Questions and clarifications on patenting

What is an invention?
At most basic, an invention is a solution to a problem. In the language of the United States Patent and Trademark Office, any person who “invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof” is entitled to apply for a patent.

What is a patent?
A patent is a legal agreement with the government. In exchange for publicly disclosing the invention or inventive method, the government grants the holder of a patent the right to exclude others from making, using, selling, importing, or offering the invention for sale in the United States. A patent may be obtained on an article of manufacture, a process, machine, or composition of matter. A person can also obtain a patent on an improvement to one of these things.

What are types of patents?
The United State Patent and Trademark Office issues three types of patents: utility, design and plant. Utility patents cover the function, structure and utility of a device. Design patents cover the ornamental features or appearance of an invention. Plant patents cover improvement to living plant species.

What types of inventions are patentable?
A patent can be obtained for a new or useful machine, process, composition, design, plant variety, software package, genetically engineered organism and method of doing business.

Who owns an invention?
If an invention is developed independently, the inventor is the rightful owner. Innovations developed under contracts generally belong to the entity for whom the contract was performed. If created during employment, the innovation could be owned by your employer.

What is a utility patent?
A utility patent provides 20 years of exclusivity to the patent holder. This type of patent covers such inventions as machines, processes, compositions, software, genetically engineered organisms and methods of doing business.

What is a design patent?
A design patent provides 14 years of exclusivity to the patent holder. This type of patent covers new, original and ornamental designs for an article of manufacture.

How to establish that you are the inventor.
A diary or scientific journal is sufficient for determining date of conception and date of reduction to practice.

How to establish a creation date.
One way to establish a creation date is to describe the invention (how it works, how it can be used, how it has improved prior art), date the page and sign it in the presence of two witnesses. Get their signatures as well.

Can I use my own attorney or agent for a patentability opinion?

Yes. You may select whomever you like for a patentability opinion. The person rendering the patentability opinion should be a patent professional registered with the United States Patent and Trademark Office. Many patent professionals will only render a legal opinion if you contract with them to have a search performed either by them or a search company hired by them. If you wish to use an attorney or agent of your choice, the Enterprise Institute recommends that you consult that attorney or agent before asking the Enterprise Institute to perform a patent search to see if they will accept the search results from the Enterprise Institute when rendering their legal opinion.

Does the Enterprise Institute provide patentability opinions?

Patentability opinions are a legal opinion regarding the potential to protect an invention through a patent. The Enterprise Institute does not give legal advice. However, upon authorization by an inventor, the Enterprise Institute does contract with an experienced intellectual property law firm selected by the Enterprise Institute to provide a legal opinion based on the results of an Enterprise Institute search.

Am I guaranteed a "good" search result by submitting a completed disclosure form and payment?

The Enterprise Institute does not give legal opinions but we will only forward search results directly to the inventor or, if authorized by the inventor, to an experienced law firm that we choose because we trust that the law firm will render an independent opinion.

Am I guaranteed that the Enterprise Institute will perform a search if I submit a completed disclosure and payment?

All disclosures to the Enterprise Institute are treated as an application for services. The Enterprise Institute reviews each disclosure and reserves the right to refuse acceptance of the disclosure and return any money sent to the Enterprise Institute. Whenever possible, the determination is made prior to processing payment to the Enterprise Institute. If payment has been made by check, whenever possible the original check is returned to the inventor. In the event a payment has been processed by the Enterprise Institute and the disclosure is subsequently rejected for a search, the full payment will be returned the inventor immediately.

Are search results guaranteed?

Search results cannot be guaranteed for several reasons. There are well over six million patents divided into over 140,000 different classes and subclass. A completely comprehensive search of any and all possible relevant classes and subclasses would generally be more expensive than the expense of actually preparing, filing, and successfully prosecuting a patent application. A patent search uses the experience and skill of a patent searcher to find what is subjectively determined to be relevant to the invention disclosed by the inventor. Experienced patent searchers may reasonably have different opinions whether a particular patent is relevant or not. Additionally, some patents are lost, temporarily unavailable, or misclassified such that they may not be searchable at the time the search is performed.

What is the purpose of a patent search?

The purpose of a patent search is to have a professional patent searcher provide prior art references relevant to a disclosed invention so that the inventor may make an informed decision whether to proceed in the patenting process.

How is a patent search performed?

There are different methods for searching patents. The most accepted form of patent searching is based on the classifications given to each issued patent. In a classification search, the disclosed invention is analyzed to assess what classes and subclasses it might be categorized under by the United States Patent Office. Once the potential classes and subclasses are identified, issued patents and published patent applications in those classes and subclasses are reviewed for relevancy to the disclosed invention.

I have heard that computer searches are not as good as a search by hand at the United States Patent and Trademark Office. Is this true?

Not anymore, but it depends on the method of searching used and the extent of the computer database. The bias against computer searching developed at a time when most computer databases were not complete, going back only to the late 1960s or mid 1970s. As recently as a few years ago, computer databases were not capable of allowing a search by computer that mimicked a hand search of selected classifications. Computer databases through the USPTO web site or through existing subscription services now provide access to the complete patent records of the USPTO.

Additionally, a method of searching called keyword searching may be employed when doing a computerized search. Key word searching utilizes key or essential words describing the disclosed invention to find potentially relevant prior art references. Key word searching alone will not provide complete results because multiple different terms may be used to describe one part of an invention and terminology for essential elements in inventions has changed over time. However, key word searching when done by a skilled patent professional can make identifying search classes easier thus saving more time for thorough review of potentially relevant search classes.

In summary, computer searching can be an excellent tool for patent searching when used by an experienced searcher. In fact, computer terminals are available in the USPTO public search room. The popularity of the computer terminals with searchers using the public search room at the PTO has prompted an official move by the PTO towards abandoning hand searching in favor of searching exclusively by computer.

Can I perform a patent search myself?

Yes, but it is not recommended unless you are familiar with the patent classification system. There are over six million patents already issued and thousands added each Tuesday. Issued patents and published patent applications are classified into over 140,000 classes and subclasses. The classification system developed over time and very different classes may be right next to each other in the classification system. Sometimes it is very difficult to understand which classes and subclasses a particular invention fits without looking up detailed descriptions of the subclasses. Generally speaking, buying a patent search by a professional searcher familiar with the classification process will be more economical, efficient, comprehensive, and thus more valuable to the inventor than taking the time necessary to learn the classification process sufficiently to conduct a thorough search. Additionally, when considering later development of your invention and recruiting of potential partners or investors, a professional search will potentially carry more weight than one performed by the inventor.

Do I need a Prototype?

You may. Some reasons you might want one are:
A. It might help develop further patentable features.
B. It may show additional benefits/advantages.
C. It may help develop the best manufacturable embodiment.
D. It is a great asset in marketing a product.

GENERAL DISCLAIMER

This web site is designed to present general information relating to intellectual property, and the services offered by the Enterprise Institute®. The information provided is not offered as and does not constitute legal advice. For legal advice you should contact an attorney. Likewise, the information presented on this web site is not intended to create nor does it constitute an attorney-client relationship. The Enterprise Institute® is NOT a legal services provider and does not seek to represent any person or legal entity. Anyone accessing this site is encouraged to seek independent counsel for advice regarding their specific individual legal issues.