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Patent Law      Frequently Asked Questions

Patent Law can be confusing and complex, even to repeat inventor.  To better serve you, we have tried to provide answers to some of the more common questions related to the patent law.  If you need additional information, our phone and e-mail are at the bottome right corner of this page.  We look forwrad to serving you.


1. What is a Patent?

2. What kind of rights does a patent grant?

3. How long will my the patent rights last?

4. I've heard of design patents and utility patents.  What is the difference?  Which one do I need?

5. I told some friends about my invention, but now I'm afraid they will steal my invention.  What should I do?

6. I started selling my invention and then I realized how valuable it is.  Is it too late for me to get a patent?

7. Why do I need a patent attorney?  I've seen books on "How to Patent it Yourself."

8. I don't have money for a lawyer.  Can I file a "Poor Man's Patent" by describing my invention and mailing it to myself in a sealed envelope to prove the date of invention by a United States Post Mark?

9. How do I find a good patent attorney?

10. What do Patent Claims look like, and why are they so important?

11. If my rights vest in the Claims, should I still be concerned about the Detailed Description?

12. What does a patent application look like?

13. Do you have any samples of your work?

14. What is the process for securing a patent?

15. Why do I need a U.S. Patent?  Can't I just get an international patent?

What is a Patent?

A patent is a grant by the government for intellectual property rights to a novel invention such as an article of manufacture, a chemical composition, a method or process for fabricating an article of manufacture, a new chemical compound, etc.  Even business methods can be patented!  The patent laws of the United States are set forth in Title 35 of the United States Code.  Section 101 of this Title sets forth the general parameters as follows:

35 U.S.C. Section 101    Inventions patentable.

"Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title."

United States Patent Law derives its authority from Article 1, Section 8 of the Constitution, which grants Congress power "to promote Science and the useful Arts."

At the Law Offices of Ronald Shea, we specialize in securing national and international patent protection in the electrical and electronic arts, optics, physics, mechanical, and business method patents.

What kind of rights does a patent grant?

Within the general public, there are many misconceptions about the rights granted by a patent.


A patent is essentially a grant of a government sanctioned monopoly over an inventive idea for a period of twenty years in exchange for publicly disclosing your invention in a manner that will enable one skilled in the art to make and use the invention when the life of the patent is completed.  However, a patent does not automatically give you the right to manufacture and sell your invention.  It only gives you the right to prevent other people from manufacturing and selling your invention.  Although this may sound strange at first, consider the following examples.

Advanced Chemical company has developed a new compound, "Compound-D" which, when sprayed on a computer screen, permanently prevents dust from collecting on the screen.  They secure three separate patents:   Their first patent is for a dust repellant having the chemical structure of Compound-D.  Their second patent is for the process for manufacturing Compound-D, and their third patent is for the process for applying it to computer and television screens.

Scenario 1:      In experimenting with Compound-D, you determine that if you suspend ultra-fine silica particles in it, it will also eliminate glare from a computer screen.  You patent both the process of suspending ultra-fine silica particles in Compound-D, and the use of it as an anti-glare coating.  Advanced Chemical Company may not make or sell the new improved version of Compound-D without a license from you, or they would be infringing your patent.  You may use Compound-D in experimentation in the lab.  However, you you may not make or sell Compound-D to formulate your new improved version without license from Advanced Chemical Company.  You may not infrige their patent either.

Scenario 2:      In experimenting with Compound-D, you determine that if you heat it to 300 degrees Fahrenheit and expose it to chlorine gas, and then cool it rapidly, it produces a new anti-cancer drug.  You call it "Anti-cancer drug 1."  You patent both the compound as an anti-cancer drug, the method by which you produced it from Compound-D, and the method for using it to treat cancer patients.  Using Compound D as an anti-cancer drug does not violate Advanced Chemical company's patent for using the same compound to dust proof computer screens.   However, they have also patented the process of manufacturing the compound.  You are free to purchase drum loads of Compound-D directly from Advanced Chemical company, and process it into Anti-cancer drug 1 at your own factory.  But if you also seek to manufacture Compound-D at your factory, you must first negotiate with Advanced Chemical company, and purchase rights to the chemical manufacturing process described in their patent manufacturing patent.

However, Advanced Chemical may not make, use or sell the anti-cancer compound without securing permission from you to do so, because patent rights give you the privilege of prohibiting someone else from infringing your patent.  If you like, you may allow them to produce anti-cancer compound as long as they spilt the profits with you, or you may enter into a cross licensing agreement with Advanced Chemicals.

Scenario 3:  Advanced Chemical agrees to cross license with you to sell the anti-cancer compound.  But they will not sell licensing rights to Giant Pharmaceutical company.  Giant Pharmaceutical company employs dozens of Ph.D.s in chemistry and pharmacology.  They find a way of developing Compound-D through another process that was not patented by Advanced Chemical company.  They are therefore free to manufacture it without violating Advanced Chemical's patented method of production.  Because they are not using it for anti-dust treatment of computer screens, they may use it as an anti-cancer drug without violating any of Advanced Chemical's other patents.

However, until your patent expires, Giant Pharmaceutical must still negotiate a licensing agreement with you if they desire to add chlorine gas to Compound-D by your patented process, or to sell or use the anti-cancer drug you have developed.

How long will my the patent rights last?

Patent rights are not indefinite.  At one time, patent rights were for seventeen years following the issuance of the patent.   The United States and most of the other nations, of the world have adopted a common standard, wherein patent rights extend 20 years from the date of filing.  Because it typically takes about three years from the time of filing to the time of patent is issued, it works out to about the same as it was when patent rights were for seventeen years following issuance. In the process of prosecuting a patent (arguing it through the United States Patent and Trademark Office), there are some events that can "stop the twenty-year clock" from running while the prosecution phase continues.  Usually, however, these events do not substantially extend the life of a patent.

Some patents are able to secure allowance in as little as a year from the date of filing.  This means that the patent holder will enjoy patent protection for nineteen years.  On the other hand, there is currently a great backlog of business method patents at the United States Patent Office.  As a consequence, business method patents may lie dormant for over five years before the examination process begins.  Unfortunately, current US law does not "stop the clock" while a patent lies unexamined.  Assuming it takes two years for the prosecution phase to take place, by the time a business method patent issues, the applicant may only have thirteen years of patent protection remaining.


I've heard of design patents and utility patents.  What is the difference?  Which one do I need?

If you have an actual invention, you want a utility patent.  The word "utility" is derived from Article 1, Section 8 of the United States Constitution, "to promote Science and the useful Arts."  That is to say, a utility patent must be useful.

In contrast, a fundamental legal requirement of a design patent is that it is not useful.  It may only be decorative.  On a conceptual level, it is more similar to a trademark or a copyright than it is to a utility patent.  If one were to imagine, for example, a lamp having the shape of Mickey Mouse for a child's bedroom, since the shape of Mickey Mouse adds no functionality to the lamp, it would be eligible for a design patent. It may take a skilled attorney over a hundred hours to draft a utility patent describing a technical process and invention.  In contrast, a design patent can be drafted in a few hours.  As a consequence, scam corporations and agents have been known to prey on the general public by offering assistance in securing a "patent," and then, simply filing for a design patent on their client's invention.  In one such case, hundreds, if not thousands of clients were defrauded before the patent agent was discovered and disbarred.

Design patents are probably of greatest use to companies such as Warner Bros., Disney Studios, or the maker of Barbie dolls.  Additionally, because there are a variety of high legal burdens in obtaining a trademark, there may be some value in obtaining a design patent while attempting secure trademark rights on the same image or mark.  That question hinges very much on the circumstances surrounding a design patent being sought.

However, you should seek a design patent only if you have a very deliberate reason for doing so.  If you have a functional invention, you need a utility patent.   If you, or any one you know, has received a design patent for a functional invention, it is not a mistake, it is fraud.  You should immediately report the name of the patent attorney or patent agent to the Office of Enrollment and Discipline of the United States Patent Office, P.O. Box 1450, Arlington, Virginia  22313-1450, and notify them of the facts and circumstances that lead to the issuing of a design patent for an invention.

I told some friends about my invention, but now I'm afraid they will steal my invention.  What should I do?

In the future, your attorney can prepare non-disclosure agreements for you.  However, they should be reserved for business discussions, not telling your friends about your idea.

If you have already told someone about your invention without requiring them to sign a non-disclosure agreement, you have probably started a one year hour glass known as a "statutory bar."  Under the provisions of to 35 USC 102, you must file within one year of publicly disclosing your invention to anyone, or you will be prohibited from ever securing a patent for your idea.  Exceptions to the statutory bar are privileged conversations with an attorney or registered patent agent, persons who sign non-disclosure agreements, or co-inventors.

It may take your attorney more than a year to get to your patent if his docket is crowded.  And even when he begins drafting your patent, it is not something done over night.  It takes time to draft a patent application.  A week is very fast, and a month is not unheard of.  If you are truly worried about someone filing the same idea before your application is filed, write a clear description of your invention, include any drawings necessary (hand drawn sketches are allowable), deliver it to your attorney, and request that he file a "provisional application" immediately.  This will secure a firm "priority date" (an indisputable date of invention) with the United States Patent Office before the one-year statutory bar has rendered your invention unpatentable.



I started selling my invention and then I realized how valuable it is.  Is it too late for me to get a patent?

You may still be eligible for a patent in the United States.  The same one-year "statutory bar" described above applies to offers for sale.  However, under the provisions of to 35 USC 102, you must file within one year of publicly disclosing your invention to anyone.  This includes offers for sale, or displaying your invention in a store front window.  One reason for this law is to allow merchants to determine if their invention is marketable before investing the money to patent it.

Most foreign countries, however, are not so forgiving.  You may not file an application for patent rights in most countries after your patent has been publicly disclosed.  However, if you filed a United States Patent Application before your public disclosure, you may be able to file an International Application that claims the "priority date" of the United States Patent.  You must normally do so within one year of your priority date.  However, under the Paris Convention, a request for Restoration of Priority of an international application may be entered up to two months beyond the one year priority date.

Why do I need a patent attorney?  I have seen books on "How to Patent it Yourself."

In Topliff v. Topliff, 145 U.S. 156 at 171, the United States Supreme Court recognized that a patent "constitutes one of the most difficult legal instruments to draw with accuracy."  The High Court went on to affirm this truism in Sperry v. Florida, 373 U.S. 379 at 383.  An educated citizen who had no legal experience would probably be more successful defending himself in a murder trial than in drafting and prosecuting his own patent application.

I don't have money for a lawyer.  Can I file a "Poor Man's Patent" by describing my invention and mailing it to myself in a sealed envelope to prove the date of invention by a United States Post Mark?

No!  There is no such thing as a "poor man's patent."  To describe your invention, seal it in an envelope, and mail it to yourself certainly proves you had conceived the idea by the post marked date, but if you do not seek a patent attorney quickly, that same letter will be held against you in a court of law!


In American law, the date an invention is "reduced to practice" is the date of the invention.  This means that, if you are the first to invent something, and you demonstrate "reasonable diligence" in filing your patent, you are entitled to the patent rights even if someone else gets to the patent office before you.


However, if you "abandon, suppress or conceal" your invention,  under 35 USC 102(g)(2) you forfeit your earlier date of invention.  The date of invention will now become the date you file with the Patent Office.  If someone else conceived of the idea after you did, but files files his invention with the Patent Office before you do, you are now in second place in a race with only one winner.   And a five year old post mark would be proof positive that you did, in fact, abandon, suppress or conceal your invention!


The laws governing patents are massive and complex.  High school drop-outs and other know-it-alls are quick to offer advice on the law, and to express their opinions with great force and confidence.  If you rely on this kind of legal advice, you will probably get what you paid for it.  If you have an inventive idea of any real value, you would do well to seek the counsel of a registered patent attorney or patent agent.


How do I find a good patent attorney?

Sadly, if you are not an expert in a field, it is hard to select a professional.  This is true whether selecting a mechanic, a dentist, or a lawyer.  Referral is always one of the best ways, particularly if the one providing the reference is a demanding and discriminating consumer.  Referral to an individual attorney is generally more reliable than referral to a firm, as the quality between lawyers in a firm may vary widely.


The experience of an attorney is always critical, but never more so than in patent law.  The United States Supreme Court recognized long ago that a patent is one of the most complex legal instruments to draft.  (Topliff v. Topliff, 145 U.S. 156 at 171.)  It typically takes someone from two to three times as long to become proficient in patent drafting as it does to become a proficient trial lawyer.  Although there is no magic formula, I would look to a bare minimum of five years experience in a patent attorney unless he is working under the supervision of a more experienced attorney.


Next, sit down and talk with an attorney.  Judge him as you would any other person you are meeting.  If you are a good judge of character, use that as an asset in your selection process.  And don't be afraid to, ask for samples of their work, and samples of related patents by other attorneys or firms.


There are two critical parts to a patent which hinge heavily on the skill and dedication of your patent attorney.  These are the claims, and the specification.  If you understand how and why these parts of a patent are critical, you have a better chance of competently evaluating the skill of a patent attorney.

The next two questions are devoted to the claims and the specification.


What do Patent Claims look like, and why are they so important?

Your legal rights do not inure from the drawings, nor from the detailed description of the invention.  They vest in the Claims.  For someone to infringe your patent rights, they must infringe every element of one of the claims in your patent.  If they do not infringe every element of a claim, they are not infringing.  They owe you no licensing fees.  They are free to manufacture and sell it without paying you a dime.  Let's consider the following examples.

Example 1:      Let's assume for a moment that the table has never been invented, and that you have just come up with the idea of a table!  You describe it to your attorney in great detail, and tell him you want to patent it.  He drafts a detailed description of your invention, followed by the following poorly drafted claim:

I claim:


Claim 1.   A support device for supporting objects, said support device comprising:

a)     four vertical posts, and

b)     a square horizontal support surface resting on said four vertical posts, wherein each post is proximate a corner of the horizontal support surface.

What's wrong with this claim?  It will grant the inventor (you) a corner on the market for such tables for close to twenty years.  But it will be easy for other inventors to "design around" it.  If someone produces a table that does not have every element of your claim, they are not infringing your invention.  They may market it and sell it.  There is nothing you can do to stop it.  How many ways could someone design around the above claimed table?

·       They could produce round tables, rectangular tables, etc.  Your claim is limited to square tables.

·       They could produce tables having a single center leg with a wide support base, such as might be found in a deli or an Italian restaurant.

·       They could produce a table having two upside-down U shaped support structures functioning as legs at opposite ends of the table.

·       They could produce a table next to a wall with a cantilever beam extending underneath the table with the beam end anchored in the concrete wall next to the table.

·       If they were very avant-garde they could build a table suspended from the ceiling by cables.

In short, the patent protection secured by the above claim would be virtually worthless.  Anyone who liked your idea could design around your patent by designing a table that did not infringe your claim.  Manufacturers do not typically pay licensing fees when they can build essentially the same device without the burden of licensing fees.  The costs in securing patent rights are significant.  The purpose for patenting a device is to "corner the market" and make a good wage for your intellectual labor.  A skilled patent attorney is often the difference between a patent that is essentially worthless, and a patent that is superbly profitable.

A more valuable claim would be drafted as follows:

I claim:

Claim 1.   A support device for supporting objects, said support device comprising:

a)   a rigid member having a generally planar region, and

b)   at least one force member coupled to said rigid member, and configured to exert a force on said rigid member such that said generally planar region is disposed in a horizontal orientation.

It would be very hard to "design around" the above claim.  The "at least one force member" could be a center post type leg found in restaurant tables.  It could be two upside-down "U-Shaped" legs.  It could be three legs.  It could be a horizontal cantilever beam attached to the bottom of the rigid member (the table top) and affixed in a concrete wall.  It could be a multi-segment robat-type pivoting arm which could be moved horixontlly or vertically to allow a member of the party away from the table with minimal inconvenience.  A force member could even be one or more cables suspending the table top from the ceiling.

Ultimately, one can design around almost any patent claim.  For example, one could design around the above claim by producing a wire frame table top, where rigid wire is bent to form various shapes and sizes, and cups and bowls are suspended by their edges in respective wire frame openings.  Such a table lacks a horizontal planar area.

But such an unwieldy table design is unlikely to impact your market share, or your profits you enjoy by selling nearly every form of tables under the sun.  While your competitor makes a museum piece, you will be making a fortune.

Every good patent attorney drafts a claim with a view toward how someone might circumvent the claim.  He continually plays "devil's advocate," in his own mind, concocting ways to circumvent his own claims.  As a result, he will edit and re-edit the claims he has drafted in order to close any loop holes that another engineer or designer might exploit.  His goal should be to maximize your protection in the marketplace.

Consider another example of preventing someone from "designing around" a patent.

Example 2:      You have discovered that by heating "Anti-depressant X" to 300 degrees, and exposing it to chlorine gas, it becomes a powerful anti-cancer drug.  You have been granted three patents:  The first patent is for the compound as an anti-cancer drug.  The second patent is for the process used to synthesize it.  The third patent is the means by which it administered to a patient.  Giant Pharmaceutical company employees hundreds of Ph.D.s in chemistry and pharmacology.  They discover that, by using fluorine in place of chlorine, they produce an even more powerful anti-cancer drug.

Scenario 1:  You were fortunate enough to hire a very smart and very diligent patent attorney.  Your first two patent claims read as follows:

I claim:

Claim 1.     An anti-cancer drug comprising Anti-Depressant X (of a certain chemical structure defined in the claim) with a family VII element of the periodic chart double bonded to the carbon atom."

Clam 2.  The anti-cancer drug of claim 1 wherein the family VII element atom is a chlorine atom.

Although you did not specifically mention fluorine, it is only in dependent claim no. 2 that you limit the invention to chlorine.  Your first claim is directed to a family VII element of the periodic chart.  This includes both chlorine and fluorine.  Giant Pharmaceutical must still pay you money to produce and sell the anti-cancer drug.

Scenario 2:      You hired a patent attorney interested in "turning the crank," cranking out a patent, getting paid for it, and going on to the next one.  He has drafted the following claim for your invention:

I claim:

1.  An anti-cancer drug comprising Anti-Depressant X (of a certain chemical structure defined in the claim) with a chlorine atom double bonded to the carbon atom."

Giant Pharmaceutical company goes on to market their new anti cancer compound using fluorine instead of chlorine.  They make billions of dollars.  Since it is a better anti-cancer drug that yours, no one is interested in your patented anti-cancer drug any more.  You are forced to take a job as a check-out-clerk at the local grocery store.

The lesson:  Your patent rights are no better than the patent attorney you hire.  If you want iron clad patent protection, you need a patent attorney who has both the skill, and the will to do it right.  Good lawyering takes more than skill.  It also takes time.  You should be prepared to pay for a lawyer to "go the extra mile" in protecting your intellectual property.  And you should try to find one who has both the integrity, and the professional skills, to give you your money's worth.

If my rights vest in the Claims, should I still be concerned about the Detailed Description?

Yes.  It is vitally important for several reasons.


First, claims are very technical.  It is hard for the average client to spot a well drafted claim from a poorly drafted claim.  In truth, most good patent attorneys will have times in which they spend an entire day drafting solid claims, go home at the end of a day, sleep on it, and return to work the next day only to see numerous weaknesses in the claims they drafted!  A conscientious lawyer may have to amend a set of claims several days in a row before he is satisfied with them.  How then can a non-lawyer shop for a skilled patent attorney?


There is one other portion of a patent application that hinges on the skill and diligence of an attorney, and this area can be judged more readily by the average client.  This is the detailed description.


To understand why the detailed description is important, one must understand something of patent law.  True, the detailed description does not give you patentable rights over that device.  Only the claims do this.  However, it is patent claims that are rejected or allowed, and almost every patent claim is initially rejected.  The examiner will search for "prior art" (previous patents) that describe the features of your claims.  He will mail your attorney a rejection based on that "prior art."  In response to their rejection, your attorney has two options:  1)  he may respond with technical and legal arguments explaining why the Examiner is wrong, or 2)  he may amend the claim to distinguish over the features described in the prior art.


However, as a matter of law, your attorney may not add "New Matter" to a patent after it has been filed.  Your attorney may only amend a claim by adding a feature that has already been described somewhere in your application.  And this is where the skill and diligence of a patent attorney can become visible to the average client.


On the day the application is filed, neither the inventor nor the attorney knows what the "invention" is.  The "invention" (the claims that are allowed) are discovered in the prosecution process as the Examiner rejects the claims, and the attorney amends the claims, or argues for their allowance.


More to the point, no one knows what fact or detail in the detailed description will be necessary to successfully amend a claim.  Because of this, the detailed description should be exactly that . . . detailed!


It is usually not difficult to get a patent.  A patent attorney will almost always be able to find some trivial feature in the detailed description that distinguishes over the "prior art."  However, it is not simply a question of getting a claim allowed.  It is a question of getting a valuable claim allowed.  If a claim is amended by some trivial feature which is not essential to the inventive concept, another engineer or inventor will easily be able to circumvent your claim by building a functional device that borrows from your inventive concept while avoiding the trivial feature of your claim.  If they do not infringe every element of a claim, they are not infringing!


When a detailed description is not detailed, your attorney will have far fewer options with which to amend your claims.  The only available elements for amending an important claim may be trivial, non-essential features, thereby rendering your patent worthless.  And you should not be thinking "rocket science" here.  A simple bend in a piece of tubing may be all that is needed to successfully amend a claim to secure allowance of a commercially valuable patent.


When an attorney simply "turns the crank," and writes down exactly what you tell him, he is more likely to produce a patent application that is essentially worthless.  Your attorney should provide great detail, and if necessary, ask you for many specific details that you have taken for granted.


For a claim to be valuable, it must be amended with some feature that remains critical to the fundamental function of the invention, without which, it will be difficult or impossible to design around.  But if a detailed description does not include that critical feature, the claims may not be amended to include that critical feature.

Ask your attorney for some samples of simple patents that he has drafted.  Ask him if he can also provide you with patents in the same field drafted by other firms or attorneys.  Compare them.  A carefully written patent will have a detailed description that is truly detailed, and that is clear and easy to read.



What does a patent application look like?

Title 37 of the Code of Federal Regulations lists the elements of a patent application in Sections 37 CFR 1.51 and 1.77.  These can be divide conceptually into:


General administrative papers


       Utility application transmittal form.

       Fee transmittal form.

       Application data sheet (see 1.76).

       Executed oath or declaration.

       Prescribed Fees




The portion of the Application describing and claiming the invention.


      Specification (the written description) and



The written description, also known as the "specification," typically includes:


(1)           Title of the invention

(2)           Abstract of the disclosure.

(3)           Background of the invention.  (Optional)

(4)           Brief summary of the invention.  (Optional)

(5)           Brief description of the several views of the drawing.

(6)           Detailed description of the invention.

(7)           A claim or claims.


When the patent is issued, the Abstract and the most conceptually illustrative drawing appear on the first page.  The Abstract has a 150 word limit, and should be written in plain coherent English, thereby allowing an inventor, Examiner, or attorney to quickly scan the general contents of the patent by reading the abstract, and looking at the picture on the cover page.  If the patent appears to be completely irrelevant, the reader need go no further than the first page.  If it appears that it might be relevant, the pages immediately following the cover page are the figures.  In this way, patents are designed to be scanned efficiently by lawyers, examiners and inventors.



Do you have any samples of your work?

Below are Links to Patents and Patent Applications drafted by Ronald Shea.  Web development is tricky, but when this page is operating properly, you should be able to click on any of the sample patents below and download a PDF copy of the patent or application.

Requires Adobe Reader® 6.0 to view.
Click here to download


Electronic, Optical, and Computer Related Patents




Mechanical Patents


Business Method Patents


Patents on which Ronald Shea is an Named Inventor as well as Prosecuting Patent Attorney











To allow you to make some judgment of the relative quality of patents, links to three applications are provided below.  The application "Purse Hanger" to Bauerly was drafted by Ron Shea.  The other two links are to the British application by Lurie and a Japanese application by Omura.  They were drafted by attorneys from their respective countries.  These two applications were cited by the examiner as "prior art" during the prosecution process of the Bauerly patent.  You are invited to compare these three applications and reach your own conclusions.


·         U.S. Patent Application No. 10/763,426 to Bauerly filed January 23, 2004 and entitled, Purse Hanger.

·         Japanese Patent No. JP 10-113275 to Omura

·         British Patent No. GB 2,253,998 to Lurie

What is the process for securing a patent?

First, you must select an attorney, and he must agree to take your case.  An honest attorney will often advise a client that their idea is not patentable, or if it is patentable, it may not be economically viable.  That is, it may cost more to secure the patent than the inventor is ever likely to make back.


If you agree to go forward, the California Rules of Professional Responsibility require that a Professional Services Agreement (a contract) be finalized before work is begun.


You should prepare a written invention disclosure of your idea, with drawings and about one or two pages of details.  An attorney's time is expensive, and the more "leg work" you do, and the sooner you do it, the less expensive your patent will be.  Attorneys have to continually "fill in the blanks" in their detailed description.  For example, your attorney may write that "A is connected to B by an insulating epoxy."  Upon reading hit, you advise him that it is a conductive connection.  The amount of re-writing to correct this may be three words, or half the patent!  Make sure your attorney understands your patent before he starts work.  A well written invention disclosure and a face to face meeting complement each other well, and can save you a great deal of money.


Your attorney has an absolute duty to disclose to the patent office any "prior art" you may know of that relates to the claimed invention.  Intentional failure to identify such documents to the Patent Office is fraud on the Patent Office, and can result in forfeiture of patent rights.  However, you are under no duty to search for relevant art.  You must only identify the art of which you are aware.  You should provide a list of these patents, or photocopies of these documents, to your attorney.  Preferably, the attorney should be made aware of these documents prior to the drafting of the application, thereby allowing him to craft claims that do not read on the prior art, and to request more detail where necessary to distinguish over the prior art.


Your attorney will then begin to draft your application.  He may prepare drawings if you have not provided them.  During this process, he may contact you to clarify questions about the invention.  As a result of interaction with their patent attorney, inventors frequently think of new details that they need to add, or changes that must be made in light of the patent attorney's comments.  You must understand that tiny changes may often require massive revision of the claims, which are the soul of your patent.  This is a waste of an attorney's time.  If an attorney quotes a fixed fee for his work, such changes will raise that cost.  Sometimes considerably.


Make sure you have thought through your invention before seeking a patent.  A bare idea is not an invention.  You don't need to build a working model, but 35 U.S.C. Section 112 requires that a patent have sufficient detail to enable one skilled in the art to make and use the claimed invention.  Providing these details is the job of the inventor, not the patent attorney.


After the final draft of the Application is ready, your attorney will file it.  He may secure your signature on the inventor's oath, and the application fee prior to filing.  However, the application may be filed without these forms.  The Patent Office will provide the attorney with a "Notice of Missing Parts" which the attorney will submit subsequent to the initial filing.


The application will typically be examined in one to two years.  It is very rare for a patent to be examined in less than a year.  Some, applications, such as business method patents, may take more than five years to be examined!  Although a weekly phone call would be profoundly annoying to most patent attorneys, a two minute phone call every three months is not unreasonable, particularly after a year or two has elapsed.


If there are multiple distinct inventions in the application, the Patent Office will issue a "Restriction."  For example, a restriction might state:

"There are three separate inventive groups within the Figures


I.                  Figures 1-5 are drawn to an engine.

II.               Figures 6-10 are drawn to a transmission.

III.            Figures 11-12 are drawn to a tire tread.


"Applicant is required to select one of the three groups for examination.  Applicant is reminded to cancel any claims that are not drawn to the elect Figures."


In response, the attorney will file an "Election," electing one of the groups identified by the Examiner.  Sometimes the decision is easy for the attorney to make.  Often, however, the attorney will contact the inventor and discuss the options before filing the election.  The attorney may have to "withdraw" or "cancel" non-elect claims as part of the Election.


After Restrictions and other filing formalities are resolved, your attorney will receive the first Official Action "on the merits" of the application.   From this point on, the "turn around" time of the Patent Office will seldom be more than two or three months.


It is very rare that significant claims are allowed in this first Office Action.  The Action will typically reject the claims as being "anticipated" by a single prior art patent, or "obvious" in view of a combination of prior art patents.  The Office Action may also offer "Objections" to various formalities that fail to conform to some specific requirement of patent law.


In response, your attorney will file a Response to the Office Action.  In the response, your attorney will typically amend the language of one or more claims to distinguish over prior art cited by the examiner.  Your attorney will also advances technological and legal arguments as to why the rejected claims are distinct from the cited art.


Prosecuting a patent is basically "two strikes and you're out, but fowl tips keep you in the batter's box."  That is, if, as a result of the Attorney's response, the Examiner is forced to cite new "art" (different patents) as his basis for rejecting the claims, another "Non-Final Office Action" is issued.  You stay in the batter's box with one strike.  If the Examiner rejects the claims on the basis of the same prior art he had cited previously, the Patent Office will issue a "Final Office Action".


The attorney will again respond to the Office Action, whether it is Final or non-Final.  When responding to a Final Office Action, the attorney will probably have to file a "Request for Continued Examination."  The cost is several hundred dollars, which the client must pay to the attorney in advance.  It will buy you another two cracks at the ball.


This process continues until the Examiner and the attorney reach agreement on the patentable features of the claims. 


When the Examiner determines that the claims distinguish over all prior art he has discovered, the Patent Office mails a "Notice of Allowance" to the attorney.   You are required to pay an allowance fee  in a fixed amount of time.


You may want to pursue other "inventions" described within the application, but not fully claimed in the initial application.  If you had previously received a "Restriction," you will probably want to file a new application direct to the Figures that were not originally elected in your earlier "Election."  Your new application is called a "Divisional" application.   If no election had been issued during the prosecution of the first application, but you file another application, claiming patentable concepts that were not yet claimed, the new application is called a "Continuation."  Other than the name, there is very little difference between a Divisional and a Continuation.  The detailed description and figures of a divisional or continuation application are identical to the parent application.  Only the claims will be different.


The first line of the Divisional or Continuation should identify the parent application from which the new application is claiming priority.  If an applicant wants to file a continuation or divisional he MUST do so before the "Issue Date" of the parent application from which he is claiming priority.  To be safe, it is best to file the divisional application on the same day the allowance fee for the parent application is filed. 


Although Divisionals and continuations receive a "filing date" the day they are filed, they enjoy the "priority date" (the official invention date) of the original parent application.  New divisionals and continuations may be filed again and again until the term of the original patent expires.  It is not uncommon to see very thick patents continued six or seven times, issuing in six or seven patents of separate inventions described in the specification and drawings of the original patent.


The inventor may try to manufacture and sell the product of their invention, or may try to sell licensing rights to large corporations.  Hopefully, the inventor makes hundreds of millions of dollars, and retires in a beautiful Italian villa in Tuscany.

After a patent issues, you are required to pay a maintenance fee every few years.  The maintenance fees become progressively greater as time passes, on the assumption that, if the patent is of any value, you will be willing to pay the greater fee.  If the patent does not generate the desired revenue, you may simply elect to not file the maintenance fees, resulting in the abandonment of the patent.  If you are making hundreds of millions of dollars each year from one of your patents, abandonment is not recommended.


Why do I need a U.S. Patent?  Can't I just apply for a single international patent and cover the whole world?

No!  There is no such thing as an international patent.  There is such a thing as an international patent application, but this is not the same thing as an international patent.


It can cost thousands of dollars to translate a patent and file it in a foreign country.  It also costs money to hirer a lawyer in each country to prosecute your application before their national Patent Office.  Moreover, at the time of filing, an inventor may not even know which countries are the most economically strategic for securing patent rights.  Finally, when prosecution begins in the United States, he may realized that someone filed the same invention about a month before he file, and that it is economically pointless to pay a lawyer to continue prosecuting the application.  He he were to learn this after he had spent $50,000 to file in countries all over the world, it would be an expensive mistake.


To ease the financial burden on inventors, and give them time to determine in which countries they would like to seek patent protection, the Paris Convention and the Patent Cooperation Treaty (PCT) have developed a process whereby an inventor may initially file a single PCT application with the World Intellectual Property Organization (WIPO).  This will postpone the incursion of fees for filing an individual countries up to thirty months after the earliest priority date.  Before the thirty months have expired, however, the applicant must identify specific countries in which to seek patent protection, and must convert the international application to a series of national applications in those selected countries.


With the advent of the European Union, an applicant no longer needs to file in every member state of Europe at the thirty month point.  They simply file a single European patent application, and need only one European attorney to prosecute that application before the European Union.  Once allowance is secured in the European Union, the applicant must still convert the issued patent to national applications in individual member states.  This will require a fee for each member state, and, if the member state is not an English speaking country, translation fees will be required.  But an inventor no longer needs to endure costly attorney fees in every European nation to secure patent rights in that nation.