Frequently Asked Questions

Common Patent Questions and Answers

What can be patented?

A patent application describes an invention. The invention has to be either a method, machine, article of manufacture, composition, or new use of one of these.

What are the requirements to get a patent?

There are three requirements to get a utility (full-blown) patent. The invention has to be useful, novel, and non-obvious.

How long does a utility patent last for?

Usually, a utility patent lasts for 20 years from the date of filing. If you filed a provisional patent application, if you then file a utility patent application, the utility patent will last for 21 years.

What are claims of a patent application?

Claims are the written words of the invention. The claims describe and embody the invention. They usually are at the end of a patent application, before the abstract.

What is a provisional patent application?

A provisional patent application is a "placeholder." It does not get examined by the United States Patent and Trademark Office (USPTO). You have to convert a provisional patent application to a utility patent application within one year of your filing date. You do not have to convert the provisional patent application to a utility patent application, but if you do, you have to convert within the year. You can also write on your invention or product "Patent Pending" after filing a provisional patent application, utility (full-blown) patent application, or design patent application.

What is a design patent application?

A design patent is for a new, original, and ornamental design for an article. An article includes manufactured items such as tools, jewelry, computer monitors, printers, and even icons or software screens (e.g., a web page displayed on a computer monitor). A design patent protects the ornamental (and non-functional) design of the article and not the article's utility. If the design is functional, then only a utility patent application is needed. Patents issued from design applications filed on or after May 13, 2015 shall be granted for the term of fifteen years from the date of grant. U.S. design patents resulting from applications filed on or after May 13, 2015 have a 15 year term from the date of grant. However, patents issued from design applications filed before May 13, 2015 have a 14 year term from the date of grant.

What is an Office Action?

An Examiner at the Patent Office examines your patent application. Most of the time, they will find some other references that are similar to your patent filing. They will send an Office Action, or arguments, that rejects your patent application. The patent attorney has to draft a written response to the Examiner's arguments and file the response. This is an argument to get your patent application allowed.

Are there things you should not do before filing a patent application?

Yes. There are a few actions that, if you perform, can negatively impact your patent rights. The first action is selling your product or offering your product for sale. If you either sell the product that you would like to get a patent on or offer the product for sale to a potential customer, you start a clock running in the U.S. from the date of the sale or offer for sale. With an offer for sale, you don't even have to have a physical product - if you offer your product for sale by showing detailed drawings of how your product would be built or would work is enough to start the patent clock. You then have one year from that date to file a patent application with the USPTO. If you do not file a patent application on or before that one year deadline, you lose all rights in your invention in the U.S. This is known as the "on-sale bar".

The second action that can negatively affect patent rights is if you make your idea publicly available. For example, presenting your idea at a conference or in a poster, publishing your idea in a paper, or publishing your idea on a web site can affect your patent rights. Even telling someone your idea can make your idea publicly available. Like selling your product or offering your product for sale, publishing your idea starts a one year clock in the U.S. You then have to file a patent application within that year. If you don't, you lose all rights in your idea.

The third action that can negatively affect patent rights is if you use your product publicly (public use). For example, if you install your new gravel onto a road to make the road more resilient, this would start the clock running and you would have one year from this public use to file a patent application. There is, however, an exception to this rule. If your use is an experimental use, then the clock does not start. So, using the same example, if you are testing your gravel and are making changes to your gravel as cars go over the gravel over a period of time (and keeping records of these changes), then the clock would not start running because you are experimenting with your gravel and your invention has not been finalized. Once you stop experimenting, the clock would start.

Currently, the fourth action that can negatively affect your patent rights is if you "abandon" your invention. For example, if you start working on your invention and then stop pursuing it for a prolonged period of time (and have no valid reason (e.g., lack of funds) for stopping work on your invention), and later want to get a patent on your invention, and your work stoppage becomes known, you would lose your right to get a patent. You have to work diligently on your invention before filing your patent application. Once you file your patent application, you can discuss your product and/or sell your product freely.

Common Trademark Questions and Answers

What is a trademark and what does a trademark protect?

A trademark, also referred to as a "mark" is always attached to commercial activity in some respect.

Rights to a trademark are given solely through priority of use or an intent-to-use trademark application. Trademark ownership is determined by the person or entity that uses the mark in a commercial setting first (in most instances). Trademarks protect one or more words, graphics, logos, slogans, sounds, colors, and/or scents that identify a source or origin of a product, good, or service.

To qualify as a trademark, the above used by a business in its marketing must be:

1) Distinctive enough to gain customer recognition on its own ("inherent distinctiveness"); or
2) Have earned customer recognition through continued use over time (only for descriptive marks) - "acquired distinctiveness" or "secondary meaning".

What register(s) are trademarks placed on?

There are 2 registers on which a trademark can be on:
The Principal Register and the Supplemental Register

Both lists have the following information:
1) The trademarks;
2) The owner(s) of the marks;
3) The dates the marks were registered;
4) The types of goods / services identified by the marks; and
5) Other information, such as how the marks were described by the owners in the application.

Placement on the Principal Register gives a trademark far more protection.

Some of the ways to register on the Principal Register are:
1) The mark must be used in commerce (actual use). If the application has been filed as an intent-to-use application, the mark will not be registered until it is in actual use.
2) The mark must be distinctive through use over time to serve as a product or service identifier;
3) The mark may not be confusingly similar in a place where confusion would be likely; and
4) The mark may not include the title of a book, play, recording, or movie that is single issue artistic work unless that title has become well known over time. There are many other ways to register for the Principal Register.

The benefits to registration on the Principal Register are:
1) Exclusive nationwide ownership of the mark in connection with certain goods or services;
2) Federal registration gives the registrant the opportunity to use the federal courts to enforce their rights.
3) Official notice that the mark is unavailable to all later users;
4) The right to put ® after the mark, which puts users on notice that the mark is registered;
5) The right to remove certain challenges if the mark is in continuous use and substantially exclusive for five years after the registration date; and
6) A legal presumption that the registrant is the owner of the mark.

The Supplemental Register will be discussed in the next question / answer.

What is the The Supplemental Register?

The Supplemental Register is for marks that are not distinctive enough for the Principal Register. There are benefits to being on the Supplemental Register.

1) If a mark continues in use and is on the Supplemental Register for five years, it is evidence of acquired distinctiveness, which can help get on the Principal Register.
2) The owner of a mark listed on the Supplemental Register can use the ® symbol, which signifies that the mark is a registered trademark and may deter others from attempting to use such mark. If a mark is a non-distinctive mark (the Supplemental Register), it cannot be placed on the Principal Register, without proof of secondary meaning.

The main implication of a non-distinctive mark on the Supplemental Register is that the mark is not protected under the Lanham Act, the federal trademark statute. It may, however, still be protectable.

What are the sources of trademark law?

Three bodies of law that govern trademarks are:

1) The federal Lanham Act;
2) State statutes; and
3) The common law.

Please describe Federal Registration of a trademark.

A national system of trademark rights has many benefits over state trademark law rights. These include:

1) Federal registration on the Principal Register gives constructive notice to all users who file later. This constructive notice removes the geographical limits of common law trademarks. Use or filing an intent-to-use application grants the registrant nationwide trademark rights and enforcement privileges.
2) Federal registration gives the registrant the opportunity to use the federal courts to enforce their rights.
3) Federal registration gives the registrant certain statutory rights. The Lanham Act provides the basis for the national registration system and protecting these rights. The Lanham Act allows service marks and prohibits deceptive marketing of goods and services. There is also an intent-to-use provision of the Lanham Act, which allows applicants to register marks that have not been used yet and preserves a person or entity's rights to a mark, as long as the mark is put to actual use within the statutorily prescribed periods. You can also trademark your website domain name.

The above information does not constitute legal advice and should not be relied upon to solve individual IP problems.