FREQUENTLY ASKED QUESTIONS
Can I speak freely to a patent attorney? Will a patent attorney steal my idea?
Generally, inventors should be careful in their discussions with third-parties. Patent attorneys are bound by Rules of Professional Conduct and owe several duties to prospective clients, current clients and past clients. Ethical consideration aside, a patent attorney who commits any sort of misconduct would be out of business in a hurry and lose their livelihood.
Moreover, most attorneys will emphatically refuse to sign non-disclosure agreements (NDAs) with prospective clients because the request shows not only a lack of understanding of the attorney-client privilege, but signals that the prospective client will be unreasonable in their demands. As a general rule, patent attorneys will keep your information in the strict of confidence even if you do not engage the attorney.
What is a patent search and who should conduct it?
Before investing resources into a project, inventors often want to understand whether their invention will be patentable. A typical patent search will include a review of published patent applications, granted patents and other non-patent literature (NPLs).
The USPTO has databases that are readily accessible to the public so that anyone can perform a search. Understand, however, that search results are only as good as the search parameters. Using only a few keywords without considering synonyms, variations and classifications will yield poor results that may not be indicative of the patent landscape. Thus, we often say that a patent search is both an art and a science.
There are two things to keep in mind when conducting a patent search. First, patent examination does not turn on absolute novelty only, but also on obviousness. Thus, features may be found in various references and combined in an Examiner’s rejection. Second, you and your attorney have a duty to disclose to the Patent Office all information known to be material to patentability. If you conduct your own search, take note of such information and diligently relay it to your attorney so that it can disclosed to the Patent Office. Failure to do may result in a granted patent being held unenforceable.
What can be patented?
Any process, machine, article of manufacture, composition of matter, or an improvement on any of the above may be patented. Laws of nature, physical phenomena, and abstract ideas cannot be patented.
Do I need to make a working prototype?
Making a working prototype of your invention may help you further develop your device and refine certain features, but it is not necessary for filing a patent application. In some cases, it is impracticable or uneconomical to make a working prototype. Where working prototypes are not available, inventors are urged to at least provide informal drawings to help the patent attorney better understand the invention. We receive invention disclosures that include CAD models or hand-drawn sketches. The key is to relay the technical information in as much detail as possible.
Should I file a provisional patent application or a nonprovisional patent application?
This is a question of strategy and will depend on your goals. Generally, provisional patent applications may provide a number of benefits. There are reasons to forgo the provisional application process, however. Speak with a patent attorney to obtain the best strategy for your case.
How much will it cost to prepare a provisional patent application?
The cost of drafting a provisional patent application will depend on the technology and the complexity of your invention. On average, inventors pay between $5,000 for the simplest of inventions to $12,000+ for more complex inventions. In certain situations, it may be possible to file an application for cheaper, but it will come with certain risks.
Even the simplest application requires thoughtful consideration of how to protect it. One of the most common complaints that inventors have is that they were able to obtain a granted patent, but it was narrowly-drafted and useless in protecting their product.
Can I patent it myself?
We do not advise this. In this article, I discussed the temptation to proceed without counsel (i.e., pro se). Recent studies show that pro se applicants are much less successful at obtaining meaningful patent protection than applicants represented by a patent attorney.
Are there things I can do to reduce the costs of patent preparation and prosecution?
Yes. Providing us with a complete and well-thought out invention disclosure will generally result in cost-savings because it will take the attorney less time to understand the invention. Being available to answer questions, and prompt communication also aid in efficiency, which typically results in lower costs.
Can I add a friend as a co-inventor?
Inventorship is a complex legal question, and all efforts must be taken to ensure that it is accurate. Knowingly adding an individual as an inventor who did not actually invent, or knowingly excluding a proper inventor from a patent application will jeopardize it. If you are unsure whether a partner or employee’s contribution amounted to inventing, discuss the fact pattern with your attorney.
Can I make the product now and patent it later when I have the funds?
Patent laws can be quite unforgiving. In the United States, after the first sale, inventors are given 12 months to file either a provisional patent application or a nonprovisional patent application. That being said, the best course of action is to at least file a provisional application before discussing the invention with third-parties or offering the invention for sale.
What does a patent actually protect?
Patents provide the right to exclude others from making, using, offering for sale, or selling the invention in the United States or importing the invention into the United States. If you are looking to protect an invention in other jurisdictions, for example, in Europe or Japan, speak to your attorney and discuss whether it is worthwhile to do so.
Where can I learn more?
If you have any additional questions, please give us a call at (732) 795-0505. We would be happy to assist you, or point you in the right direction. We provide free consultations for patent matters.