Q: What if the inventor does not own the invention?
A: In most cases, a patent application is filed by the inventor who created the invention. However, it is common for the owner of an invention to be another person or even a business entity. This may happen, for example, if the invention was created as part of an inventor’s employment or if the inventor sold or transferred the invention to someone else. If the inventor has assigned, or agreed to assign, the invention to another person or business entity, that person or entity may apply for the patent as the legal owner of the invention.
Q: How do I file a Provisional Application for Patent?
A: A Provisional Application for Patent must be filed with the USPTO. This entails completing a paper or electronic application, submitting accompanying illustrations, and complying with other USPTO guidelines. LegalZoom can help make this process quick and easy. Once you answer a few questions online, we complete and file your application (or do so along with our affiliate patent firm). We can even help you obtain top-quality technical illustrations.
Q: How long does a Provisional Application for Patent last?
A: A provisional application for patent lasts 12 months from its filing date. The USPTO will not grant extensions for any reason. The inventor(s) must file a Non-Provisional Patent Application within that period to take advantage of the Provisional Application for Patent's filing date. If not, the provisional application is declared abandoned and its filing date is lost. Another Provisional Application for Patent or even a Non-Provisional Patent Application for the same invention can still be filed, just without the benefit of the earlier filing date.
Q: What if there are multiple inventors for an item in the Patent Application?
A: Even with multiple inventors, only one application needs to be filed. The application includes a section where all inventors can include their information. Inventors can rest assured that a patent application will inform the USPTO of each inventor's rights. Each inventor listed on a Patent Application receives an equal, undivided interest in a patent, should one issue.
Q: How do I turn my Provisional Application for Patent into a Non-Provisional Application?
A: An applicant who files a Provisional Application for Patent must file a corresponding Non-Provisional Patent Application within 12 months to benefit from the provisional filing date. The corresponding Non-Provisional Patent Application must specifically refer to the Provisional Application. The USPTO will then compare the Non-Provisional Patent Application with the earlier-filed Provisional Application. If the subject matter of the descriptions is determined to be the same in both applications, the USPTO will grant the applicant the provisional application's earlier filing date for any patent that issues. Alternatively, an applicant can convert a Provisional Application for Patent to a Non-Provisional Application. This option saves the applicant little effort, however, and virtually no money. Furthermore, the Provisional Application's filing date is lost and the filing date for any patent that issues will be the date of conversion.
Q: What are the description guidelines for a Provisional Application for Patent?
A: Descriptions submitted with a provisional application for patent can be informal. This means they do not need to be in a standardized form. However, the USPTO strongly recommends submitting specific descriptions that adequately describe how to make and use your invention. This is because highly detailed descriptions make it easier for the USPTO to later associate your non-provisional patent application with your earlier-filed provisional application. If your Provisional Application for Patent fails to meet this requirement, your corresponding Non-Provisional Application may not receive the Provisional Application's priority filing date. On the other hand, with the shift from "first-to-invent" to "first-inventor-to-file," you will want to file your provisional application as soon as possible-what's most important is that you file a provisional application as soon as you have enough detail to prove that you filed first for the invention contained in your application. This way, you preserve the earliest possible filing date, at least for what is disclosed in your initial provisional application. Multiple provisional applications can be combined into a single, later-filed non-provisional application--bearing in mind that you must file the non-provisional application within 12 months of any provisional application to take advantage of that provisional filing date.
Q: What are the guidelines for a drawing to be included with a Provisional Application for Patent?
A: Drawings (illustrations) submitted with a provisional application can be informal. That is to say, they do not need to be in any standardized form. However, the USPTO strongly recommends submitting specific drawings that adequately depict your invention. This is because detailed illustrations make it easier for the USPTO to later associate a corresponding Non-Provisional Application you file with this earlier filed Provisional Application. Further, if drawings are necessary for someone skilled in the field of your invention to practice that invention, the drawings you include in your Provisional Application must be detailed enough to do so. If the drawings filed with your Provisional Application fail to meet this requirement, any corresponding Non-Provisional Application may not receive the Provisional Application's priority filing date. LegalZoom can also help you obtain professional top-quality illustrations. Please refer to the Education Center, "Drawing(s) of the Invention" under the "Filing Requirements for Provisional Applications for Patent" header.
Q: What is a Provisional Application for Patent?
A: A Provisional Application for Patent is a way to establish and protect a "date of invention" (or "priority filing date") for one year. The Provisional Application for Patent was created to provide inventors with an inexpensive way to begin protecting their inventions. The Provisional Application for Patent gives you 12 months to prepare a full patent application during which you can label your invention "patent pending." A Provisional Application for Patent lets you establish an early effective filing date for a patent without a formal patent claim, oath, declaration or an information disclosure (prior art) statement. However, a Provisional Application for Patent must include a written description and drawings (if needed) sufficient to enable one skilled in the art in its field to practice the invention. The invention claimed in a Provisional Application for Patent must also be similar enough to that in any corresponding Non-Provisional Application for Patent for the Examining Attorney to determine that the two applications refer to the same invention. If either of these requirements are not met, the Provisional Application for Patent's priority filing date will be lost.
Q: What is the advantage of filing a provisional application for patent over the Document Disclosure Program (DDP)?
A: The DDP was created in 1969 to give inventors the option of submitting evidence of an invention's conception beyond the somewhat questionable practice of the "self addressed envelope." At this time, commercial services for individual inventors were not as widespread as they are now. Records filed through the DDP can still provide a timeline evidence of conception. In the event of a dispute, an inventor may still be required to offer additional proof of exactly when the invention was reduced to practice. A non-expired provisional application filing date would be accepted by the Patent Office as a date of invention without the need for additional such evidence. In comparison to the DDP filings, a provisional application allows the inventor to:
- Claim the provisional application's priority filing date in a non-provisional patent application submitted within one year.
- Claim "patent pending" status during the provisional application's duration.
- Forego building and testing a prototype.
- Forego the need to demonstrate the invention to witnesses and have them attest to this.
- Establish a U.S. filing date for foreign applicants.
- File for patent protection in foreign countries which have an "absolute novelty" rule. This bars anyone from obtaining a patent on an invention that has been disclosed in any way before a patent application has been filed.
Q: What is the difference between a Provisional Application for Patent and a Non-Provisional Patent Application?
A: A Provisional Application for Patent is a simple and inexpensive way to begin protecting your invention while you fully flesh it out, decide whether to pursue an full patent application, and do any market testing you may need. Both a Provisional Application for Patent and a Non-Provisional Application for Patent apply to an invention that could ultimately become the subject of a utility patent. A Provisional Application secures a priority filing date if a Non-Provisional Patent Application for the same invention is filed within 12 months. Once a Provisional Application is filed, an inventor has exactly one year (if the invention hasn't previously been publicly disclosed) to file the Non-Provisional Application for the same invention. If an inventor does not file an Non-Provisional Application within that timeframe, the Provisional Application for Patent is deemed abandoned. This means the inventor loses the right to that filing date and may even lose ownership rights to the invention if it was disclosed to the public more than a year ago. Filing a Provisional Application saves inventors costs upfront and allows them time to assess their invention's commercial value. They can also conduct research and seek funding before committing to the cost and process of preparing a Non-Provisional Application. A Non-Provisional Patent Application establishes an invention's filing date (unless it claims the benefit of an earlier filed application, such as a Provisional Application). Filing a Non-Provisional Application starts the official examination process with the USPTO to determine if the invention is patentable.
Q: What is a patent's filing date?
A: Filing a Provisional Application or Non-Provisional Application for Patent creates a filing date for your invention. This filing date establishes the date of invention and protects you from other inventors who might claim to be the first ones to have come up with your invention.
Q: Why should I file a Provisional Application for Patent?
A: A provisional application for patent is a great first step towards protecting your invention. It establishes an early filing date for your invention while you put the finishing touches on it, finish your non-provisional patent application, seek funding and do market research. Having a provisional application on file means that you can disclose details about your invention with everyone on notice that your invention is "Patent Pending." (You can use the "Patent Pending" label for the entire duration of your 12 month provisional period, or for the entire examination period of your non-provisional utility application.) Also, provisional applications are not published by the USPTO so as not to compromise your invention's secrecy. Provisional applications are less expensive and easier to file than non-provisional patent applications, can be done quickly, and should be done in advance of an invention's public disclosure, although following a disclosure is fine also. Most importantly, filing a provisional application establishes an official filing date with the USPTO--and now that the PTO is moving from "First-to-Invent" to "First-Inventor-to-File," your filing date is the single most important determinant of who gets a patent. With a provisional application on file, you can feel safe promoting your invention. Finally, if you significantly improve or change your invention after filing your provisional application, or decide not to go forward with a non-provisional application, the lower cost and turnaround time of a provisional application means that you haven't gone through the more costly and difficult non-provisional process prematurely or unnecessarily. Finally, multiple provisional applications can be combined into a single, later-filed non-provisional application--if your first provisional application sufficiently details the invention that appears in your non-provisional application, you can get your earliest possible filing date for the entire invention!
Q: What do I need to include in my Provisional Application for Patent?
A: A Provisional Application for Patent is considered complete and eligible for a filing date once the USPTO receives:
- A written description of the invention
- Any necessary illustration(s) of the invention
- The names of all inventors
- The filing fee
- A cover sheet or electronic filing identifying:
- the application as a provisional application for patent
- inventor name(s)provisional application
- title of the invention
- correspondence address
- name and registration number of an attorney or agent and docket number (if applicable)
- any U.S. government agencies with a property interest in the application (if applicable)
Q: When should I file my Provisional Application for Patent?
A: A provisional Application for patent may be filed anytime after your invention is created - once you are able to fully describe how to make and use it. Some people wait to file a provisional application to delay the start of the 12-month clock. For example, you may want to file a provisional application before an event where you'd like to publicly present your invention with "patent pending" status. Important note: If you've already disclosed your invention to the public (such as by sale, offer for sale, use in public or written publication), a provisional application may still be filed to establish a filing date, but you have exactly one year FROM THAT INITIAL DISCLOSURE to file your non-provisional application--your disclosure starts the clock. In other words: a non-provisional patent application must be filed no later than one year after the public disclosure. Such disclosures include, but are not limited to: sales, offers for sale, written publication, disclosure to potential partners or finding source. Please contact the USPTO or an attorney if you're unsure whether or not you fall into this category. Particularly under the recently-enacted America Invents Act, filing a provisional application for patent as soon as possible is best. As soon as you can describe your invention in terms that will be recognizable to an examiner who later reviews your corresponding non-provisional application and has to determine whether the invention contained in both applications is the same, file your provisional application for maximum protection. If you need to file later provisional applications to make adjustments that fit within the original filing, you can always do this and then combine all your provisional applications into a final, corresponding non-provisional application. You can't broaden the original invention in subsequent provisional applications, but you can clarify, explain, hone or narrow it. This gives you a lot of flexibility as to how to proceed while ensuring that you have the best protection possible while you're putting the finishing touches on your invention.
Q: Are there guidelines for completing utility patent applications?
A: The USPTO has established certain guidelines that an inventor should follow to describe his or her invention. These guidelines explain that an inventor must include:
(1) A title of no more than 500 characters;
(2) Clear instructions on how to make and use the invention (the "enablement" requirement);
(3) A summary of the invention;
(4) Drawings if necessary and an explanation of any enclosed drawings; and
(5) Claims about the patentability of the invention.
The descriptions in the application must be detailed enough to enable a person in the same field as the invention to make or use the invention using only those descriptions. (If the invention relies on any rare mineral or similar material for its creation or use, the applicant must deposit a sample of that material as well.)
Q: Are there guidelines for drawings that are included with utility patent applications?
A: The USPTO has very specific rules governing the appearance of technical drawings accompanying patent applications. Generally, the USPTO will require drawings in black ink. Color drawings are permitted only if necessitated by the invention and are typically not permitted with electronic filings. Photographs are generally not considered an acceptable way to illustrate an invention. A photograph may only be used if drawings are insufficient, as in the case of molecular structures, for example.
Q: How long will it take to process my application?
A: The Non-Provisional Utility Patent is broken into 2 different packages. Step 1 includes a professional patent drawings and initial consultation with a patent professional. This process generally takes approximately 4 weeks to complete. The optional search and review will require an additional week to complete. Step 2 includes preparation of your utility patent application (including integration of drawings, claims and all other necessary materials) and USPTO filing. Because of the complicated nature of Non-Provisional Utility Patent Applications, our affiliated patent firm will need at least 4 weeks to prepare and file such applications. It may take two or more years for the USPTO to review your application and determine whether to issue the patent. An issued patent starts protecting your invention as of its filing date with the USPTO. If you have filed a Provisional Application for Patent relating to the same invention, and your Non-Provisional Utility Patent Application is filed within 12 months of your Provisional Application, your filing date will be the filing date of your Provisional Application.
Q: What do I need to include in my utility patent application?
A: Inventors seeking full patents must include four things in their applications:
(1) a written description;
(2) an oath or declaration;
(3) a drawing of the invention; and
(4) applicable fees.
An inventor must include with his patent application a "specification," which is a written description of his invention. This specification must contain the invention's title (not brand or product name) and background, a brief description of the enclosed drawings (if necessary) and both summary and detailed descriptions of the invention. The specification must also include a claims section, which is made up of descriptions of the invention's key elements and major limitations. In other words, this section is where you lay "claim" to each piece of your invention. The more detailed and complete that your descriptions are, the broader your patent protection will be. Oath or Declaration Each applicant must also provide a notarized oath or declaration swearing that he or she believes that they are the original creator of the invention. Drawings of the Invention If an invention requires drawings to be understood, you must provide a detailed drawing of every element listed in the claims section and file those drawings with your application.
Each application must also include all applicable fees.
Q: What if there are multiple inventors?
A: Multiple inventors who work together on an invention can file a patent application together and label themselves "joint inventors." This will not affect their ability to patent their invention. Ultimately, each inventor will have a full and independent right to stop others from making, selling or using the invention.
Q: Can provisional applications be converted into full utility patent applications?
A: Provisional applications can be "converted" into full utility patent applications, although usually an applicant will simply file a Provisional Application and follow it with a corresponding, Non-Provisional Patent Application. This is because "conversion" negatively affects the length of patent protection received.
After filing a Provisional Application, an inventor has twelve months to file a full patent application for the underlying invention. If a corresponding Non-Provisional Patent Application is filed, it will be carefully reviewed to determine whether a patent will be granted. The Examining Attorney will also check at that time to ensure that the Provisional Application disclosed the invention's "best mode," met the "enablement" requirement and established novelty -- if these two requirements are not met in the Provisional Application, the priority filing date is lost. Also, the invention contained in the Provisional Application must be the same as that claimed in the Non-Provisional Patent Application.
Q: How long does a utility patent last?
A: A utility patent lasts for 20 years from the date the patent application was filed. If the inventor first files a Provisional Application for Patent and then has a corresponding Non-Provisional Utility Patent Application granted, his or her patent protection will last for 21 years from the date the Provisional Application was filed.
Q: What is the difference between a Provisional Application for Patent and a Non-Provisional Utility Patent Application?
A: A Provisional Application for Patent is far easier and less expensive to file than a non-provisional Utility Patent Application. Although Provisional Applications receive almost no scrutiny at the time of their filing, they will be reviewed at the time a corresponding Non-Provisional Patent Application is filed, so applicants filing Provisional Applications should take care to disclose the "best mode" and meet the "enablement" requirement and establish novelty. A Provisional Application provides temporary and limited protection for the inventor of the covered item. Filing a Provisional Application establishes an early filing date for your corresponding Non-Provisional Patent Application. In contrast, a Non-Provisional Patent Application is an application for the grant of a full patent, which, if issued, will provide complete patent protection for the applicant's invention. People file Provisional Applications to secure the earliest possible start date for patent protection. An inventor who files a Provisional Application can use the term "patent pending" in connection with his or her invention if he or she intends to later file a full patent application. That inventor must file his or her corresponding Non-Provisional Patent Application within 12 months of the date the Provisional Application was filed. If the patent is granted, the patent's filing date will be the same as for the provisional application, effectively protecting the invention for a total of 21 years.
Q: What is a filing date?
A: The filing date is the date on which the USPTO receives your complete patent application. Provisional Applications for Patent were created to allow inventors to establish earlier filing dates for subsequently-filed corresponding Non-Provisional Patent Applications. If a patent is later granted, the inventor will have established this early filing date and can use it as proof of the date on which his or her patent protection began, effectively receiving a total of 21 years protection for the invention. Inventors should also make a note of the date on which their Non-Provisional Patent Application is published. Once an application is published, an applicant gains certain rights against infringers, since the publication gives notice to third parties that an application is under review. If a patent is granted, the inventor may seek royalty payments from any person who made or used the invention while the application was pending.
Q: What is a utility patent?
A: A utility patent is a protection given by the US government to a new and useful process or thing or to an improvement on an existing invention. It allows the holder to prevent anyone else from making, using, selling or importing an invention for 20 years.
Q: When should I file my utility patent application?
A: Because the marketplace for technology is constantly changing, you may not have much time to prove that your machine, process or discovery is "new." Given this fact, it's important to file your application as soon as possible after your invention is complete, since the first person to file a provisional application or a full patent application will more often than not be considered the inventor. Note, too, that for an invention to be eligible for patent protection, a patent application must be filed within one year of (a) putting the patent on the market for sale and public use; (b) disclosing your invention to the public in almost any generally-available form; or (c) filing a Provisional Application for Patent. The early filing of a patent application has other benefits as well - once the application is published, potential infringers are put on notice that an application is pending. If a patent is granted, the inventor may seek royalty payments from any person who made or used the invention during that pending period.
Q: Why must I complete a provisional application before I can file my utility application?
A: You are not legally required to file for a provisional patent before filing for a full patent. However, White + Quinn, the law firm with which we have partnered, can provide a flat rate system primarily because of the initial provisional patent filing. This system works to your benefit as well: by filing for a provisional patent, you make sure that your patent protection begins as early as possible.
Q: Why should I file a utility patent application?
A: Although inventors generally understand that they should patent their work, most do not understand why. The main reason to file for protection is that a utility patent gives an inventor a limited monopoly - it grants him or her the right to prevent anyone else from making, selling or using the invention without the inventor's consent. If someone makes, sells or uses the patented item without permission, a patent holder can bring an infringement lawsuit and often collect significant damages.
Q: What if the person who invented the design is not the owner of the design?
A: All patent applications must be filed in the name of the actual inventor(s). However, the owner of a design is often not the inventor. This occurs, for example, if the design was created as part of one's employment or if it was simply sold or otherwise transferred to somebody else. If this is the case, the inventor(s) can file an Assignment with the USPTO either when the patent application is filed or anytime after that to inform the Office of this change in ownership rights. For additional information, contact the Assignment Branch of the USPTO at 1-800-786-9199 or 1-571-272-3350.
Q: If I'm patenting a design, do I need to keep documentation?
A: Filing a patent application provides the USPTO with relatively strong proof of your design's conception and practice date. However, it's always a good idea to maintain records of how you developed your design, in the event that another party later claims to have invented it first. A notebook with detailed notes and signed, dated witness entries that are organized chronologically is one common way to record the research and development process of your design.
Q: What are the drawing guidelines for a design patent application?
A: All patent application drawings require a sufficient number of views to constitute a complete disclosure of the subject of the application. For design patent applications, this may include any appropriate surface shading or broken lines to indicate non-design elements not claimed in the application. Drawings are usually required to be in black ink on white paper. However, black and white photographs may also suffice if adequate views are shown. Color drawings or photographs may only be submitted if a petition is filed and granted by the USPTO and an additional fee is paid. The general guidelines for design patent application drawings are similar to those for utility patents. However, with design patent drawings only external features should be shown (nothing structural or internal) and no reference numbers are required.
Q: Can I file a provisional application for a design patent?
A: No. The Patent Office has only authorized provisional applications as an initial filing for utility patents.
Q: How do I perform a design patent search?
A: While not required since the USPTO conducts one as part of the application examination process, it's always a good idea to conduct a design patent search on your own, prior to filing your application. (The USPTO does require that you conduct your own search if you request expedited processing of your application.) Because a design patent application's "description" is typically represented in its drawings, keyword searches are typically less effective at finding previously patented designs.
Q: May I submit more than one design in my design patent application?
A: No, only a single, distinct design may be the subject of each application. Likewise, your drawings should only reflect the views of one design. The entire design must be identified within a single claim and title. If you have several versions of your design you want to submit, you can attempt to include them but should be prepared for the possibility that the USPTO may choose to restrict your application to one version of your design and require additional applications for different versions.
Q: How long does a design patent last?
A: The term of a design patent is 14 years, measured from the date the patent is granted. This is in contrast to a utility patent term, which typically lasts 20 years and is measured from the application priority filing date. Design patents are not renewable and require no maintenance fees.
Q: What is the difference between a design patent and a trademark?
A: A design patent protects any new and original ornamental design of an article of manufacture. A trademark protects a word or words, name, symbol or drawing that is used in commerce to distinguish one source of goods or services from another. Put another way, a design patent would protect the physical appearance of a unique lamp you are planning to sell to the public (so long as that appearance does not affect the lamp's function in any way). A trademark would protect the symbols or words you use to identify the lamp as coming from your particular business. In certain circumstances, both forms of protection may be available to cover a single design, providing potential advantages for the owner of these rights.
Q: What qualifies for a design patent?
A: Any unique ornamental design of an article of manufacture (a useful item made by man or machine) may qualify for design patent protection. Generally, a design must satisfy the following to be patentable:
1. It is "part" of the article. That is, the design is intertwined and inseparable from the item.
- For example, the label design on a bottle would not qualify, but the bottle itself would if uniquely shaped and as long as that shape does not affect the bottle's function.
2. It is purely ornamental. The design cannot be part of the item's internal structure, nor may it be responsible for the article's new or improved use. A good test is to ask, "Would the article work the same way if the design was removed or changed?" If the answer is no -- that it would work differently (or not at all) -- you more likely have a candidate for a utility patent.
- To return to the bottle example above, if the new shape enables spill-proof pouring, this would be a structurally significant change pointing toward a utility patent.
The law also requires a patentable design to be "original" (cannot simulate a well-known or naturally-occurring object or person) as well as non-offensive to any race, religion, sex, ethnic group or nationality.
Q: What is the difference between a design patent and a utility patent?
A: Put simply, a design patent protects an article's design --its unique external appearance-- while a utility patent protects the article's function. Utility patents also cover certain subject matter as to which a design patent would not apply (like processes and chemical compounds). In some cases, an invention may qualify for both design and utility patent protection. Since each is a distinct form of protection, the inventor would need to apply for both types separately, to take advantage of both forms of protection.
Q: How long will it take to prepare my design patent application?
A: It is important that you plan ahead when completing your design patent application. Allow at least 2-3 weeks complete the patent process, as it will take some time to prepare your technical drawings and application.
Q: What is the PTO's design patent examination process?
A: The examiner makes sure the application complies with the necessary formalities. The drawing disclosure must be complete and the examiner will conduct a thorough comparison of the claimed design with any "prior art" (i.e., previously patented or published designs). The USPTO examiner may make amendment suggestions or otherwise communicate with you during this process. If the Patent Office finds the design patentable, the application is allowed. The USPTO will notify the applicant directly with instructions on completing the patent process.
Q: What is the "USPTO"?
A: The "USPTO," sometimes shortened to "PTO" or simply "Patent Office," is another name for the U.S. Patent & Trademark Office. This office is the governing authority for granting patents and trademarks in the United States.
Q: Why should I apply for a design patent?
A: A design patent owner has the right to exclude others from making, using, importing, selling or offering to sell without permission what is protected by the patent - in this case, your unique ornamental design. A patent holder's rights include the right to file an infringement suit in federal court and to stop the importation of infringing goods into the US. Once you file a design patent application, you may legally label your design "patent pending" for the period that your application is awaiting approval.