Donald J. Ersler, S.C.

                                                             FREQUENTLY ASKED PATENT AND INTELLECTUAL PROPERTY QUESTIONS

Listed below is a compilation of commonly asked patent questions.  If you do not see an answer to your question, feel free to contact me with your question.

What are the steps in obtaining a patent application?

 

The first step is to do a patent search.  The inventor can do their own preliminary patent search by going to a patent search engine, such as Google patents, the Patent Office website and Free Patents Online.  I also offer patent searches with a verbal opinion of patentability.

 

The second step is preparation of a patent application.  If no relevant patents have been found during the patent search, a patent application is prepared by the patent attorney.  The inventor provides the patent attorney with a description of the invention, such as drawings, photographs, and writing.  The patent attorney writes a patent application and has drawings prepared that describe the invention.  The inventor reviews the patent application.  The patent application is then electronically filed with the patent office. 

 

The third step is examination of the patent application.  A patent examiner does their own search for relevant prior art, such as issued US and foreign patents and published pending patent applications.  The patent examiner compares the claims of the patent application to the relevant prior art and issues an office action, which rejects, objects or allows each claim.  The claims define the meets and bounds of the invention.  The patent attorney amends the claims to avoid the prior art and provides arguments in support of the amended claims.  There is at least one office action issued, but there could be more if there is multiple close prior art references.  

 

The fourth step is issuance.  The patent examiner issues a notice of allowance when all claims are allowed.  The patent attorney files the issuance paperwork and pays the issue fee.  The patent issues in 1 – 2 months, after the issuance paperwork is filed.

WHAT ARE THE THREE TYPES OF PATENTS?

 

A utility patent protects the structure or functionality of an invention.  The two types of utility patent applications are provisional and non-provisional.  The provisional patent application protects an invention for a period of one year.  Before the one-year period ends, a non-provisional application must be filed to protect the priority date of the provisional application.  The structure of the invention is protected with apparatus claims.  The functionality of an invention is protected with method claims.

 

A design patent application protects the appearance of an invention, such as the outer shape of the invention.  The shape of a bottle or container may be protected with a design patent.  If the utilitarian features of an invention cannot be protected with a utility patent, the appearance or ascetic features of the invention may be protected with the design patent. 

 

Plant patents protect the unique features of a living organism.

  

HOW LONG DOES EACH STEP IN THE PATENT PROCESS TAKE?

 

It takes about 1 – 3 days for the patent attorney to do a patent search, once supplied with a disclosure of the invention. 

 

It takes about 1 – 2 weeks to prepare a patent application and file the patent application.

 

It takes 6 months to 2 ½ years for the patent application to be examined by the Patent Office.  An additional Patent Office fee may be paid to obtain examination in 6 months.  The patent attorney may file a petition to make special for age for whose inventors who are 65 years of age or older.  There is no additional Patent Office fee for filing a petition to make special for age.

 

It takes 1 – 2 months for the patent application to issue, once the issuance paperwork is filed and the issue fee paid.

WHAT ARE EXAMPLES OF DIFFERENT TYPES OF INTELLECTUAL PROPERTY?

Patents are used to protect an invention.  Utility patents are used to protect the functionality of an invention.  Design patents are used to protect the appearance of an invention.

Trademarks are used to protect a name of a product or a service.

Copyrights are used to protect creative expressions, such as literary work, art, music, architecture, software programs and sculptural works.

CAN A UTILITY PATENT APPLICATION BE KEPT CONFIDENTIAL UNTIL ISSUANCE?

Yes, a utility patent application can be kept confidential until issuance by filing a nonpublication request. Design patent applications are automatically kept confidential, until issuance.  I normally file requests for nonpublication to protect the client's invention from public disclosure and to ensure that a published utility patent application does not act as prior art against a subsequent filed continuation application. If there is a need for publication, a request for recession of publication can be filed at any time, such as for foreign filing of the patent application.

WHAT TYPES OF INVENTIONS ARE PROTECTABLE WITH A PATENT?

 

Most mechanical and electrical inventions may be protected, such as improvements for the home, design, engineering, manufacturing and business.  Mechanical and electrical inventions which employ software can also be protected.  Software inventions generally require the use of unique hardware.  A complicated invention may also need to be protected with multiple patent applications.

  

CAN AN INVENTOR WRITE AND PROCESS THEIR OWN PATENT?

 

There are many inventors who write their own patents.   In my experience, some inventors are successful at writing the specification of the patent application.  However, the claims portion is the biggest obstacle to writing a good patent application.  It takes a lot of practice to write claims, which are not too broad, but not too narrow.  A patent attorney who has written hundreds of patent applications has this experience.  The patent attorney must also be willing to fight with examiner for meaningful claim coverage.  The inventor is not up just against the examiner, but also the examiner’s supervisor.  You may have a reasonable examiner, but the examiner’s supervisor is frequently the person who decides on whether claims are allowable.  It is much more effective to file an appeal, when there is no cooperation with the examiner, than to file responses to multiple office actions.