What must an invention have to be patentable?

• Novelty
• Non-obviousness
• Utility
• No statutory bar

Novelty means that the invention must be new; if the invention was done before, you cannot receive a patent on it.

Non-obviousness is a little harder to determine. The law states:

“A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” 35 USC §103.

In practical terms, if your invention simply combines two or more known technologies or processes, and a person having normal skills in the art your invention entails would have seen the benefits of combining them, you may have difficulty overcoming a non-obviousness test. However, very few inventions are made of completely new everything, and in some cases, these rejections may be overcome.

The utility requirement for a patent comes from the “new and useful” language of the law. Fortunately for inventors seeking a patent, this is a low hanging branch. In practice, if your invention can be used for anything other than to break the law, it will probably pass this test.

Finally, you cannot obtain a patent if there is a statutory bar preventing it. 35 USC §102 has several restrictions which may prevent you from obtaining a patent even though it meets the new, useful, and non-obvious requirements. One of the restrictions is that “A person shall be entitled to a patent unless - . . . the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States . . .”

If you have written about, sold, or used your invention in public (possibly even if the public didn’t know about it) more than one year before your application, you may not obtain a patent. Remember that a patent is granted in exchange for disclosing your invention to the public—if you have already disclosed it, there is no need to grant you a patent!

Depending on the technology involved in your invention, it may take about one and a half to three years until you receive a first office action. It is not unusual for it to take five years or more to receive a patent.

Of course! You have every legal right to write and file your own patent application. However, patents are generally accepted to be the most difficult form of legal writing. Between the regulations of the USPTO and the subtleties of the language that aren't generally relevant to conversational, or indeed most written English, it's difficult to write a good patent without any experience in the field. And a bad patent is a worthless patent. In many cases where people write their own patents, it turns out being more expensive for a professional to fix the mistakes than it would have been to just do it all from scratch.

Utility and plant patents expire twenty years after the filing date. Adjustments might be possible for each of these if the USPTO takes longer than they should have to respond during the prosecution, but those cases are rare. And remember, you're protected by "Patent Pending" status as soon as you file.

Design patents are a bit different: they last fifteen years from when you get the patent.

A provisional application is an inexpensive way to obtain a filing date for a patent. But it does not move you toward obtaining a patent—a provisional application is never examined at the USPTO. It is placed on file, and becomes part of the record if you file a non-provisional application within one year of the filing of the provisional application; otherwise the provisional is considered abandoned.

A non-provisional patent application will be examined by the patent office, and may lead to obtaining a patent. Filing a non-provisional will cost more initially than filing a provisional, but costs less in the long run.

There are several situations where this could happen, but the most common is if you have an employment contract granting the right to obtain patents based on your work to your employer.

Copyright protects works of art, while design patents protect an ornamental design of a useful item. A painting may be protected by copyright, but the grill of a car may be protected by a design patent, even if the grill had the same visual effect as the painting.

You can search for existing patents on the USPTO website (http://www.uspto.gov/patents/process/search/index.jsp#heading-1) or using Google's patent search (https://www.google.com/?tbm=pts). However, it is best to speak to a patent professional before doing any searches, because viewing related patents may subject you knowingly infringing damages in certain cases--sometimes ignorance is bliss!

You may apply for a patent as soon as you know your invention will work--there is no need to even have a prototype. The earlier you speak to someone about obtaining a patent, the earlier you'll know what steps to take.

In the US, you have, in certain conditions, up to one year to file for a patent after a public disclosure. However, other countries do not allow for that grace period, so it is best to avoid public disclosures prior to filing if possible.

Micro-entity status provides a discount on the USPTO fees throughout much of the patent process. To qualify, neither the applicant, any inventor, or joint inventors must not have more than 4 previously filed US patent applications (unless you were contractually obliged to assign ownership to an employer), and none of the inventors can have had three times the median household income for the previous calendar year. Essentially, if you and your co-inventors made less than around $150,000 in the previous calendar year, you are probably OK.

See the pricing chart below.