So you have an invention and would like to profit from it.
WHY? Obtaining a patent seems a sensible step to take because, if you own a patent, you are entitled to sell your patent rights, or you can license others to do any and all of the things that the patent owner is entitled to do. No one may make, use, offer for sale, sell or import the invention without obtaining permission from the patent owner, who can collect royalties for permissions or licenses granted. Such reasons explain the "why" behind would-be patent owners investing their time and resources in securing patents.
HOW? The "how" of obtaining a patent is to file a patent application that will be shepherded through examination in the U.S. Patent and Trademark Office (USPTO). Three types of applications can be filed — a Design Application, a Utility Application and a Provisional Application. Utility Patents and Design Patents issue from Utility Applications and Design Applications, respectively. No patent ever issues due solely to the filing of a Provisional Application, but filing a Provisional may provide a useful stepping stone along a path that leads to the filing of a Utility Application, as is explained shortly.
A Design Patent Application is what you file with the USPTO if you want to protect appearance features of an article of manufacture that embodies your invention. The value of Design Patents and benefits that can result from filing one or a set of Design Applications are discussed in a companion article entitled Why File A Design Application?
A Utility Patent Application is what you file if you want to protect something other than appearance features of an article of manufacture. A Utility Patent may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, composition of matter or other new and useful improvement thereof.
A Provisional Application is what you may decide to file if you want to obtain an early filing date in the USPTO. This type of application is a scaled-down version of a Utility Application at a fraction of the cost of filing a full-blown Utility Application. It also preserves for 12 months the right to file a follow-on Utility Application. This obtains the benefit of the Provisional's filing date without starting a 20-year clock running on the term of a resulting Utility Patent. Other benefits of Provisional filing, including the right it gives the application owner to use the coveted words "Patent Pending," are explained in a companion article entitled Why File A Provisional Application?
WHEN? A factor to keep in mind in deciding "when" to file a U.S. patent application of any type is whether the invention will have value abroad. If preserving your right to pursue patent protection abroad is of importance, then the best answer to the question of "when to file" may be:
- as soon as possible (to obtain an early filing date that can benefit any applications you file abroad)
- before your invention is disclosed to third parties or offered for sale (to preserve your foreign filing rights)
- before information about the invention is communicated abroad (to preserve domestic patent filing rights).
The laws of nearly every country except the United States require "absolute novelty" of an invention when a first patent application is filed. This means that you’re working with a registered U.S. patent attorney to maintain invention confidentiality until at least a first patent application has been filed. This can be important to the preservation of your right to file patent applications outside the United States.
Your patent attorney will explain how an international treaty known as the "Paris Convention" may permit you to file first in the United States and obtain benefit from the U.S. filing date when you later file for patent protection abroad. Your patent attorney will also explain that U.S. law forbids your filing a patent application outside the United States or even exporting information about the invention before you file a U.S. patent application and/or obtain a "Foreign Filing License" from the USPTO.
U.S. patent law may give you a grace period of one year to file for patent protection in the United States measured from when you first publicly use or offer the invention for sale in this country. However, it almost always makes good sense to file in the United States as quickly as is practicable. If development work is underway to improve, enhance or perfect the invention during this one-year grace period, the filing of one or more Provisional Applications may be desirable to establish early filing dates in the USPTO. This can be claimed in the Utility Application you must file before the one-year grace period ends.
Yet another factor to keep in mind in deciding "When" to file a first patent application in the United States is the desirability of obtaining, prior to filing any sort of patent application, the results of a professionally conducted patentability search. The patents and published applications you will learn about as the result of a patent search will help you and your patent attorney draft better claims of more proper scope to include in the Utility Application you file.
In some instances, a patent search may even turn up prior art so pertinent that you elect not to file a patent application, or may disclose a relatively new patent having claims you may want to "design around" to avoid infringement concerns. Finding patents that present possible infringement concerns is not within the scope and purpose of a simple patentability search, but if an infringement concern exists and a search brings it to your attention, you will have gotten more than your money's worth from commissioning a search.