Patent Smart, LLC

Your Patent and Product Coach


Frequently Asked Questions

 Q: What kind of protection does a patent provide?

A: Patent protection means that the invention cannot be commercially made, used, distributed or sold without the patent owner's consent. Patent rights are enforced in a court, which holds the authority to stop patent infringement. Conversely, a court can also declare a patent invalid upon a successful challenge by a third party.

Q: What rights does a patent owner have?

A: A patent owner has the right to decide who may - or may not - use the patented invention for the period in which the invention is protected. The patent owner may give permission to, or license, other parties to use the invention on mutually agreed terms. The owner may also sell the right to the invention to someone else, who will then become the new owner of the patent. Once a patent expires, the protection ends, and an invention enters the public domain, that is, the owner no longer holds exclusive rights to the invention, which becomes available to commercial exploitation by others.

Q: If I have an idea, how do I protect it prior to getting a patent?

A: You should file a provisional patent application as soon as practical. The USPTO has transitioned from a “first-to-invent” to a “first-to-file” invention system similar to most other countries. Therefore, the provisional patent application serves as your invention date. After filing the provisional application, you now have “patent pending” status. You then have one year from this filing date to file for your non-provisional (utility) patent. Most inventors use this one year grace period to further reduce their idea to practice.

Q: How do I go about determining if my idea is patentable?

A: You need to invest in a patent search that is done by a professional. This should cost from $300 to $500, at the most. It will provide you with patents that could be very similar to your idea. If some patents are very close in concept and practice, you may not be able to obtain a patent. On the other hand, your idea may be an improvement over existing patents and filing may be warranted. Keep in mind that an internet search or a simple key word search on the USPTO website will not provide the information you need to make an informed decision. Also, do not deal with firms that will just provide you with a list and copy of patents and then abandon you. A professional is required who can give you advice on how broad or narrow a potential patent is. With respect to the prior art, your consultant should also be able to articulate the strength and weaknesses of your idea.

Q: How does a patent, copyright, and trademark differ?

A: A copyright protects "original works of authorship" including a) works of art, b) photos, pictures, graphic designs, drawings and other forms of images; c) songs, music and sound recordings of all kinds; d) books, manuscripts, publications and other written works; and e) plays, movies, shows, and other performance arts. A trademark is a word, name, symbol or device which is used to protect words, phrases and logos used in commerce to identify the source of goods and/or services. Trademark rights may be used to prevent others from using a confusingly similar mark, but not to prevent others from making the same goods or from selling the same goods or services under a clearly different mark. A patent is the grant of a property right to the inventor, issued by the Patent and Trademark Office. It is a right to exclude others from making, using, offering for sale, selling or importing the invention.

 Q: How much should it cost to obtain a patent? How long does it take?

A: Unfortunately, I have seen many independent inventors scammed. A patent should never cost $20,000. Most cost less than $10,000 and depending on complexity, range from $4,500 to $8,000 to file in the U.S., including all fees. Depending on the patent classification, once the patent is filed, it should take 6 months-2 years to issue.

Q: Can I discuss my invention with a potential partner/investor before filing for a patent?

A: It is important to file a patent application before publicly disclosing the details of the invention. If this it is not possible, such a disclosure should be accompanied by a confidentiality agreement. In many cases, the inventor is not ready to file a patent and requires time to reduce the idea to practice. Many iterations of the idea may be required before the final design has been deemed ready for market. During this phase, it is important not to offer the product for sale, directly or indirectly. If you need to work with a third party in order to reduce your idea to practice, be sure to do it under a confidentiality agreement.

Q: If I work with another person(s) in order to reduce my idea to practice, is that person a co-inventor?

A: The inventor of the idea is the person who develops the “novel” idea. Someone who makes a prototype or assists the inventor in reducing the idea to practice is not a co-inventor.. However, if someone contributes an idea to the invention that makes the idea more beneficial (e.g. reduces cost of manufacture, makes it easier to manufacture, increases functionality, etc.) and results in a new claim, then that person is considered a co-inventor.

Q: What is a provisional patent and should I use this option instead of filing a normal utility patent ?

A: A provisional patent does not require formal patent claims and there is no examination of the patentability of the application. The fee required to file a provisional patent is much lower than a standard non-provisional patent application. The provisional patent application establishes an early effective filing date and is effective for no more than 12 months, at which time, the inventor must file a non-provisional application or lose the benefit of the early application date. One popular use of a provisional application is to document and "lock in" potential patent rights while attempting to obtain sponsors for further development (and for more expensive patent applications). This tactic may permit an inventor to defer major patent application costs until the commercial viability (or futility) of the invention becomes apparent.

Q: How do I determine the value of my patent?

A: There is no easy answer. The value of your patent will be based on many factors, including the cost of the final product, the competitive landscape, the number of benefits provided by your product, the strength and breadth of your patent, and many other factors. In the end, the value of your patent or product is determined by the marketplace. It is important to find partners who recognize the product value and have available channels of distribution.