Patent attorney services for inventors and businesses

What does a patent give you?

A US patent gives you the right to exclude others from making, using, selling, offering to sell or importing your invention in the United States for the patent's term. It is a right to stop others, not a permit to sell your own product. If your product uses someone else's patented technology, you can still need their permission.

In exchange, your invention becomes public. Most applications are published 18 months after the earliest filing date, and every granted patent is public. Patents are also territorial, so a US patent covers the US only.

What are the types of patents?

Utility and design patents often work together. A new product can have a utility patent on how it works and a design patent on how it looks.

What can and can't be patented?

Under 35 U.S.C. 101, a patent can cover four kinds of things. A process (a method or series of steps), a machine, an article of manufacture or a composition of matter, plus any new and useful improvement to one of them. Courts have long excluded three categories, even when they are new.

• Abstract ideas. Mathematical formulas, mental steps and ways of organizing human activity, like a business method or the rules of a game.
• Laws of nature. A natural relationship, such as how the body metabolizes a drug, cannot be claimed on its own.
• Natural phenomena. Things found in nature, such as a naturally occurring gene or mineral, cannot be patented as they exist.

An application of one of these can still be patentable when it adds something more, and that is where most software and diagnostics cases are decided. Our software patent attorney page explains the Alice test that applies to software. A bare idea cannot be patented either. You need to describe how to make and use the invention, though you do not need a prototype.

What does the USPTO require to grant a patent?

An examiner checks your claims against four requirements before a patent is granted.

Most applications receive at least one office action, a written rejection or objection from the examiner, before they are allowed. Answering it is a normal part of the process. More on patent office actions.

Provisional or utility patent, which should you file first?

A provisional is a lower-cost placeholder. A utility (non-provisional) application is the one the USPTO examines, and the only one that can become a patent.

Many clients file a provisional first, then the utility application within 12 months, claiming the provisional's date. The utility application can only rely on what the provisional actually describes, so a thin provisional protects little. More on provisional patents.

Patent attorney or patent agent, what is the difference?

Both are registered to practice before the USPTO after passing the same registration exam, and both can prepare and prosecute patent applications. A patent attorney is also a licensed lawyer. A patent agent is not, so an agent cannot give legal advice outside USPTO practice, such as on contracts, licensing or ownership, or represent you in court.

That matters for founders, because patent questions rarely stay at the USPTO. Investors ask who owns the IP, licenses need drafting and a copycat may need a letter. Your application is drafted by a registered patent attorney, and our team includes a former USPTO examiner.

Patentability search or freedom-to-operate search?

They answer different questions. A patentability search asks whether your invention is novel enough to patent. It looks at earlier patents, published applications and other publications from anywhere in the world, including ones that have expired.

A freedom-to-operate review asks whether your product would infringe someone else's patent that is still in force, in the countries where you plan to sell. It reads the claims of live patents against what you plan to make. Getting your own patent does not answer that question, because a patent gives you the right to exclude others, not a right to sell.

Most inventors start with the patentability search, because it decides whether filing makes sense. A freedom-to-operate review matters most before a large launch or manufacturing run in a crowded field, and your attorney can tell you on your strategy call whether one is worth doing.

How do you protect an invention outside the US?

There is no single worldwide patent. You file in each country or region where you want protection, and two treaties make that manageable.

• Paris Convention. You have 12 months from your first filing, including a US provisional, to file in other member countries and keep your original filing date.
• Patent Cooperation Treaty (PCT). One international application preserves your right to file in any of the 159 PCT member countries. The national filings, where most of the cost starts, usually come due at 30 months from your first filing date.

The PCT buys time to test the market and raise money before you choose countries. Each country still examines and grants its own patent under its own rules.

When should you file a patent application?

Sooner is safer. Since March 16, 2013, the US has been a first-inventor-to-file system, so when two people file for the same invention, the earlier filing date generally wins.

The US gives inventors a one-year grace period after their own public disclosure, such as a launch, a sale, a publication or a public demo. Europe, China and many other countries have no general grace period like it, so disclosing first can cost you foreign rights even when US rights survive. If anything coming up would make the invention public, file before it. A provisional is often the quickest way.