Frequently Asked Questions
1) What kind of protection do I need?
2) Are there different types of Patent Applications?
3) How long does the patent application examination procedure last?
4) When can I file for a Patent?
5) How do I know if my idea is worth patenting?
6) When will my patent be published?
8) How do I know if my trademark is worth protecting?
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1) What kind of protection do I need?
Return to TopThere are many forms of intellectual property protection. The most common are patents and trademarks. Patents relate to innovations that generally have a specific function or utility while trademarks relate to branding a good or service. Specifically, a patent creates ownership of intellectual property so that competitors cannot claim rights to or use the intellectual property without the owner's consent. A trademark creates ownership of a name, logo or design of a good or service so that competitors cannot create similar names that cause confusion in the marketplace. Other forms of protection include design patents and Trade Dress for the aesthetic designs of products, and copyrights for artistic expression fixed on a medium.
2) Are there different types of Patent Applications?
Return to TopYes, there are different types of patents. The most common are Utility Patents and Design Patents. A utility patent relates to innovations having a utility, providing a function (i.e. a mousetrap) while a design patent relates to a certain design of a product (i.e. a shape of a bottle). Utility patent applications come in two forms: Provisional and Non-Provisional. A Provisional application is less expensive than a Non-Provisional application, however, it must be converted into a Non-Provisional application within a year. This option allows an individual to test the market while having "Patent Pending" status. It also allows an individual to claim benefits to the date the Provisional was filed. A Non-Provisional application may be filed without filing a Provisional application first. Once a Non-Provisional application is filed, the application proceeds to examination. This means that although a Provisional application may be filed earlier, it will not begin the examination process until it is converted into a Non-Provisional application.
3) How long does the patent application examination procedure last?
Return to TopThe examination procedure, on average, takes about 3 years from the filing of a Non-Provisional application. However, if a Provisional application is filed first, it may take up to about 4 years for the patent to issue.
4) When can I file for a Patent?
Return to TopThe sooner you file a Patent application the better. While the United States maintains a first-to-invent system, many disputes may be resolved by having an earlier priority date (ie. the date the application was filed). Also, if an innovation is offered for sale or publicly disclosed (disclosed on the internet, disclosed at a public event, etc.) a patent must be filed within a year of the offer for sale or the public disclosure. While a patent cannot be filed on the innovation a year after public disclosure, it may still be considered prior art to any similar innovations.
5) How do I know if my idea is worth patenting?
Return to TopInnovations have mainly two obstacles to overcome in order to become patented. These obstacles are novelty and obviousness. The Examiner at the United States Patent & Trademark Office (USPTO) will compare the claimed invention to all prior art of which he is aware to determine if the invention is new, unique, or novel. If the invention is a new idea then the novelty obstacle is overcome, however, obviousness is still a concern. If this invention is in fact unique, it may be determined that the invention is an obvious adaptation of already known innovations. Therefore, if you have an innovation that is new and non-obvious then your idea is worth patenting. It is typical to receive rejections based on novelty and/or obviousness, and these rejections may be overcome by amendments to the scope of the claimed inventions and/or arguments against the rejections.
If you have any questions about whether you should patent your idea or not, click here.
6) When will my patent be published?
Return to TopProvisional Patent applications are never published, however, Non-Provisional Patent applications usually publish 18 months after the original filing date. Publication of a Patent application, though, does not imply that the Patent application is going to issue.
It is possible to file an application with a request for non-publication, but this can be filed only if there has been no foreign filing of the application, or at the time of filing, there is no intention to foreign file the application.
7) What is "Prior Art"?
Return to TopPrior Art is any publically available information that may be material to the patentability of a claimed invention, such as any publication that may affect the novelty or obviousness of a claimed invention. The United States Patent & Trademark Office utilizes prior art in order to determine novelty and obviousness. The USPTO requires that all prior art known to the inventor be submitted to the United States Patent & Trademark Office to aid in the examination process.
8) How do I know if my trademark is worth protecting?
Return to TopBy registering a trademark with the United States Patent & Trademark Office, one generally obtains legal ownership, exclusive rights in connection with the goods and/or services, and the ability to take legal action against infringement. Registration of trademarks, much like patents, have obstacles to overcome. The mark cannot be descriptive and cannot cause confusion in the marketplace.
Descriptive terms are generally words that describe the goods or services, are generic, are geographical, or are surnames. Trademarks may contain descriptive terms, as long as the entire mark is not descriptive. In these cases, the descriptive part of the mark may need to be disclaimed. The USPTO defines a disclaimer as "a statement that the applicant or registrant does not claim the exclusive right to use a specified element or elements of the mark in a trademark application or registration."
A mark may cause confusion in the marketplace and is thus unregistrable if the mark is the same or confusingly similar and used on the same or similar goods and/or services. Therefore, a mark may have a similar or the same name as an existing mark as long as the goods and/or services of both are not related in any way.
9) What is Trade Dress?
Return to TopTrade Dress is protection that prevents others from having a product or packaging having a look that is confusingly similar to an existing product or packaging. Trade Dress requires "Acquired Distinctiveness," which is generally obtained through a history of use for 5 or more years or through evidence of significant sales showing an association of the look of the product or packaging to the company by the public. One cannot claim functional elements as Trade Dress, however, and must claim only aesthetic design properties that can be associated with the source.