Category: Instructionals

We had some questions about provisional and full patent applications. Here’s some notes we got from a while back talking to a patent attorney.

In general, US Patents cost ~$10-25,000.

In the US, the right to hold a patent is based on a “first to invent” policy. Example: Bob invents something. At a later time, Jim invents something identical and files for a patent. Bob later files for a patent. Jim’s patent will be rejected and Bob will get the patent because he invented it first (assuming he has proof). Proof of invention is typically a notebook or extremely detailed record of the invention. It does not necessarily need to be “the idea sent to yourself by certified mail.” Sending the idea to yourself by certified mail is not necessary for certifying invention date, but can sometimes be useful to prove that you have “prior art” to invalidate someone else’s patent.

The reason to do a simultaneous international filing is that the US is the only country that is first-to-invent. All other countries are first-to-file. Meaning that if you file in US only, and someone in another country sees your patent (the submissions become public in 6 months, well before the patents are granted or the provisional 1-year deadline gets close), then you can actually lose rights to the patent in other countries and their patent will supersede yours in those countries. You really want to do the filing here.

Normal trade-secret laws can be used to protect your idea without having to do anything else as long as you don’t disclose the idea to someone not under NDA. This means that writing a detailed account of your invention and keeping it locked up is enough to protect yourself. Get a good notebook, keep very detailed notes, date and sign every page, and keep the notebook somewhere safe. If someone breaks in and steals your idea, this situation falls under normal trade-secret laws, and you are protected. The only way to protect an idea after non-NDA disclosure is to submit a patent application within one year.

In the US, there is a 1 yr “on-sale or bar date” limit. An individual has exactly 1 year from the date of public disclosure of his invention to file a patent. This is a very strict limit. If a patent application has not been filed by this date, the individual is barred forever from filing a patent for this invention. This limit has been put in place to encourage people to disclose their inventions and put them to use asap.

The best/most secure option is to get a patent application on file asap. It can cost anywhere from $5-10,000 to get the process started. You can generally file a provisional patent application which is initially cheaper than filing for a full patent outright. This can help to give you more time (one year to get a utility file submitted), and allows you to use the “patent pending” moniker on your marketing materials. The provisional patent is typically a detailed explanation of the idea, as well as a cover letter. As long as the invention is disclosed, the person that files the patent application is fully protected. Also, it is best to have an attorney assist with the provisional application because if an attorney does not assist, the individual may mistakenly not disclose the idea properly or fully and therefore may not be protected. Filing a provisional application and then eventually a patent will cost more than filing outright for the patent, but it can help to defer costs by up to one year.

For help filing a patent or a provisional application, patent agents are needed. Not all patent agents are attorneys, and indeed, some very good patent agents can often be cheaper than attorneys who also file patents (and who may not be very good). There are many patent agents in Philadelphia, and you can find one by looking on the PTO website.
Elsewhere in the world, the right to a patent is usually based on a “first to file” policy. However, because of treaties with the US, if you file a patent in the US, you have a 1 year grace period before you have to file any international patents. If you file international patents, you get a priority date identical to the date for the US patent. Example: Bob has an idea, and publicly discloses it to an audience in the US. Jim is from a treaty nation, sees Bob’s idea, and rushes back to his country of origin to file a patent. As long as Bob files a patent within one year of disclosure in the US, and also files an international patent in the same country as Jim within one year, Bob will be covered in that country and Jim’s patent application will be rejected.

To ease the difficulty with filing international patents, you can file a single Patent Cooperation Treaty (PCT) application to start the patent process simultaneously in many different countries.The PCT application is not a full patent application, but eases the burden on the individual filing the patent, and can defer (for several years) the significant costs associated with filing patents in other countries. Each patent must be translated into the native language of each country to which it is submitted, and this can obviously take large amounts of time and money.

The monopoly for a granted US patent is enforceable for 20 years (from the date of public disclosure of the invention).
Independent creation is a defense for copyrighted material, not for patents. Example:
Copyright: Bob writes a book; Jim writes the *exact* same book without knowledge of Bob’s book. Both Bob and Jim are allowed to sell their books.
Patent: Bob has an invention and submits a patent application. Jim invents the identical invention without knowledge of Bob’s invention. Bob can sue Jim for damages because Bob has proof that he was “first to invent.”

Summary:
1) Keep a notebook. Write down your invention with as much detail as possible, sign and date each page, and describe the invention as well as you can.

2) Decide if you have the resources to submit a patent application, or at least for getting a provisional patent application.

3) Be mindful and keep aware: don’t miss that 1 year deadline! This rule is non-negotiable with the US patent office.