Frequently Asked Questions About Patents

A U.S. patent is a property right granted to an inventor “to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States” for a limited time in exchange for the public disclosure of the invention when the patent is granted.

The federal agency responsible for granting U.S. patents is the United States Patent and Trademark Office (USPTO).  The USPTO has multiple offices located throughout the United States and is headquartered in Alexandria, Virginia.

The three types of patents are utility, design and plant. The USPTO can grant a utility patent to an individual who discovers or invents any new and useful process, machine, article of manufacture, composition of matter, or any new and useful improvement thereof. Most patent applications submitted to the USPTO are utility patent applications. The USPTO can also grant a design patent to anyone who invents a new, original, and ornamental design for an article of manufacture. Finally, the USPTO can grant a plant patent for the development or discovery of a distinct and new variety of plant.

As previously mentioned, utility patents may be granted for any new and useful process, machine, article of manufacture, composition of matter, or any new and useful improvement thereof.  Furthermore, to obtain patent protection, an invention must be novel; nonobvious; claimed in clear, concise, and exact terms in the patent application; and adequately described or enabled so that one of ordinary skill in the art can make and use the invention.

Laws of nature, physical phenomena, and abstract ideas cannot be patented.  In addition, patent protection cannot be obtained for subject matter that lacks usefulness (e.g., perpetual motion machines) or is offensive to public morality.

The lists of what can and cannot be patented should be reviewed to determine if an invention falls into one of the categories of patentable subject matter.  If the subject matter falls into a patentable category, it is advisable to conduct a patentability search of the prior art (previous public disclosures).  The prior art that is searched should include U.S. patents, U.S. patent application publications, foreign patent documents, and non-patent literature.  An invention may be patentable if it is not disclosed in the prior art.  Conducting a thorough patentability search is difficult.  Prior art searching is a learned skill.  A registered patent attorney should be contacted to conduct the search.

A registered patent attorney has the qualifications needed to represent inventors before the USPTO.  In particular, a registered patent attorney prepares and files patent applications and advocates for the applications to issue as patents.  There are three qualifications a practitioner must meet to become a registered patent attorney.  First, a practitioner must be an attorney licensed to practice law in at least one state or territory of the U.S. or in the District of Columbia.  Second, a practitioner must demonstrate that he or she has the scientific and technical expertise necessary to understand his or her clients’ inventions.  Third, a practitioner must pass the USPTO registration examination which tests his or her understanding of patent law and the policies and procedures of the USPTO.

A registered patent attorney drafts a patent application and then files it with the USPTO.  There are two types of utility patent applications.  A provisional application is a quick and inexpensive way for an inventor to establish an earlier effective filing date for a subsequently filed non-provisional application.  Because it is not examined, a provisional application does not have to be a complete application. The USPTO provides a 12-month period for converting a provisional application into a corresponding non-provisional application.  This time period begins with the filing date of the provisional application and ends 12 months later when the provisional application is automatically abandoned.  The non-provisional application must be filed during the 12-month period to benefit from the earlier filing date of the provisional application.  The non-provisional application is examined by the USPTO and must be a complete patent application.  The filing of a provisional application is optional.

A complete utility patent application includes a written description, an abstract, at least one claim, and any necessary drawings.  The written description explains the invention and the manner and process of making and using the same.  The abstract enables the USPTO to quickly determine the technical nature and novel aspects of the subject matter considered to be the invention.  The claim or claims must particularly point out and distinctly establish the scope of the subject matter sought to be patented.  Whether a patent is granted is determined, in large measure, by the scope of the claims.  Drawings are required if they are necessary to understand the subject matter of the invention.

An Office Action is an official letter from a patent examiner that indicates if none, some, or all of the claims in a patent application are rejected.  There are two types of Office Actions.  A Non-Final Office Action (NFOA) is the first Office Action issued after a patent application has been filed.  In the response to the NFOA, the applicant’s patent attorney may argue that the examiner is wrong to reject the claims or amend the claims to overcome the examiner’s rejections.  A Final Office Action (FOA) may be issued if the examiner is not persuaded by the arguments or amendments made by the patent attorney in the response to the NFOA.  An FOA closes the examination of the claims in a patent application.  In response, the patent attorney may file a Request for Continued Examination (RCE) or file an appeal with the Patent Trial and Appeal Board.

There are two types of fees that must be paid to obtain a utility patent.  The first is the filing fee and the second is the issue fee.  The filing fee is paid when a patent application is filed with the USPTO.  It is non-refundable even if an application does not issue as a patent.  The issue fee is paid only if a patent is granted.  Furthermore, there are maintenance fees that must be paid if the utility patent is to remain enforceable.  These fees are due 3½, 7½, and 11½ years after the patent is granted.  The filing, issue, and maintenance fees may be reduced if the applicant can establish small or micro entity status.

The protection conferred by a utility patent lasts 20 years from the filing date of the application provided all maintenance fees are paid.

It takes an average of 25 months from the date the application is filed to the date the application issues as a patent.  The actual time may vary significantly depending upon factors such as the type and complexity of the technology involved, the quality of the patent application, and the breadth of protection sought.  The application process may be accelerated by submitting a petition for expedited examination and paying the appropriate fee to the USPTO.

The USPTO reports that 63% of utility, plant, and reissue patent applications are allowed.  (A reissue patent is granted to correct a significant error in a patent that has already issued.)  The allowance rate is calculated by dividing the number of allowed applications by the number of applications disposed (allowed, abandoned, or on appeal) in a fiscal year.  The reported statistic is cumulative for fiscal year 2022 (October 1, 2021 to September 30, 2022).

An applicant may file an application in accordance with the Patent Cooperation Treaty (PCT).  The PCT process begins with the filing of a PCT application in a Receiving Office.  The USPTO is one of several Receiving Offices.  The PCT application designates the countries and regions in which patent protection is sought.  During the international phase of the PCT process, the International Searching Authority (ISA) conducts a prior art search and issues a written opinion based upon the results of the search.  A copy of the ISA’s written opinion (retitled “International Preliminary Report on Patentability”) is issued to each designated country or region.  During the national phase of the PCT process, each patent office in the designated countries or regions considers the International Preliminary Report on Patentability and determines if the invention is patentable based upon its national or regional patent laws.  A patent issues in each country or region where the national or regional patent laws are satisfied.  Alternatively, an application may be filed directly in each country or region where patent protection is sought.  A patent attorney will assist an applicant in determining the option that best meets his or her objectives.  Furthermore, a patent attorney will work with an applicant to obtain foreign patent protection no matter which of the two options is selected.