

When do I get Patent Pending?

As soon as you establish a filing date you secure patent pending and may disclose your idea with confidence. But remember, a patent is not enforceable until it issues and even with patent pending patentability is not guaranteed.

What’s the Difference Between a Provisional Application and a Nonprovisional Application?

A provisional application for patent is a filing by inventors used to secure a filing date. A later filed nonprovisional application will subsequently claim the benefit of the provisional application’s filing date. See the time line in the patent overview, here. A provisional application for patent is, therefore, a temporary filing that will expire 12 months after filing unless a nonprovisional application is filed to claim the benefit of the provisional application filing date.

What is a “Microentity”?

Under the America Invents Act, the USPTO now offers reduced filing fees for microentites. You qualify as a microentity if you reported a gross income of less than $150,162 last year and have less than four patents already in your name. See the current USPTO filing fees here.

The USPTO periodically revises its fees in October. See a current fee schedule as published by the USPTO here.

What is a “Small entity”?

A small entity is a corporation having less than 50 employees, an educational or government institution, or a nonprofit organization.

Does a Provisional Application Imply Patentability?

A provisional Application is not reviewed by the USPTO. It is simply held there until a nonprovisional application is filed claiming the benefit of the provisional application’s filing date. It does not imply patentability, and is not a patent in and of itself.

What is a “Nonprovisional Application”?

Any application for patent that is not a provisional application. A nonprovisional application, then, includes applications for utility, design, and plant patents.

Can a Design Patent Claim the Benefit of a Provisional Application Filing Date?

No.

How Long Until I Have a Patent?

It can take several years for a patent application to work its way through the USPTO. A good estimate is approximately 18 months before you will hear a response from an Examiner at the USPTO – but it can be longer or shorter depending on the Examining Unit.

What Fees Will I have to Pay?

You will have to pay fees for the drafting of the application, any figures required, and all fees required by the USPTO. See a fee schedule here.

What constitutes public use?

Any disclosure of your invention publicly constitutes public use. An offer to sell your invention to another individual constitutes public use. Public use of your invention more than one year prior to filing an application for patent effects a statutory bar against patentability – in other words, if you publicly disclose your invention (including an offer for sale) more than one year prior to filing an application for patent, you will effectively cede rights to your invention. It is important to bear this in mind following filing a provisional application for patent. Failure to file a nonprovisional application claiming the benefit of the provisional with the required twelve months may result in a statutory bar against you obtaining a patent for your idea, if you have publicly disclosed your invention – including solicited selling your invention.

Should I do a Patent Search?

A patent search is a good idea. The labor and time involved in performing a search can be quite intensive. We do not perform searches for provisional applications. We typically charge separate fees for searches and opinions. Contact us for more information if you have questions regarding patent searches and opinions. Remember, too, that no search we do can access all possible prior art, and therefore no opinion we offer is a guarantee of patentability.

What is “Prior Art”?

Prior Art is all available knowledge regarding an idea that already exists in the public domain. Prior Art includes patents, patent publications, but also articles, and other printed and available information or data.

What is an “Office Action”?

The USPTO issues Office Actions during prosecution of the patent application. Office Actions result for numerous reasons, but most commonly because an Examiner is rejecting the claims in your patent application over prior art. Our office responds to the Office Action arguing patentability, or, when possible, forwarding an amendment to overcome the rejection.

Should I file a Provisional Application First?

A provisional is usually filed when inventors are rushing to secure a filing date in a competitive field. Once filed, the inventors then pursue research and development to further specify their invention. They will have to file a utility application claiming the benefit of the provisional filing date before 12 months elapses from that filing date. Some inventors elect to pursue filing a provisional application first for budgetary reasons, since a provisional application is typically less expensive than a utility application filing. However, a provisional application is an additional cost; for a provisional application to be effective, the utility application must be filed within 12 months.

What are “claims”?

An inventor sets forth claims in a patent that define the scope of the intellectual property he claims to have invented. Claims are either independent or dependent. An independent claim stands by itself while a dependent claim is a separate claim that adds a further limitation to a preceding claim in a dependency chain. Patent Practitioners use claims to define as broadly as possible the metes and bounds of the invention. Broad claims are more commercially viable (since they encompass more possibilities). But they are also harder to patent over existing prior art. A claim set, therefore, typically starts broad and adds limitations through a dependency chain to successively narrow the claims ending in a very narrow “picture claim” that claims all the limitations in one fell swoop. We try to win somewhere in the dependency chain.

Are Office Actions bad?

Having claims rejected by the USPTO is not a bad thing. We try to get the broadest coverage possible, and during prosecution claims that are found to be too broad will be rejected. Thus a rejection often means claims may have to be combined or otherwise narrowed with inclusion of some patentable feature.

What is are “102” and “103” Rejections?

The USPTO rejects patent applications in various ways. 35 USC 103 prohibits patenting an invention which is an “obvious” variation of any combination of existing prior art. An Examiner may use as many references at his or her disposal to prove “obviousness” and reject under 35 USC 103. 35 USC 102 prohibits patenting inventions which are “anticipated” by a single prior art reference. To be anticipated, and thus rejected under 35 USC 102, every single limitation set forth in a claim must be found in the prior art reference.

What is a Statutory Bar?

A statutory bar prohibits patenting an invention if it was previously disclosed more than a year prior to filing and is thus in the public domain. Sale of your invention more than a year before filing a patent application – including an actual offer for sale – results in a statutory bar. It is thus prudent to seek patent pending before seeking to sell your idea to another person.

What Happens if I lose My Case?

If we fail to win the prosecution of your patent application there are a number of strategies that can be followed. Depending on the case, further action can be taken by reopening prosecution on your application. Even if you decide not to continue prosecution of your application through a Request for Continued Examination, a Continuation-in-Part Application, or other continuing application, there are still things you can do. Prosecution of a patent application enables you to determine what else is out there, and whether or not you will be infringing an active patent owned by a competitor if you decide to practice your invention and market it. Information that falls out during prosecution is still useful, even if you lose your case.

What is a Continuation-in-Part Application?

A CIP application is a continuing application that claims the benefit of a previous filing but that introduces some new matter – something not previously disclosed in the original filing. A CIP can issue as a patent with the benefit of the original application, and with a separate filing date for the new matter.

Still Confused?

Call our Office at  (970) 327-4199, we will be glad to answer your questions.