Introduction to Patents

Bryan C. Bryner, Esq.

Is my idea patentable? When should I apply for a patent? How do I apply for a patent?

But first . . .

So you’ve got an idea . . .

What is a patent? What is a patent?

Written document that describes what your invention is Must be approved by U.S. Patent & Trademark Office

Patent rights granted Right to exclude others from making, using, selling,

offering to sell, or importing your claimed invention Term of Patent

20 years from date you file your patent application Ownership of Patent Rights

Inventor Assignment

Is My Idea Patentable?

5 Requirements for a Patentable Idea1. Appropriate Subject Matter2. Useful3. Novel4. Not-Obvious5. Enablement

Is My Idea Patentable? (cont’d)1. Appropriate Subject Matter

“Anything under the sun made by man” Machines / Mechanical apparatus Processes

Methods to make something Methods to use something

Composition of Matter Improvements on existing technology

Not appropriate: Naturally occurring objects Living organisms Natural discoveries Perpetual Motion Machine

Is My Idea Patentable? (cont’d)

2. Useful Capable of being useful to mankind Very easy requirement to satisfy

Is My Idea Patentable? (cont’d)

3. Novel Means “New and Never Done Before” Only applies to what you claim is your invention

(described in the claims) How to check if your idea is “Novel”

Issued Patents Magazines & Scientific/Engineering Journals Existing products for sale

Is My Idea Patentable? (cont’d)

4. Not-Obvious Even if idea is Novel, it can’t be just an obvious

change How to check if it is obvious

Somebody with technical experience would think of making the change; OR

Two or more written sources (patents, magazines, articles, etc.), when considered together, would lead somebody to make the change

Is My Idea Patentable? (cont’d)

5. Enablement Idea must be developed enough that you can

describe it in sufficient detail to enable somebody with technical skill to make and use the invention

Requires detailed written description, and usually drawings

Don’t need to actually make your invention, or have a prototype built

ExampleClaim 1: A chair comprising:

a triangular seat;three legs attached to said seat; a back attached to the rear of

the seat; andone armrest.

How Do I Apply for a Patent?

Process for Obtaining a Patent Applicant prepares and files patent application USPTO examines application USPTO issues office action(s) Applicant responds to office action(s) USPTO denies or approves patent

Time for Application Process 18 months – 3 years

When Should I Apply for a Patent? Required:

Within 1 year after it becomes public knowledge On sale Advertised Displayed or explained at a public event (science fair,

tech show, etc.) Described in a public writing (journal, magazine, etc.)

Suggested Before going public with it (selling, advertising,

displaying, publishing, etc.) When working with companies to manufacture or

develop Negotiating for financing

Other Types of Patents & Patent Applications Provisional Application

Does not issue into a patent Lasts for only 12 months Must file a regular patent application within 12 months

Design Patent Covers artistic and ornamental designs that are

Applied to physical objects; OR Incorporated in the design of the product

Plant Patent