FAQ

Our team of patent professionals answers your most frequent questions below to give you a comprehensive overview of the US patent system. If you have any further questions on how patents,copyright or trademarks work, or your next steps in filing, please submit your inquiry to [email protected] or give us a call at 858.263.7554.

What is a US provisional patent application? 

A US provisional patent is an informal patent application that serves as a priority application for a US regular (non-provisional) application. It is less expensive and quicker to file than a non-provisional US application. A US provisional is beneficial where protection for an idea is sought quickly, or where the core idea is formed but more time is needed to develop the details of the invention. 

Applications based on the priority date of the US provisional should be filed in all countries where protection is sought. To serve as a priority document, a US provisional application must have sufficient disclosure. US provisional applications are never published.

What are the next steps now that the provisional patent application has been filed? 

A provisional application is the first step while working on your invention, the filing date acts as a place holder in time, such that you then have 12 months from that filing date to convert the application into a non provisional application. You do now have a patent pending, however the application will not enter into official examination until the non provisional application is filed.  

Exactly how are you protected with a provisional if a similar product is released without a patent?

Essentially you are protected for the processes and features that you disclosed in the provisional application that are new and non obvious compared to other inventions that exist. If the invention does not already exist, and no one else filed before you, then you would retain the protection for those aspects of the invention that are new and not obvious. If you develop new features and processes that are not disclosed in the provisional application, these should either be added to another provisional application and filed, or incorporated into the non provisional application depending on your goals.

What is a US regular (non-provisional) patent application?

A regular (non-provisional) US patent application is a full application that complies with filing formalities. This application will need further detailed claims and drawings than a provisional in order to support the application and provide full coverage. Once it passes examination at the USPTO, it is issued as a US patent once the USPTO official fee is paid. A granted US non-provisional patent is valid for 20 years from the date of filing and will entail maintenance fees.

 

What is a PCT application, or international patent?

No true international patent exists, but the PCT (Patent Cooperation Treaty) application extends the one-year deadline for filing further applications to 30-months from the earliest priority date. The PCT is beneficial where an invention may be filed worldwide but the inventor is awaiting investment.

What is a priority deadline?

From a first application for an invention, such as a US provisional, the applicant has one year in which to file other applications, such as a US regular application or international applications. These subsequent applications will receive the earlier filing date of the first application. This means you can predate your competitors in the “race to the patent office”, and avoid prior art with the regular application that you otherwise would have to overcome in examination. This priority deadline is extended to 30 months if a PCT application is filed within one year of the first application.

What is sufficient disclosure?

A priority document, such as a US provisional patent application, may serve as a priority document to an application filed within the priority deadline, if it provides sufficient disclosure of the invention. This means that from the single document, an engineer skilled in that field would be able to reproduce the invention. The engineer cannot provide any inventive input of his own; all the invention must be disclosed by the document to adhere to sufficient disclosure.

What is a “first-to-file”?

The USPTO has recently switched to a system protecting the first inventor to file an application, rather than the first to conceive of the invention. This means if two inventors conceive of an invention at the same time, the first one to file a patent application will receive the right to the invention.

What are the differences between Design Patents and Utility Patents?

Design patents protect the aesthetic features, or appearance, of an article or device. Design patents won’t protect how a device works – that is for the utility patent to protect. Utility patents protect the parts of a device and how they work together, as well as the methods of functionality or use.

What markets should I consider for international filing?

We would recommend a strategy of protecting i) in the markets where the invention will be sold and ii) where the invention will be manufactured, in that order, as the major product destinations also often have the most comprehensive intellectual property protection.

The major markets are usually the US and Europe. Smaller markets that use English are Canada, Australia and New Zealand. Patent applications in these places can be filed in English to avoid translation costs.

The major manufacturing countries are China, Korea and Japan. These are all wealthy markets where your invention may be sold, but filing requires the added cost and complexity of translation.

Other countries typically of interest for further filings as attractive markets to sell or manufacture are Israel, the UAE, Brazil, Mexico and South Africa.

What further expenses are involved once the application is filed?

There are no further expenses for a US provisional. For continued protection, you will need to file a US regular (non-provisional) application within one year from filing the US provisional.

For a regular (non-provisional) patent in the US, there are maintenance fees due every 4, 8 and 12 years after filing.

The Examiner may object to the application with an Office Action. Office Actions can be responded to by our Agents after a discussion with you. 

International patent applications have various fees, depending on where the filing is located. Often annual maintenance fees or annuities are payable to keep a patent in force, and an issue fee is required once the patent passes examination. We will provide you estimates for upcoming fees in advance, and remind you of deadlines to take action.

What is a Micro-Entity? Small entity? Large Entity?

Large entities pay full USPTO fees. Small entities pay fees at half the rate, and micro-entity pay one-quarter of the full fee rate.

A micro-entity is an entity (individual or company) that has not filed more than four patent applications. The "Maximum Qualifying Gross Income" for purposes of paying any eligible fee at the micro entity discount rate is currently $160,971.

A small entity is an entity that has less than 500 employees.

A large entity is an entity that is not a small or micro-entity.

Will a US application protect me abroad? 

Patent protection is national, and the protection for a patent in one country will not extend to another country. That means your invention may be practiced, legally, in any country in which a patent application is not filed.

How long does patent protection last?

US Utility Patent Applications last 20 years from the filing date, and the term may be adjusted by the USPTO depending on whether the USPTO delays in examining. While some damages may be given for infringement before a patent issues, the chief remedies are only available after issue of the patent application.

US Design Patents last 14 years from registration.

International patents generally provide protection for 20 years from the filing date, but full remedies are usually available only once the application issues. Please contact us for discussion on a case-by-case basis.

When is a patent application published?

A US Provisional application is never published.

A US Utility Patent application is published 18 months after the earliest priority date. Similarly, international applications will typically publish 18 months after the earliest priority dates.

Who is listed as the Inventor?

Anyone who had any inventive input to the invention should be listed, even if only relevant to one claim. Only the inventors should be listed, not employers or funders of the invention.

How can ownership of a patent be transferred?

A patent can be transferred by filing an assignment, signed by the applicant(s) with the USPTO. Please contact us to assign a patent, and we will provide you with valid assignment forms that can be registered with the USPTO. The cost for registering an assignment on a US patent application is $100 plus the official fee for registration. Please contact us for a quote for assigning an international patent filing.

 

Want to file a patent now that you know more?

Give us a call at 858.263.7554 and one of our team members will be happy to get you started.