Overview of
The Legal Requirements for a Patent

What is a Patent?
    A patent is a property right granted by the Government of the United States of America 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 public disclosure of the invention when the patent is granted.
What can be patented
  • Process
  • Machine
  • Article of manufacture
  • Composition of matter
  • Improvement of any of the above
  • ornamental design of an article of manufacture
  • asexually reproduced plant varieties
What cannot be patented:
  • Laws of nature
  • Physical phenomena
  • Abstract ideas
  • Literary, dramatic, musical, and artistic works (these can be Copyright protected).
Who can apply:
  • Generally, only the inventor may apply for a patent. An applicant who falsely states that he/she is the inventor is subject to criminal penalties.

Two Main Types of Patents
  • Utility Patent ("patents for invention")

      • A utility patent can only be issued for the invention of a new and useful process, machine, manufacture, or composition of matter, or a new and useful improvement thereof, it generally permits its owner to exclude others from making, using, or selling the invention for a period of up to twenty years from the date of patent application filing, subject to the payment of maintenance fees.  Approximately 90% of the patent documents issued by the USPTO in recent years have been utility patents

  • Design Patent (protects ornamental design):

      • A design patent is a form of legal protection of the unique visual qualities of a manufactured item.  A design patent may be granted if the product has a distinct configuration, distinct surface ornamentation or both.  In other words, a design patent provides protection for the ornamental design of something that has a practical utility. A design patent is granted for the term of fifteen years.  Not subject to the payment of maintenance fees.

Qualification for a Utility Patent:
  • Useful

      • The invention must have a useful purpose. For example, a machine which will not operate to perform the intended purpose would not be called useful, and therefore would not be granted a patent. So, a proof of ability to perform the intended function is required, either through design or testing.

  • Adequately described

      • The invention must completely designed and described to be patentable. Satisfying this requirement requires that the applicant submits complete set of technical documents, whether it is a set of design drawings or chemical description for medicine. The description must completely describe the new product.

  • Novel

    • An invention is not patentable if it was known to the public or was described in someone else's patent or patent application before the effective filing date of the claimed invention (that is, it is not "novel"). The purpose of the novelty requirement is to prevent the prior art from being patented again.

    • Importance of Doing a Search:  After an application is submitted the USPTO conducts a search to determine whether the patent is novel.  A prudent inventor would conduct a search before submitting the application to ensure that his investment in the patent is wise.  There are professional services that can conduct such a search (it can cost anywhere between $1,000 to over $10,000 and are typically arranged through the patent attorney's office).

      • You can do a preliminary research using these internet search tools.

        • CLICK HERE to go to the official USPTO patent search page
        • CLICK HERE to go to the Google patent search page (intuitive and easy to use).

    • Effect of Disclosure:  A claimed invention is not "novel" if it has been described in a printed publication or was otherwise available to the public before the effective filing date of the claimed invention.  The term "otherwise available to the public" refers to other types of disclosures of the claimed invention such as an oral presentation at a scientific meeting, a demonstration at a trade show, a lecture or speech, a statement made on a radio talk show, a YouTube™ video, a website, etc. etc.

      • Exception:  There are is a limited exception for a disclosure made 1 year or less before the effective filing date of the claimed invention but ONLY if the disclosure was made by the inventor(s) themselves or someone who obtained it from the inventor(s).  If relying on this exception it can be prudent to first have a non-disclosure agreement signed.  Inventors should also consider getting a "provisional patent" (see below)

  • Nonobvious

    • Even if an the idea sought to be patented is novel (that is, it involves one or more differences over the most nearly similar thing already known) a patent may still be refused if the differences would be obvious.  The subject matter sought to be patented must be sufficiently different from what has been used or described before that it may be said to be non-obvious to a person having ordinary skill in the area of technology related to the invention.  For example, the substitution of one color for another, or changes in size, are ordinarily not patentable.

Qualification for Design Patent:
  • Article of Manufacture:

    • The design must be patented "for an article of manufacture" (a man made tangible object).  It cannot be a design or picture standing alone in the abstract.  Designs are patentable only if the applied to an article of manufacture.

  • Originality

    • A patent for a design can not be derived from any source other than the individuals named as inventors. You can not patent any simulation of known objects, persons, or naturally occurring forms.

  • Novelty

    • The "average observer test": the overall appearance of the design in the eyes of an average, or ordinary, observer must be different from the appearance of any other single prior design.

    • There is therefore an important difference between the novelty of a design patent and that of a utility patent: the novelty of a design patent comes from the ornamentation of the claimed design while the novelty of a utility patent comes from the technical characteristics of the claimed invention. Therefore, an invention may be novel for design patentability purposes, yet lack novelty for utility patentability purposes, and vice versa.

  • Non-Obviousness
    •
    • A patentable design must be non-obvious. The standard is whether "a designer of ordinary skill of the articles involved" or other closely related object would have found the design as a whole obvious at the time the design was invented.

  • Ornamentality

    • A patentable design must be "ornamental". To qualify for design patent protection a design must have an ornamental appearance that is not dictated by function alone. In other words, if a particular design is essential to the use of the article, it can not be the subject of a design patent

Provisional Patent Application:
  • Successfully taking an invention to market requires the ability to talk to people about the product.  It is impossible for a manufacturer or retail buyer to commit to a product without seeing it.  Once an inventor discloses the idea, however, he or she has one year to patent before the idea is deemed not be "novel".  Full blown applications, however, can cost many thousands of dollars and in the early stages most invention designs are still evolving.  Provisional patent application may be a solution

    • A "provisional patent" application can be filed at a fraction of the cost of a full blown application

    • The provisional application is simpler to complete that the full blown application.  Patent claims and drawings are not required.  CLICK HERE to view a YouTube video on how to prepare a provisional patent application
      • .
    • A provisional patent will not actually become a patent until a full blown regular application has been filed and approved

    • A provisional patent is like a place holder that lays a claim to the filing date and the invention.  It provides protection for one year.  It gives the inventor time to develop the product and gain market information before making a final decision about filing the full blown (expensive) application.

Patent Attorneys
    A special license is required to practice and represent clients before the United States Patent and Trademark Office (USPTO).  Only attorneys with such a license may prepare, file, and prosecute patent applications.  Patent Attorneys are required to have a technical degree (such as engineering, chemistry or physics) and must take and pass the USPTO registration examination.

    The FIU Small Business Legal Clinic does not have the special license required to actually prepare, file and prosecute patent applications.

      To find a qualified patent attorney CLICK HERE to go to the Florida Bar Associations "Lawyer Referral Service"

For more information
  • Go to an information page on the website of the United States Patent and Trademark Office for more information (CLICK HERE)