how to tell if a patent is utility or design

How to Tell if a Patent is Utility or Design Patent?

How to Tell if a Patent is Utility or Design Patent?

Whether you're performing a patent search or you're just curious about how to tell the difference between a utility patent and a design patent, you've come to the right place. You can tell if a patent is a utility or design patent by looking at the patent number. If the patent number starts with a "D," (ex. D91823) then it is a design patent, if the patent number is only comprised of numbers (ex. 8,029,027), then it is a utility patent. The USPTO (United States Patent and Trademark Office) typically publishes granted patents and pending nonprovisional patent applications that have been pending for more than 18 months.

You can also tell the difference between a utility patent and a design patent by looking at the top left portion of a granted patent. If you're looking at a utility patent, you will only see the words "United States Patent." If you're looking at a design patent, it will state "United States Design Patent." With some older patents, you might not see this designation, but for newer ones, you will see it.

Hopefully, at this point, you will be able to tell the difference between a design patent and a utility patent. If you can't, here are some examples of a utility patent vs. a design patent. We have circled the differences between the two.

Example of a Utility Patent vs Design Patent

Utility Patent Example

Here is an example of a utility patent, as you can see the patent number is only made of numbers, so the patent is a design patent.

Design Patent Example

Here is an example of a design patent. As you can see, the patent number starts with the letter "D" indicating that it's a design patent.

Utility Patent vs. Design Patent

A utility patent protects how an invention works, as well as how an invention can be used. Utility patents last for 20 years from the date an applicant files his patent application with the patent office.

Utility patents, on the other hand, protect how an invention looks, as well as the aesthetics or appearance of an object. Design patents last for 15 years from the date the patent office grants a design patent application.

Some inventions qualify for both a utility patent and a design patent. However, if an inventor wants to protect his invention with both a utility patent and a design patent, he must file two separate patent applications with the patent office: a utility patent to protect the functional aspects of the invention and a design patent to protect the appearance of the invention.

Design patents are often granted without receiving a rejection from the patent office, utility patents are often initially rejected and an applicant has to reply to the rejection to patent his invention.

It typically takes the patent office 24 months to either approve or deny a utility patent application unless an applicant applies for expedited review. For design patents, it typically takes the patent office 14 months to either approve or deny a design patent application. Most design patents are approved, whereas only 52% of utility patent applications are approved.

That said, design patents cost way less than utility patents. For example, patenting a simple invention could cost anywhere from $7,500 to $15,000+, whereas patenting a design typically costs $3,500. The difference in cost is because utility patent applications require a lot of an attorney's time to prepare, leading to a higher cost.

Are Utility Patents Worth It?

Utility patents are definitely worth it if you have an invention that's worth protecting. If you have an invention that you can profit from selling or licensing, you should definitely consider protecting with a utility patent. Just as a reminder, utility patents protect how an invention is made and how it works.

Obtaining a utility patent over your invention will allow you to control who can use, making, sell, and import your invention to the U.S. This allows your to curb competitors who may seek to copy your product and sell their own version of it. Since utility patents protect how your product works, if a competitor makes a product that looks different but functions the same, you will be able to stop them from copying it and selling it.

Note: It is not the patent office's job to police your patent. It is the patent holder's job to look for infringers and asking them to stop using, making, or selling the patented invention for a limited period of time (20 years for utility patents). If you ask an infringer to stop his infringing use and they don't stop, you can bring a lawsuit against them in federal court to stop them from using or selling your invention.

Are Design Patents Worth It?

Design patents are worth it if your invention has a unique look that makes your product sell. Said differently, if the look of your product is what attracts customers to it, you should definitely prepare and file a design patent application to protect your design.

Patenting your design will allow you to control who can make, use, and sell a product that has a similar design to the one that you've patented. So, if you have competitors who you think may copy the design of your product, you should consider protecting your design with a design patent.

This way if someone uses your design on their product, you can ask them to stop copying your design. If they don't stop using it, you can sue them in federal court for design patent infringement. If your suite is successful, the court will likely issue a court order, demanding that the infringer stop using your design. You may also be able to obtain monetary damages for any losses that you sustained as a result of the infringing use of your design.

Obtaining Both a Design and Utility Patents

Some inventions may qualify for both a design patent and a utility patent. However, you can't just file one application to obtain both types of protection. To obtain both forms of protection, you will have to file a utility patent application, as well as a design patent application. You can link the two applications by referencing the application to each other.

Having both utility protection and design protection makes your product much more valuable since it qualified for both types of protection. This makes licensing the invention and selling it much easier since the person purchasing or licensing the product will know the scope of the invention he's purchasing or licensing.

Summary of the Benefits of a Utility Patent

  • Protects how your product or invention works
  • Ability to prevent others from using, making, and selling your invention for 20 years from your filing date
  • Allows the inventor to exclusively make and sell the patented product or invention

Summary of the Benefits of a Design Patent

  • Protects the appearance of your invention
  • Protects the unique design of your invention
  • Ability to prevents others from copying and selling your design
  • Ability to profit from the unique appearance of your product

Types of Patents

The USPTO offers three main types of patents: utility patents, design patents, and plant patents. As we explained earlier, utility patents protect how an invention works, design patents protect how an invention looks, and plant patents protect certain species of plants.

Utility patents are the most applied for patent, making up more than 93% of all applied for patents. Design patents, on the other hand, make up 6% of applied for patents, with plant patents making up less than 1% of applied for patents.

To obtain a utility patent an inventor must show that his invention is novel (new), nonobvious, and useful. Once an inventor has such an invention, he can patent it by preparing a utility patent application and filing it with the patent office.

Obtaining a design patent is somewhat similar, an inventor must have a new and unique design and the design has to be nonobvious. To patent a design, the design cannot be functional, it has to be purely ornamental.

The patent office also offers plant patents for those who invent or discover new species of plants. To obtain a plant patent, the inventor must be able to asexually reproduce the plant. Approximately 1200 plant patent applications are filed each year. You can tell a patent is a plant patent by looking at the patent number, for plant patents, the patent number is usually preceded by the letters "PP," (ex. PP 45,174).

How to Tell if a Patent is a Design or Utility Patent?

By now, you should be able to distinguish the difference between a utility patent and a design patent. Utility patents are titled "United States Patent" while design patents are titled "Design Patent." If you can't tell the difference yet, you can do so by looking at the patent number. Design patent numbers usually start with a "D" (ex. D 45,683), while utility patents numbers are only numerical (ex. 8,403,034). We also included a design patent and a utility patent to illustrate how to tell if a patent is a utility or design patent. That said, if you have any general questions or comments, please feel free to leave them in the comments section below.


Provisional Patent

Provisional Patent

Provisional Patent (Provisional Patent Application)

A provisional patent, correctly known as a provisional patent application is a type of patent application filed at the USPTO (United States Patent and Trademark Office). Provisional patent applications are filed by inventors with the patent office to obtain an early filing date for their invention. Obtaining an early priority date for an invention is very important in the United States because it uses a first to file system instead of a first to invent system.

In a first to file system, the inventor who first files a patent application (provisional or nonprovisional) gets the patent if the invention meets the patenting requirements. Anyone who submits a patent application to patent the same invention won't be able to patent it because of the first inventor filing his patent application.

For example, if you invented a new type of engine that provides better fuel economy and someone else invents the same engine 2 years later and file a patent application with the USPTO (United States Patent and Trademark Office) before you do. His invention will get a patent even though you invented the engine first. So, what's the takeaway?

If you invent something, file a patent application with the patent office to obtain an early priority date. This will stop others from patenting your invention. Going back to our example, had you filed a patent application first, you would have gotten the patent, but because you didn't file, the other person gets the patent and you won't be able to patent your invention. This is so because the patented invention would be considered as prior art, prohibiting you from patenting the same invention.

Why Get a Provisional Patent?

Inventors often choose to file a provisional patent application instead of filing a regular, nonprovisional utility patent application because provisional applications are easier and less expensive to prepare, they also cost less to file.

While a regular utility patent application requires formal claims and an information disclosure statement (IDS), a provisional application only requires a description of the invention and some basic information, such as the inventor's name and address.

While a provisional patent does not require drawings, inventors often choose to include them to describe the invention in more detail. You've probably heard the saying that a picture is worth a thousand words, so including drawings of your invention makes your provisional application stronger because it clearly describes the invention that you want to patent.

Having a strong provisional application could prove to be really important in a situation where a party files a patent application for the same invention you filed for. We well explain why in a moment.

As you may or may not be aware, provisional patent applications do not turn into patents unless an inventor converts a provisional application into a nonprovisional application or files a nonprovisional patent application that claims the benefit of an earlier-filed provisional application.

If an inventor has a weak provisional patent application that does not adequately describe his invention, he will not be able to claim the earlier filing date of the provisional patent application. This is so because the patent examiner looks at the description of the provisional patent application and compares it to the description in a later-filed nonprovisional patent application.

The descriptions have to match for an inventor to be able to claim the priority date of an earlier-filed provisional application. If the descriptions don't match, an inventor will not be able to claim the early filing date of an earlier-filed provisional application.

So, if someone else files a patent application for the same invention after you've filed your provisional application but before you filed your regular patent application, the other person will get the patent and you won't because you can't claim the earlier filing date of the provisional patent application.

How Much Does it Cost to File a Provisional Patent?

The USPTO charges applicants the following fees:

  • Micro entities: $70
  • Small entities: $140
  • Large entities: $280

If you choose to seek the assistance of an attorney to prepare your provisional patent application, you may need to budget in an additional $1,500 to $3,000 for such assistance. That said, it's important to note that attorney fees will vary depending on the complexity of your invention and your geographical location. Attorneys in different areas charge different amounts of money to assist inventors with the preparation of their patent applications.

Fortunately, provisional patents don't require the payment of patent search fees and examinations fees, making provisional patents much less expensive to obtain.

What is the Difference Between a Provisional Patent and a Nonprovisional Patent?

The main difference between a provisional patent application and a nonprovisional utility patent application is that a provisional patent application never becomes a granted patent, whereas a nonprovisional patent application can become a granted patent if the patent office approves the application.

The second difference between the two is that a provisional patent application requires significantly less information than a nonprovisional application. For example, provisional applications do not require formal patent claims. That said, a provisional application should include a thorough description of the invention to be patented.

The third difference is that a provisional application does not require an information disclosure statement (IDS). An information disclosure statement contains information about inventions that are similar or relate to the invention that the inventor is trying to patent.

The fourth difference is that a provisional application does not require an oath or declaration. A patent oath or declaration form requires the applicant to declare that he is the first and original inventor of the invention to be patented. It also requires information, such as the name of the inventor, his residence, and mailing address. Application for provisional patent applicants are not required to complete and submit the declaration form.

What Are the Benefits of a Provisional Patent?

  1. The main benefit of filing a provisional patent application is that it reserves an early filing date. Reserving an early filing date is very important in the United States because of the first to file rule that awards inventors who first file a patent application with the patent office.
  2. The second benefit of filing a provisional application is that it costs inventors significantly less to file a provisional application than filing a regular utility patent application. That said, it's important to note that applicants should spend the time to thoroughly describe an invention in a provisional patent application to avoid problems patenting their invention down the road.
  3. The third benefit of a provisional patent application is that an inventor will be able to market his invention as patent-pending as soon as he files a provisional application with the patent office. Using the designation "patent pending" is a good marketing tool for an inventor's product. Also, using the designation tells infringers to stay away from your invention because you've taken legal steps to protect it.
  4. The fourth benefit of a provisional patent application is that it offers inventors an extra year of patent protection. How does it do this? If an inventor files a nonprovisional patent application within 12 months of filing a provisional application, the patent term starts at the filing of the nonprovisional application and the protection starts at the time of filing the provisional application, giving an inventor an extra year of protection.

Does a Provisional Patent Protect You?

As we mentioned earlier, a provisional patent application, commonly known as a provisional patent, is not a granted patent, as such it does not provide legal protection. That is, a filer of a provisional patent application does not give the right to an inventor to stop others from using, making, and selling the patented invention.

Said differently, an inventor who has filed a provisional patent application, cannot sue anyone who copies, makes, sells, or uses his patent-pending invention.

If the patent office approves or grants an inventor's patent application, only then can the inventor enforce his rights under patent law to restrict others from using, making, selling, and importing the patented invention to the United States.

So, if someone copies or sells an inventor's invention after the patent office has granted the inventor a patent, the inventor will be able to sue that party for patent infringement in federal court. If the patent holder is successful, he may obtain a court order ordering the infringer to stop his infringing activities.

Can you Sell a Provisional Patent?

Yes, you can sell a provisional patent. A person who sells a provisional patent can transfer ownership of the provisional patent application by executing an assignment agreement that transfers the patent from the transferor to the transferee. The transferor is the person who's giving up his rights under the patent and the transferee is the party receiving the provisional patent rights.

Once the parties execute an assignment agreement, the agreement must be recorded with the patent office for the record to show the change of ownership. An assignment does not go into effect until it is recorded at the USPTO. Once an assignment is performed, it cannot be undone.

Holders of provisional patent applications often choose to license them to third parties. Licensing a provisional patent allows the applicant to retain ownership over the patented invention while allowing third parties to use the patent-pending invention.

How Long Does a Provisional Patent Last For?

A provisional patent lasts for 12 months from the filing date of a provisional patent application. To obtain a patent, an inventor has 12 months to file a nonprovisional patent application or convert a provisional patent application into a nonprovisional patent application.

The patent office rarely grants extensions for provisional patents, so make sure to convert your provisional application or file a nonprovisional patent application within the 12 month grace period.

If an inventor does not convert his application or file a regular application within the 12 month grace period, the provisional application will be deemed to have been abandoned and the applicant loses his early filing date.

That said, an inventor can still file a subsequent provisional or nonprovisional patent application for the same invention, but he will not be able to benefit from the early filing date of the initial provisional patent application.

Can You License a Provisional Patent?

Yes, a provisional patent application can be licensed to a third party. A holder of a provisional patent application can license his patent-pending invention to a third party to use. The scope of use depends on the agreement that the parties execute.

Applicants often license the use of their patent-pending invention to others in exchange for an agreed-upon fee, commonly known as a licensing fee or royalty. That said, determining how much a license for a provisional application is difficult to determine due to the fact that provisional applications are not published. This creates uncertainty as to what the invention is, as well as the scope of its protection.

What Happens if a Provisional Patent Expires?

If a provisional patent expires, the provisional patent application is deemed to have been abandoned and the applicant loses the early filing date established by the provisional application.

This becomes a problem in the situation where another party files a patent application for the same invention after you filed your provisional application. This is so because once your provisional patent expires, the party that filed its application after you filed your provisional patent application has priority over you because of the first to file rule in the United States.

So, if you try to file another provisional application after another party filed a patent application for the same invention, you won't be able to patent your invention because the person who filed after you now has priority over your invention. So, what should you take away? Don't let your provisional patent application expire and file your nonprovisional application before the expiration of the 12 month grace period.

Do You Need a Lawyer to File a Provisional Patent?

Although applicants don't need a lawyer to file a provisional patent application, the USPTO recommends that applicants hire an attorney to assist them with the preparation of a patent application. This is so because patent law is quite complex and making even seemingly minor mistakes could cause big problems down the road.

So, if you want to obtain a provisional patent consider hiring an attorney to assist you with the application. That said, if you cannot afford to hire an attorney, you should consider the option of hiring a patent agent. Patent agents like patent attorneys, are licensed by the patent office and are allowed to represent inventors in preparing, filing, and prosecuting patent applications. Since patent agents are not attorneys, they often charge less for their services.

How do You Get a Provisional Patent?

An inventor can get a provisional patent by heading over to the USPTO website, preparing a provisional application, and submitting the application online. We have an awesome and complete guide here. To get a provisional patent, an applicant will have to provide basic information, such as the name of the inventor, his residence, mailing address, description of the invention, as well as a specification sheet, and invention drawings if they're necessary to assist the patent examiner in understanding the invention you want to protect.

What Information Should You Include In a Provisional Patent Application?

A provisional patent application should include the following information:

  • Title of the invention
  • Name(s) of inventor(s)
  • Residence address for inventor(s)
  • Correspondence address
  • A written description of the invention
  • Drawings of your invention
  • Applicable filing fee

Should You Get a Provisional Patent?

You should get a provisional patent if you want to quickly obtain an early filing date for your invention. For example, if you're in a competitive field and you have an invention that you haven't quite finished working on, you can file a provisional patent application to reserve an early filing date while you continue working on your invention.

If you want to share your invention with the public, it's a good idea to file a provisional application to protect your invention. Remember that the U.S is a first to file system, so if you disclose your invention before filing a patent application, a third party may steal your invention and file a patent application before you do. So, file a provisional patent application to protect your invention before you disclose it to the public.

If you file a provisional application, just remember that to obtain a patent, you will have to file a nonprovisional patent application within 12 months of filing your provisional application. If you don't file a regular, nonprovisional patent application within the 12 month grace period, your provisional application will be abandoned and you'll lose your early filing date.

When Should You File a Provisional Patent Application?

You should file a provisional patent application once you can explain how to make your invention and how to use it. Some inventors often wait to file their provisional patent application so that they can delay the clock starting on the provisional patent. However, if you want to share your invention with the public or offer it for sale, it's recommended that you file a patent application to obtain a filing date for your invention.

That said, we have to remind you that if you publicly disclosed your invention, offered it for sale, or sold it, you have 12 months to file your provisional application with the patent office. If you do not file your provisional patent application within the 12 month grace period, you will not be able to patent your invention because it will be considered as prior art that prohibits you from patenting your invention.

Do Provisional Patent Applications Require Drawings?

Drawings are not required for provisional patent applications, however, including drawings will help explain your invention to the patent examiner. Drawings can fill in any gaps that you left while describing your invention.

So, while not necessary, you should always try to include them because they will make your provisional patent application stronger. Having a strong provisional patent makes it easier for a later-filed nonprovisional patent application to relate back to and benefit from the earlier filing date of the provisional application.

If you want to include drawings but don't know how to create them, don't worry, you're not alone. Just do a quick google search for patent drawings services and you'll find a ton of options to choose from. These services often cost anywhere between $50 to $100 per drawings, so if you want to include 7 drawings, expect to pay anywhere from $350 to $700 for professionally created drawings.

How Long Does it Take to Get a Provisional Patent?

As we stated previously, there is no such thing as a provisional patent. People often refer to a provisional patent application as a provisional patent. So, if you want to "get a provisional patent" all you need to is prepare and file a provisional patent application with the patent office. Once you submit your provisional patent application, you can immediately use the term "patent pending" on your products. So, basically, you get it as soon as you file the provisional application. Just remember, provisional applications do not turn into patents.

How To Turn a Provisional Patent Into a Nonprovisional Patent Application?

An applicant can turn a provisional patent into a nonprovisional patent application in two ways. The first method we will discuss is rarely used but it's still an option and this is to convert a provisional patent application into a nonprovisional application. This is done by filing a petition to convert the provisional application. This method is rarely used because applicants lose a year of patent protection since the patent term begins at the time of filing the provisional patent application.

The second and most used method is to file a nonprovisional, regular utility patent application that claims the earlier filing date of the provisional patent application. If an applicant chooses this route, the patent term begins at the time of filing the nonprovisional patent application, so you effectively have patent protection that lasts for 21 years, since protection starts at the time of filing the provisional application.

To be able to claim the earlier filing date of the provisional application, the invention described in the nonprovisional application must match the description of the invention the inventor provided in the provisional application. This is why we stress the fact that an inventor should take the time to thoroughly describe the invention in the provisional application.

If the patent examiner determines that the invention descriptions don't match, the inventor will not be able to claim the earlier filing date of the provisional application.

Frequently Asked Questions

1) Can you file a provisional patent on your own?

Yes, an inventor is allowed to prepare and file a provisional patent application with the USPTO on his own, he does not need to be represented by an attorney. That said, the patent office recommends that inventors hire a patent attorney to assist them with the preparation and filing of a provisional patent application.

2) Does a provisional patent application become a patent?

A provisional patent application can never become a patent. For an inventor to patent his invention, he must either convert his provisional application into a nonprovisional application or file a nonprovisional application that relates back to an earlier-filed provisional application.

3) Can you extend the life of your provisional application?

Generally, an applicant is not permitted to extend the life of his provisional patent. The patent office only extends them in very rare circumstances, so you shouldn't rely on obtaining an extension. If you file a provisional application, make sure that you file a nonprovisional application that claims the benefits of an earlier provisional application within the 12 month grace period.

4) Should you spend time preparing a provisional patent application?

Absolutely yes! You should describe your invention as thoroughly as possible, especially if you're going to publicly disclose it or offer it for sale. This is so because if someone else files a patent application after you filed your provisional application, your provisional application must be strong so that you can benefit from the earlier filing date. If your provisional application is poorly drafted, it's useless when the time comes to file a regular, nonprovisional patent application.

5) Why do people use provisional patent applications?

Inventors are often in a rush to obtain an early filing date because of the first to file rule in the U.S. So, once they can describe how to make the invention and how to use it, they choose to file a provisional application to reserve an early filing date. This prevents others from patenting the invention before an applicant gets to do so.

6) Is it expensive to get a provisional patent?

Filing a provisional patent application with the patent office is a fairly inexpensive process, you simply pay a filing fee that does not exceed $280, you submit a description of the invention, as well as basic information, such as the name of the inventor, the address of his residence, and a correspondence address and you're done. Filing a provisional patent application is much easier and less expensive than submitting a nonprovisional patent application.


How to get a provisional patent?

How to Get a Provisional Patent?

How to Get a Provisional Patent?

If you're an inventor and you want to protect your invention or start using the words "patent pending" you can do so by submitting a provisional patent application to the USPTO. We are including a step-by-step guide to get a provisional patent, so scroll down to find it (we've included pictures). It will guide you through the online application process. Please note we are not your attorney and we are providing this guide for informational purposes only.

To get a provisional patent, an inventor needs to prepare and file a provisional patent application with the USPTO (United States Patent and Trademark Office). This can be done, by heading over to the USPTO website and filling out the required information for a provisional application.

What makes inventors want to get a provisional patent? The main thing that attracts inventors to provisional patents is that they're relatively easy to prepare when compared to regular, nonprovisional patent applications and they're also less expensive. That said, it's important to note that provisional applications do not turn into patents.

To obtain a patent, an inventor must either convert a provisional application into a regular, nonprovisional application or file a nonprovisional patent application that claims the early filing date of a provisional patent application. This has to be done for an inventor to obtain a patent, if an inventor does not covert it for file a nonprovisional application, the provisional application will be abandoned.

Step by Step How to Get a Provisional Patent

To get a provisional patent, you have to follow these steps:

  • Head over to the USPTO website: USPTO.gov

    Once you're at the USPTO website, click on Patents Tab and then navigate to and click filing online.

How to get a provisional patent?
  • Once you've clicked on file online, you should get another page. On this page, click on Open EFS Unregistered.
  • Once you've clicked on file online, you should enter the required information, such as your name and email address. Also, select utility patent and provisional patent as shown in the photo below.
  • Now, you have to enter a title for your invention, as well as the name of the inventor, and the address where you want to receive mail about your invention.
  • Now, you have to attach some documents by clicking on the choose file button, you have to attach the following files:
    • Transmittal of a new application: This PDF file should be your provisional patent application.
    • Specification: The specification must include a description of the invention you're claiming you invented.
    • Drawings: Drawings of the invention you want to patent.
  • Now, you have to click the validate and review button, then you will be greeted by the following page:
  • Now, you will have to do the following:
    • Select provisional patent as indicated by the arrow
    • Select no for patent application originally filed in paper
    • Enter the number of pages
    • Click Calculate as indicated by the arrow
    • Continue to pay the required fees
    • Click continue
    • Pay the required fees

How Long Does a Provisional Patent Last?

A provisional patent application lasts for 12 months. If an inventor does not convert a provisional patent application into a nonprovisional patent application within the 12 month grace period or does not file a nonprovisional patent application that claims the benefit of an earlier-filed provisional application, the provisional patent expires or is deemed as abandoned by the patent office. If this happens, you lose your priority date, so if some else files a patent application for the same invention, his invention will have priority over yours. This is definitely not a situation that you want to be in.

How Much Does it Cost to Get a Provisional Patent?

The cost to get a provisional patent depends on whether an applicant is preparing the provisional patent application on his own or is having an attorney prepare the application. If you're having an attorney prepare and file a provisional application for you, expect to pay approximately $1500 to $3,000 in attorney fees.

Filing a provisional patent application is relatively cheap, here is what you should expect to pay:

  • Micro Entity: $70
  • Small Entity: $140
  • Large Entity: $280

The amount you need to pay to file a provisional patent application depends on the size of your business. If you're an individual inventor, expect to pay the micro-entity filing fee of $70.

What are the Benefits of Filing a Provisional Patent Application?

The main benefit of filing a provisional patent application is that it allows an inventor to reserve an early filing date. This is especially important in the United States, which is a first to file and not a first to invent country. First to file means that an inventor who first files a patent application gets to patent the invention and any subsequent inventors who file a patent application will not be able to patent their invention.

For example, if you invent a new type of paper clip and your neighbor invents the same paper clip and goes to the patent office and files a patent application before you do, your neighbor will obtain a patent and you won't be able to patent it. This because of the first to file rule in the U.S.

So, if you have an invention, don't wait for too long to patent it, especially if you're invention is in a competitive field. Filing a provisional application can secure an early filing date for your invention.

The second benefit of filing a provisional application is that the moment you file a provisional application, you can begin marketing your invention as patent pending. Investors like it when an invention or product is patent pending because it shows them that the IP is in the process of being protected, making it worth their time to invest in.

What's the Difference Between a Provisional Patent Application and a Nonprovisional Patent Application?

A provisional patent application acts as a placeholder in time for a later-filed nonprovisional patent application. A provisional application does not turn into a granted patent. A nonprovisional is known as a regular utility patent application, this application is a complete patent application that does turn into a granted patent.

So, why do people choose to file a provisional application instead of a regular, nonprovisional patent application because it's quick to file and costs less to prepare. That said, inventors often overlook the importance of a provisional patent application.

They believe because it's easy to file that they shouldn't give it as much attention as a full patent application. We are here to let you know that you should spend a good amount of time to thoroughly describe your invention because if you want to file a nonprovisional patent application that claims the benefit of an earlier-filed provisional application, the description in the utility application must match the description of the provisional application.

If the description doesn't match you won't be able to claim the early filing date. This usually means trouble if someone else has filed a patent application for the same invention after you filed your provisional application.

Do You Need a Lawyer to File a Provisional Patent Application?

Althouttorngh the USPTO does not require you to have an attorney to file a provisional patent application, they do recommend that you hire an attorney to assist you with the preparation and filing a provisional application.

The patent office makes this recommendation because patent law is complex and making seemingly minor mistakes on the application could cause costly mistakes down the road. So, if you have an invention that's important, it's worth your time and money to obtain the assistance of an attorney.

If you don't have the money to hire an attorney, you can hire a patent agent to assist you with your application. Patent agents are registered with the patent office and have passed the same patent exam that attorneys have passed to represent clients before the USPTO.

So, look for an experienced patent agent instead and have them assist you. They are often cheaper than attorneys because they don't have the general legal education that attorneys do, but they're qualified to assist inventors with preparing, filing, and prosecuting their patent application.

Obtaining a Provisional Patent

We described how to obtain a provisional patent in much detail. You must first start by preparing and filing a provisional patent application with the patent office. Doing so gives you instant patent pending status, allowing you to market your invention as patent pending. We also included step-by-step instructions on how to fill out and prepare a provisional patent application form online. That said, if you have any general questions or comments, please feel free to leave them in the comments section below.


Patent infringement statute of limitation in the us

Patent Infringement Statute of Limitations (U.S)

If you've spent a ton of money and time patenting your invention, you might be wondering how much time you have to bring a lawsuit against a party that infringed upon your patent. We will discuss everything you need to know about the US patent infringement statute of limitations.

Patents allow inventors to stop others from using, making and selling the patent invention for a limited period of time. Utility patents grants this right to inventors for 20 years and design patents grant this right to inventors for 15 years.

That said, if a party infringes upon an inventor's patent by using, making, or selling the patented invention without the patent holders express permission, the patent holder can bring a lawsuit against that party. However, the patent holder must do so within a certain window, otherwise, he will be barred to do so by the patent statute of limitations. We will discuss this in more detail below.

What is the Patent Infringement Statute of Limitations?

The patent infringement statute of limitations limits the amount of time that a patent holder has to bring a lawsuit against a party that infringes upon his patent. In the United States, patent holders have six years to bring a lawsuit against a party for patent infringement. That is, a patent holder has 6 years to file a complaint against someone who has infringed upon his patent.

Once 6 years pass since the patent infringement pass, a patent holder will no longer be able to bring a lawsuit against an infringer because he will be barred by the patent statute of limitations.

So, if you suspect that someone is using your intellectual property without your permission, you should immediately contact a patent attorney to discuss your legal options. Don't sit around and do nothing because if you don't file your lawsuit within the time limit we discussed, your lawsuit will likely be dismissed for violating the statute of limitations.

That said, the USPTO (United States Patent and Trademark Office) will not police your patent for you. It is the patent holder's job to find those who are infringing upon his patent and bring a lawsuit against them in federal court.

We know that sometimes discovering infringement is difficult, especially in situations where the infringer does a good job of hiding the infringement. Unfortunately, if you discover the infringement more than six years after it occurs, you are unlikely going to recover damages in your lawsuit. Therefore, it's important that you proactively look for infringement and promptly enforce your rights.

If you file a lawsuit more than 6 years after they infringed upon your patent, they will most likely respond by asserting the statute of limitations as a defense against your claim. This relieves them from having to fight your lawsuit on the grounds that your patent is not valid.

What is a Patent Infringement Lawsuit?

A patent infringement lawsuit is a lawsuit that is initiated by a patent holder against a party that infringes upon or uses his patent without the patent holder's express permission. As we mentioned previously, a party cannot use, make, sell, and important a patented invention to the United States without the patent holder's express permission.

If a party makes an authorized use of a patent holder's permission, the patent holder has 6 years to bring a lawsuit against the infringer. Of course, if a patent holder brings a lawsuit against an infringer, infringers typically reply by arguing that (1) they are not infringing upon the patent or (2) the patent is not valid and therefore there is no infringement.

Why Do Patent Holders Sue For Patent Infringement

Patent holders sue for patent infringement for a variety of reasons. Among those reasons is to stop others from using and selling the patented product and the second reason is to recover damages incurred as a result of patent infringement.

If you suspect that someone is infringing upon your intellectual you can hire a patent attorney who will analyze your claim. If the attorney finds that a party is indeed infringing upon your intellectual proeprty (IP), he will often send a cease and desis letter and attempt to negotiate a stellement with the infringer.

If that does not work, your attorney may proceed to file a lawsuit against the infringer in federal court. If your lawsuit is indeed successful and the court could award you monetary damages you sustained as a result of the infringement, as well as injunctive relief in the form of a court order, ordering the infringer to cease the infringing activities.

Courts often award patent holders who succeed in their lawsuit monetary damages in the form of royalties and lost profits.

Royalties basically allow the patent holder to recover the fair market value of a license that the infringer would have had to purchase from the patent holder to use the patented invention. For example, if a party develops a new type of braking system and I use it in my car, the court looks at how much I would have had to pay to use the patented technology in my car and make me pay it to the patent holder.

That said, an inventor may recover lost profits. Said differently, the court may award a patent holder a sum of the profits that a patent holder lost as a result of the infringer's infringing conduct. To qualify for such damages, a patent holder must show that he actually lost money as a result of the infringing activity.

How to Sue For Patent Infringement?

If you want to sue a party for infringement, you can do so by contacting a patent attorney experienced in patent litigation. Your attorney may start off by negotiating with the infringer and if the infringer does not cooperate your attorney may advise you to file a lawsuit against the infringer.

If you and your attorney decide to bring a lawsuit against the infringer, your attorney will need your assistance in gathering information about your invention and the harm you suffered as a result of the infringer's activities.

Once your attorney has sufficient information, he will draft a patent infringement complaint against the infringer. Once he's finished drafting the complaint, he will file it with a federal court and serve it upon the infringer.

The defendant named in your complaint will have 21 days to respond or file an answer to your complaint. Defendants typically respond to patent infringement complaints by asserting that they are not infringing upon your patent or that your patent is not valid. So, you should be ready to prove that your patent is valid and that any claims by the defendant concerning the validity of your patent are incorrect.

Utility Patent Infringement

If a party infringes upon a patent holder's utility patent by using, making, sell, or importing the inventor's patented invention to the United States, the patent holder can sue the infringer for patent infringement. The patent holder may recover royalties or lost profits that resulted from the infringing activities of the defendant.

For an inventor to recover for an infringement of his patent, he will only need to show that the defendant infringed upon his patent, he is not required to show that the defendant copied his invention or even knew about the patent he copied or used. Patent infringement is a strict liability crime. If an infringer's invention functions or works the same way as yours, you will be able to recover damages for patent infringement.

Design Patent Infringement

If a party infringes upon a patent holder's design patent by using, making, selling, or importing a product that copies the patent holder's design, the patent holder will be able to sue the infringer for patent infringement in federal district court.

To determine design patent infringement, federal courts apply the ordinary observer test. Under this standard, the infringing product and the inventor's design are placed side to side for comparison. If an ordinary observer finds the designs to be the same or similar, the patent holder wins and will be able to recover damages for patent infringement.

Statute of Limitations For Patent Infringement

By now, you should know that if you own a patent, it's your responsibility to enforce your patent because the patent office won't enforce it for you. If you find someone infringing upon your patent, you must file a patent infringement lawsuit with a federal district court within 6 years of the patent infringement. If you wait longer than 6 years, the court will bar your lawsuit from going forward. That said, if you have any general questions or comments, please feel free to leave them in the comments section below.


Can you patent a hair product?

Can You Patent a Hair Product?

If you've just finished working on an awesome hair care product that promises more volume, less frizziness, and no more split ends or you've invented a new haircare tool, you might be wondering if you can patent it? The USPTO (United States Patent and Trademark Office) allows inventors of new products, machines, processes, and composition of matter to protect their invention with a patent.

A patent allows inventors to stop others from using, making, and selling the patented product without the patent holder's express permission for a limited period of time, usually 20 years in the case of utility patents. So, can you patent a hair product? We will answer this below.

Can You Patent a Hair Product?

Yes, you can patent a hair product if (1) it has a patentable subject matter, (2) is novel (new), nonobvious, and has a useful purpose. For your hair care product to qualify for patent protection, you must prepare and file a patent application that meets the requirements set forth by the patent office. We will discuss each of these elements in more detail below.

Having said that, two of the biggest challenges you will face patenting your hair product is satisfying the novelty element and nonobviousness requirement.

It's difficult in today's day and age to show that a product is new and nonobvious mainly because the hair care industry is so competitive and many of the ingredients have already been incorporated into some hair care product and many of the tools have been invented.

That said, if you have a new tool, such as a new type of hair straightener, you might have an easier time patenting it than you would with a new type of hair gel or shampoo.

Some inventors choose not to patent their invention because patenting an invention requires complete disclosure of how to make the invention. So, if you've developed a new type of shampoo, you will have to disclose the formula and how to make the formula to the patent office. Some people are not willing to do this to keep their formula secret.

Preparing and Filing a Patent Application

If you have an invention (hair product) that you know you can profit from, you should contact an attorney to assist you with the preparation and filing of your patent application.

Although the patent office allows inventors to prepare and file their own patent application, they do recommend that inventors seek the help of an attorney to patent their invention. This is so because patent law is quite complex and there are some requirements that need to be satisfied when preparing and filing a patent application.

Just remember, for your invention (hair product) to qualify for a patent, it must satisfy the following 4 requirements. We will discuss these requirements in more detail below.

  • Hair product must have patentable subject matter
  • It must be novel (meaning it must be new)
  • It must be nonobvious
  • It must serve some useful purpose

We will discuss each of these elements in more detail below.

Your Hair Product Must Have Patentable Subject Matter

To obtain a patent on a hair product, the hair product must have patentable subject matter, meaning the product must be something for which the patent office offers a patent.

For example, if you have a new type of hair straightener or a new type of shampoo, you may be able to patent them because they have qualifying subject matter. The hair straightener may qualify for a utility patent if it has a new type of functionality that has never been patented before. Also, a new shampoo may qualify for a patent because new and unique mixtures of ingredients are patentable subject matter. That said, you still have to satisfy the remaining requirements.

Hair Product Novelty

To be able to patent a hair care product, patent law requires the product, whether it's a formula or an invention to be novel. Said differently, the invention must be, meaning that no one has ever patented or publicly disclosed the product you're seeking to patent.

So, for a formula, such as a formula for a shampoo or hair gel, the formula has to be new. This does not mean that every ingredient has to be new, but that the combination of ingredients is new. That said, if you do have a new ingredient, this may help show that your formula is indeed new.

For a product, such as a straightener or new type of comb, you'll also have to show that the product is new. When determining whether an invention is new, an applicant should perform a patent search to determine whether someone has already patented or publicly disclosed the invention you're seeking to patent.

Hair Product Nonobviousness

The third requirement an inventor will have to satisfy to patent a hair product is that the hair product be nonobvious. That is, an inventor must show that the product was no obvious to a person who is skilled in the field of the product.

For example, if you're seeking to patent a new shampoo formula, you have to show that the shampoo formula was not something that an ordinary person, skilled in the shampoo industry, would have found to be obvious.

Adding more of an ingredient, such as more argan oil, which has already been added to hundreds of shampoos, will not make your shampoo nonobvious. The ingredients have to be unexpected. Although developing a new ingredient is not required to obtain a patent, adding a newly developed will make patenting your product much easier.

That said, a product such as a new curling iron may more easily qualify for a patent. But, you will still have to show that it is nonobvious at the time you file a patent application.

Hair Product Must Be Useful

The final element an applicant has to satisfy to patent a hair product is useful. That is, an applicant must show that the hair product is useful. Although the patent office rarely rejects patent applications on the grounds that an invention is not useful.

To show usefulness, an applicant must show that the hair product has some identifiable benefit. For example, if you have a new type of shampoo, you may have to show that it reduces frizziness or creates more volume.

If you have a hair straightener, the useful purpose would be that it helps straighten hair, which is something that people in society look for from a product. An applicant should explain how the product to be patented benefits the end-user and how the end-user can use the patented product.

Hire a Lawyer or Patent Agent

The only real way to know whether your invention is patentable is to contact an experienced patent attorney, sit down with them, and explain your invention to them. Most attorneys are experienced and will be able to offer you advice for your specific situation.

Patenting a product can be a complex process, so having an attorney that understands the process is a must for anyone seeking to patent an invention.

If you want to patent your invention but don't have the money to hire an attorney, you have the option of hiring a patent agent. Patent agents are qualified and registered with the patent office to assist inventors with patenting their invention.

Filing a Provisional Patent Application First

Some inventors opt to file a provisional patent application instead of a regular, nonprovisional patent application because provisional applications are easier to prepare and cost less. Filing a provisional application allows inventors to obtain an early filing date at the patent office and use the words "patent pending" on the product immediately after filing an application.

That said, provisional applications do not turn into patents, so eventually, an inventor must file a regular patent application within 12 months of filing a provisional application to obtain a patent. If an applicant does not file a regular patent application within 12 months of filing a provisional application, the provisional application is considered to have been abandoned.

Steps to Patent a Hair Product

  • Hire an attorney
  • Perform a patent search
  • Prepare a utility patent application
  • File your utility patent application with the patent office
  • Track the status of your application
  • Have your attorney respond to any communications from the patent office

Why Should You Patent a Hair Product?

Inventors of new hair products should patent them because patenting an invention allows inventors to control who uses, makes, and sells the hair product. As a patent holder, you will be able to stop others from making, using, and selling the patented product for a limited period of time. Utility patents last for 20 years from the date an inventor submits a utility patent application.

If another party copies, makes, or sells your patent hair product, as a patent holder, you will be able to ask them to stop their infringing use, if they do not stop doing so, you will be able to bring a lawsuit against them in federal court for patent infringement.

Note: It is not the USPTO's job to police your patent for you. So, if you find that someone is infringing upon your patent, it's your job as the patent holder to find infringers and bring a lawsuit against them.

Patenting a Hair Product

So, now we know that patenting a hair product is possible, so long as the hair product has a patentable subject matter, is new, is nonobvious, and serves some useful purpose. Every situation is different, so you should consult with your own attorney and ask them for their opinion on the patentability of your specific product. If you have any general questions or comments, please feel free to leave them in the comments section below.


how to become a patent attorney?

How to Become a Patent Attorney?

How to Become a Patent Attorney?

The earlier in life you figure out you want to become a patent attorney the better because that way you can focus on studying the subjects that the USPTO wants you to have a background in. To become a patent attorney, the USPTO requires applicants to have a degree or background in science or engineering, as well as a law degree from an accredited law school in the United States. The individual must then pass the patent bar exam. We will dive into more detail about the requirements below.

Steps to Become a Patent Attorney

  • Be a United States Citizen or Legally Reside in the United States
  • Complete a Bachelors Degree in one of the following fields:
    • Biology
    • Chemistry
    • Physics
    • Engineering
    • Computer Engineering
    • Electrical Engineering
    • Microbiology
    • Organic Chemistry
    • Pharmacology
  • Prepare for, enroll in, and pass the LSAT (Law School Admission Test)
  • Complete your law degree from an ABA accredited law school
  • Have Good Moral Standing
  • Pass the Bar Exam in your jurisdiction
  • Pass the Patent Bar Exam

Required Education and Background to Become a Patent Attorney

According to the USPTO, to become a patent attorney an individual is required to have a degree in science or engineering, however, there is an exception to this rule. If you don't have a bachelor's degree in a subject other than the subjects we covered, you may still be eligible to become a patent attorney. But you must show the patent office that you have the scientific and technical background that you would have had, had you completed a degree in the subjects we covered. That said, you may be able to become a patent attorney without having to obtain a science degree.

If you can satisfy any one of the following criteria, the patent office may allow you to practice patent law:

  • Complete 24 hours of physics courses required to obtain a physics degree, or
  • Complete 36 hours in a combination of courses:
    • 8 semester hours in chemistry
    • 8 semester hours of physics
    • 24 semester hours in biology, botany, microbiology, or molecular biology, or
  • Complete 30 hours of chemistry courses required to obtain a chemistry degree, or
  • Complete 40 semester hours in the following:
    • 8 semester hours of chemistry
    • 8 semester hours of physics, and
    • 32 semester hours of:
      • Chemistry
      • Physics
      • Biology
      • Microbiology
      • Molecular biology
      • Engineering

Transcripts

Once an applicant has obtained a degree or completed the necessary coursework, he will have to submit official transcripts to the USPTO. The USPTO only accepts official copies, they do not accept copies or unofficial transcripts. If an applicant chooses to do so, he can send the transcript himself or have the educations institution he attended submit the transcript.

Patent Bar Examination

The USPTO Regsitration examination, commonly known as the patent bar exam, is a 100 question multiple-choice exam. To pass the exam, an individual must answer 70% of the questions correctly or 63 out of the 90 questions correctly.

So, where did we get the 90 questions instead of 100 questions? We stated 90 questions because even though the exam will have 100 questions, 10 of those questions will be on the exam for beta testing and will not be counted towards an examinees score.

Good Moral Standing

If you thought that you only had to have good moral standing to practice law in your state, you're mistaken. The USPTO also requires those seeking to register with the USPTO to have good moral standing. That is, an individual must not have engaged in dishonest behavior or convicted of a crime that requires dishonesty, such as a conviction for fraud. That said, if you are an attorney and you've been disbarred or subject to disciplinary action, the USPTO may deny your application to register for not having good moral standing.

What Does a Patent Lawyer / Attorney Do?

Patent attorneys and lawyers spend much of their time drafting, preparing, and filing patent applications for their clients. Patent lawyers also spend a great deal of time communicating with the patent office and responding to inquiries from the patent office regarding his clients' pending patent applications. Also, patent attorneys often meet with clients to discuss the patentability of their inventions, as well as whether they should proceeding with patenting their invention or design.

How Much Money Does a Patent Attorney Make?

According to PayScale, the average starting pay for a patent attorney is $138,054. On the lower end of the pay scale, attorneys make $82,000 and at the high end of the pay scale, patent attorneys make up to $204,000 per year. Patent attorneys who are just starting out and are early in their careers should expect to make $122,375. According to Payscale, the lowest amount of money patent attorneys earn when starting off their career is $77,000 per year.

How Long Does it Take to Become a Patent Attorney?

The answer to this question depends on the amount of education that a person has completed. For example, the amount of time it takes an individual who has completed a science degree is different than someone who is just starting college. So, to make things as clear as possible, we will assume that an individual has not started college.

Here is a breakdown of the amount of time that it could take an individual to become a patent attorney:

  • Obtaining a Science or Engineering Degree (4.5 years)
  • Preparing for and passing the LSAT (6 months)
  • Complete Law School (3.5 years)
  • Preparing for and passing the patent bar exam (6 months)

If you don't waste any time, complete your coursework on time, and don't take any time off, you will be able to become a patent attorney within 9 years. The 9-year figure assumes that you haven't begun your college degree. If you already have a science or engineering degree, you should expect to become a patent attorney within 4.5 years.

Frequently Asked Questions

1) Can you become a patent lawyer without a science degree?

Yes, you can become a patent lawyer without having a science degree, but you are required to complete certain coursework in the science field. You can see a more complete list of the coursework you need earlier in this post. That said, to avoid having to complete extra coursework, it's advisable that you obtain a science or engineering degree, trust us, it will make becoming a patent lawyer much easier.

2) Do You Need a PHD to Become a Patent Attorney?

Fortunately, no you do not need a Ph.D. to become a patent attorney, however, you must have a science or engineering background and you must complete a bachelor's degree, as well as pass the patent registration exam to become a patent attorney. We covered the requirements to become a patent attorney in more detail above. That said, having a Ph.D. will definitely help you land a great job and give you a big advantage over candidates who do not have such an extensive background.

3) What Should You Major in to Become a Patent Lawyer?

To become a patent lawyer, you should obtain a major in the fields of science or engineering. Here is a list of majors that the patent office wants to see applicant have:

  • Biology
  • Chemistry
  • Physics
  • Engineering
  • Computer Engineering
  • Electrical Engineering
  • Microbiology
  • Organic Chemistry
  • Pharmacology

4) Can Patent Attorneys / Lawyers Work From Home?

If you have a busy schedule, you might be wondering whether you can work as a patent attorney from home. The short answer is: yes, patent attorneys can work from home. Patent attorneys spend much of their time drafting and preparing patent application, this is definitely something that a patent attorney can do from home. Also, patent attorneys can respond to communications from the patent office while they're at the comfort of their homes.

5) Should You Become a Patent Lawyer?

If you are a detail-oriented person and can sit down for hours at a time drafting patent applications and responding to communications from the patent office, becoming a patent attorney may be the right thing for you. Patent attorneys must have great oral and written communication skills because a large portion of their job depends on communicating ideas to others. Whether you're drafting a patent application or you're communicating with the patent office, you must be able to communicate clearly and effectively. So, if that's you, we encourage you to become a patent attorney.

6) Is it Hard to Become a Patent Attorney?

It is quite hard to become a patent attorney, but it's not impossible. You have to be someone who can sit down for long hours to study and prepare for your examinations. You have to be able to get through a large amount of educational material and summarize it in a way that helps you remember it for your law school exams.

Becoming a Patent Attorney

At this point, you should have a strong idea of the type of background that you should have to be able to represent clients before the patent office. Typically, patent attorneys have a strong background in the fields of science and engineering. Then, an individual must attend and complete law school. Once an individual completes law school, he must then pass the patent registration exam to represent clients before the patent office. If you don't have a science degree, you may still be able to become a patent lawyer by completing some science coursework. If you have any general questions or comments, please feel free to leave them in the comments section below.


What is a patent term extension?

What is a Patent Term Extension?

If you've applied for a patent, you should know that patents don't last forever. Utility patents, for example, have a patent term of 20 years from the date an applicant applies for a utility patent. The patent office currently has a backlog of 550,000 pending patent applications.

So, in some circumstances, it takes the patent office longer than usual to either grant or deny a patent application. If the patent office takes unusually long to grant a patent application, an applicant may be able to extend how long his patent lasts with a patent term extension. So, what exactly is a patent term extension? We will cover this below.

What is a Patent Term Extension?

According to the USPTO, a patent term extension allows patent applicants to restore (extend) the patent term that was lost due to delays caused by obtaining approval from a regulatory agency. The patent office typically grants patent term extensions for pharmaceutical patents that lose much of their patent term while an applicant is waiting for regulatory approval from a governmental agency.

Said differently, if it takes the patent office too long to grant a patent application, the patent office may extend the life of a patent if the delay was caused by the applicant having to obtain regulatory approval from a government agency, such as the Food and Drug Administration (FDA). Patent term extensions are granted to make up for the lost time that it took to obtain regulatory approval to obtain a patent.

Patent term extensions are usually granted for applicants seeking to patent pharmaceutical drugs. Patenting pharmaceuticals often takes between 7 to 12 years, depending on how long it takes for the FDA to approve a new drug or pharmaceutical. That said, patent term extensions are also granted in situations where the patent office takes too long to grant a patent on things like medical devices for humans and pharmaceuticals for pets.

When Must an Applicant Submit a Patent Term Extension Application?

According to the USPTO, to obtain a patent term extension, the patent applicant must submit a patent extension application to the patent office within 60 days of the regulatory approval agency completed its review of the product (invention) to be patented.

For example, if the regulatory approval of a new glucose monitor or glucose pill was completed on January 1, 2020, an applicant must submit an application to extend the term of the patent within 60 days, meaning no later than March 1, 2020, for this example.

Note: An applicant cannot submit a patent term extension application until the regulatory body has completed its review of the product you're in the process of patenting.

So, what do applicants do in the situation where regulatory approval can extend beyond the life of a patent. For example, if an applicant has submitted a patent application for a new drug and he expects that the FDA will take longer than the patent term (20 years), he can file what is known as an interim extension. Filing an interim extension allows applicants to extend the patent term until the regulatory body completes its review of your product.

Requirements to File a Patent Term Extensions Application

For a patent holder to extend the term of a patent, the patent must have not have expired before a patent holder submits a patent term extension application. Also, to submit a patent term extension, a patent holder must have never extended the term of a patent under 35 U.S.C 156.

That said, not anyone can submit a patent term extension application, either the patent holder or the patent holder's authorized agent must submit the patent term extension application.

Additionally, if you know or anticipate that you'll have to file a patent term extension application, do not commercially market or pitch your product to others before filing a patent term extension. We say this because qualifying for a patent term extension requires that an applicant not have commercially marketed the product before regulatory approval. There are a few exceptions to this rule that this article does not cover.

What Information Must a Patent Term Extension Application Contain?

For an inventor to extend the term of his patent, the term extension application must include the following:

  • An application must identify the product (medication or medical device) that was waiting for regulatory approval from a governmental agency, such as the FDA,
  • An application must include the federal statute that requires regulatory approval,
  • An application must identify the patent that the patent holder wants to extend,
  • An application must identify all of the claims for the approved product,
  • An application must include a brief description of the applicant's activities while the product was pending regulatory approval

How Long Can the Patent Term be Extended For?

We know that the patent office can extend the patent term to compensate the patent holder for delays that occurred while the patent holder is waiting for regulatory approval of his product, but for how long can the patent term be extended? According to U.S Patent Law, a patent term cannot be extended for more than 5 years, regardless of how long it took the regulatory body to review the invention.

For a patent holder to obtain an extension, the delays in obtaining regulatory approval must not have been caused by the patent holder. The patent holder must have acted with due diligence during this period to obtain an extension.

How Much Does a Patent Term Extension Cost?

According to the USPTO, a patent term extension costs $1,120. The fee is the same for micro-entities, small entities, and large entities. The fee must be paid to the USPTO upon filing a request for a patent term extension. Unlike almost all other requests and filings, a patent term extension request cannot be filed online, an applicant must prepare a paper application and file it with the patent office.

Remember that the person filing the patent term extension should be authorized to do so by the patent holder. To satisfy this requirement, it's advisable that the application include a letter that details the source of the filer's authority to file the application.

How Long is the Life of a Patent?

In the United States, utility patents last for 20 years from the date an applicant files his patent application with the patent office. It's important to note that some of the patent term is eaten up by the amount of time it takes the patent office to grant a patent.

On average, it takes the U.S Patent Office 24 months to approve a patent application. That said, don't panic if it takes the patent office longer than 24 months to approve your patent applications because some applications take longer and some take less, depending on the complexity of the invention. The point is that, for most utility patent applicants, 2 years of the 20-year patent term is lost due to the amount of time it takes the patent office to examine and approve a patent application.

Should the Patent Office Allows Inventors to Extend the Life of Their Patents?

The answer to this question depends on who you ask. We agree with the patent office in that patent extensions should be granted to inventors who often wait 7 to 10 years waiting for approval of their invention by a regulatory body such as the FDA.

It would be unfair to inventors who invent products and processes that require regulatory approval to lose much of their patent term because the government took too long to review their invention.

Having a mechanism in place to extend the patent term in situations where an applicant is not responsible for the delay helps place the inventor on equal footing with other applicants who invent things that don't require regulatory approval.

Without having patent term extensions, inventors would not have the incentive to research and develop products that require regulatory approval. Some of the most important categories affected by regulatory approval are those involving medications and medical devices for both humans and animals.

So, allowing inventors to extend the term of their patent, incentivizes them to spend the time and money researching and developing new inventions. This is so because inventors will be able to recoup their investment and profit from their invention in the same manner that other inventors are able to do so.

Patent Term Extension

As you may know by now, a patent term extension allows inventors who develop products and processes that require regulatory approval to extend the term of their patent. Some products, such as medicine, pharmaceuticals, and medical devices require regulatory approval by bodies such as the FDA. This approval takes time and often reduces the patent term (patent life) of a product.

Therefore, to make an applicant whole, the patent office allows inventors to file a patent term extension request to extend the life of the patent. There are some rules that must be followed to qualify for a patent term extension and we covered the most important rules. That said, if you have any general questions or comments, please feel free to leave them in the comments section below.


First to file rule in patent law

First to File Rule in Patent Law

First to File Rule (FITF)

Many countries, including the United States, have adopted the first to file rule, which basically grants the first inventor who files a patent application a patent regardless of whether someone else made the invention first.

For example, if you invent a new pair of scissors and someone else invents the same pair of scissors two years later but files his patent application with the patent office before you do, he will be granted a patent even though you invented the scissors before.

In the past, the United States had a first to invent system that awarded inventors who first invented an invention but recently switched over to a first to file system. When the U.S had a first to invent system, the person who could first describe how the invention worked and how the invention achieved its desired purpose was awarded a patent regardless of when the inventor filed a patent application.

Of course, this caused a lot of problems in situations where two inventors claimed that they were each the first to make an invention, the patent office would have to spend a lot of time and money determining who actually made an invention first. So, the patent system was changed to a first to file system, which things more clear for inventors who wanted to patent their invention.

So what's the takeaway for inventors in the United States? If you have an invention and you can describe how that invention works and how it achieves its desired purpose, file either a provisional patent application or (regular) nonprovisional patent application to reserve an early filing date with the patent office.

Reserving an early filing date protects inventors from any other inventors who subsequently claim to have made the invention first because it won't matter. As long as you filed first, you have priority over all other subsequent applicants.

So, if you were wondering: Is the US a first to file or first to invent system? You know that the US is now a first to file system that requires inventors to file a patent application as soon as possible to reserve an early filing date for their invention.

How Has the First to File Rule Changed the Legal Landscape For Inventors?

Adopting the first to file rule changed the way inventors approach patenting their inventions. No longer can an inventor invent something and keep it secret for years. If an inventor invents something, he is incentivized to quickly file a patent application with the patent office to reserve an early prior date.

Reserving an early priority date guarantees an invention's priority date, which is very important because if a party subsequently files a patent application for the same invention, the inventor who filed first gets the patent.

Inventors who are not ready to invest the time and money to prepare a regular, nonprovisional patent application often opt to file a provisional patent application. Provisional patent applications do not turn into granted patents, but they do reserve an early priority date for the inventor.

Inventors choose to file provisional patent applications instead of filing regular, nonprovisional patent applications because they require much less time prepare since they don't require as much information as regular patent applications and they are therefore much cheaper to prepare and file. Also, the filing fees for a provisional patent application are less than those for a regular patent application.

That said, inventors often make the mistake of not preparing a provisional patent application as thoroughly as they should have. The problem arises when an applicant wants to convert a provisional application into a regular patent application or file a nonprovisional application that claims the benefit of an earlier-filed provisional application.

The problem that arises is that the invention described in the regular, nonprovisional application has to be the same invention that the applicant described in the provisional application to benefit from the earlier filing date of the provisional application.

If the descriptions of the inventions don't match, the applicant cannot benefit from an earlier filed provisional application. This is a problem for applicants if someone else filed a patent application for the same invention after the applicant filed his provisional application.

Disclosing the Invention

In the United States, inventors must file either a provisional patent application or a nonprovisional application within 12 months of publicly disclosing their invention, selling it, or offering it for sale.

If an inventor does not file an application with the patent office within the 12 month grace period, the inventor will be prohibited from patenting his invention as it will be considered as prior art, banning the inventor from patenting his invention.

Note: If you want to patent your invention in countries other than the United States, you should keep your invention secret and not disclose it all. This is so because even though the United States offers a 12 month grace period, other countries don't have a grace period.

Instead, the invention must have never been publicly disclosed for it to qualify for a patent. So, as a word of caution, keep your invention secret if you want to protect it in countries other than the U.S.

Also, if you're an inventor and you need the help of a third party, have them sign a non-disclosure agreement (NDA). Although an NDA does not guarantee that a third party won't disclose your invention, it reduces the chances of them doing so.

If a party violates the NDA, you will be able to bring a lawsuit against them for breaking the contract. In the event that a party discloses your invention, ask your attorney whether you should immediately file a provisional patent application to reserve a priority date with the patent office.

What Does it Mean to File a Patent?

When we say that an inventor must file a patent, we mean that an inventor must file either a provisional patent application with the patent office or file a regular, nonprovisional patent application with the patent office to reserve a priority date (early filing date) with the USPTO.

By reserving an early filing date with the patent office, the inventor's invention will qualify for a patent (assuming it meets the patentability requirements) even if someone else subsequently files a patent application for the same invention.

The same remains true even if another party invented the invention first. This is so because of the first to file rule in the US that gives priority to an inventor who first files a patent application with the patent office.

Three Types of Patents an Inventor Can File?

The first to file rule applies to all three types of patents offered by the USPTO. The patent office currently offers three types of patents: utility patents, design patents, and plant patents.

Utility patents protect how an invention works, as well as the functional aspects of an invention. Design patents protect how an invention looks or the aesthetic or appearance of an object. Plant patents protect new, asexually reproduces new species of plants.

Whichever type of patent you decide to patent, the first to file rules applies. So, if you have an invention, ask your attorney about filing a patent application to reserve an early filing date.

What is the Process of Filing a Patent?

To file a patent application, an applicant first needs to perform a patent search to determine whether anyone else has patented the invention he wants to patent. Then, the inventor needs to prepare either a provisional application or a nonprovisional patent application that thoroughly describes the invention to be patented.

Applicants usually hire experienced patent attorneys to assist them with the preparation of their patent application because they are quite complex and need someone with experience to correctly prepare them. Once an applicant has prepared a patent application, the applicant needs to file the patent application with the patent office and pay the required fees.

Once an application is filed, the applicant should periodically check the status of an application to determine if the patent office requires any changes or amendments to the patent application.

Patent First to File Rule

By now, it should be quite apparent that the U.S Patent System awards inventors who are first to file a patent application for their invention. So, if you have an invention, it's smart to file a patent application to obtain an early filing date. An early filing date guarantees that your patent will have priority over subsequent patent applications that are filed for the same invention. If you're not ready to file a regular patent application, ask your attorney about filing a provisional application to obtain an early filing date. That said, if you have any general questions or comments, please feel free to leave them in the comments section below.


What is a patent assignment?

What is a Patent Assignment?

Whether you're curious about assigning a patent to someone else or having a patent assigned to you, you might be wondering what a patent assignment is? Patent law allows patent holders to assign patents to other parties. Patent assignments often take place between an employee and his company, however, it's not uncommon for a person to assign his interest to a patent to a third party. So, what exactly is a patent assignment? We will cover this below.

What is a Patent Assignment?

A patent assignment is an agreement by the patent holder (assignor) to transfer his interest and ownership of a patent to another party known as the assignee (party receiving patent rights). Once a patent holder executes an assignment agreement assigning his interest in a patent to another party, the assignor loses his rights under the patent. The assignor (transferor) will no longer be able to stop others from using, making, and selling the patent invention. Instead, the assignee gains these rights.

In the United States, patent assignments are very common between an employee and his company because a company or business cannot apply for a patent. An inventor has to apply for a patent and then the inventor then assigns his interest under a patent to the company for which he is working.

An assignment transfers the ownership of the patent from the inventor or employee to the company for which he is working. That said, assignments can also be made by any two parties that agree to transfer ownership of a patent.

So, now we know that a patent holder can transfer his patent rights to a third party, can an inventor assign a pending patent application? Absolutely, yes! An inventor can assign his rights under a pending patent application to another party.

If you're an inventor and you want to assign your patent to another party, just remember that patent assignments are final. Once an inventor assigns (transfers) his interest in a patent to another party, the assignment (transfer of rights) cannot be undone, it's final.

What is a Patent Assignor?

A patent assignor is a party that transfers it's interest and right to the patent to the transferee (assignee) or the party receiving the patent. Once an agreement is executed and recorded with the patent office, the assignee becomes the patent right holder.

What is a Patent Assignee?

A patent assignee is a person to whom the patent rights are transferred to. Said differently, the assignee is the new owner of the patent. An assignee should immediately record an assignment agreement with the patent office to establish his rights as the new patent owner.

Requirements to Execute a Patent Assignment Agreement

For a patent holder to assign (transfer) his interest in a patent to another party, the assignor (person transferring patent rights) must execute a written agreement that includes details, such as the name of the assignor and the assignee, as well as the patent that is to be assigned (transferred) to the assignee.

Once the assignment agreement is executed, it must be filed with the USPTO for the agreement to take effect. Please remember that the agreement needs to be in writing, oral agreements are not sufficient to transfer the rights from the patent holder to the assignee.

The assignment agreement must include the following information:

  • The agreement must contain the legal names of both the assignor (person transferring patent rights) and the assignee (person receiving patent rights).
  • The agreement must clearly identify the patent by stating the name of the patent, as well as the patent number.
  • The terms of the agreement must be included in the assignment agreement.
  • Both the assignor(s) and assignee(s) must sign the agreement.

Who Owns the Patent After a Patent Assignment?

Once the assignor and assignee execute an assignment agreement and file the assignment with the USPTO, the assignee owns the patent. As the new patent owner, the assignee will have the right to stops others from using, making, and selling the patented invention for the remaining patent term.

The assignor (person who transferred his rights) loses his rights under the patent and will no longer be able to enforce the patent. Assigning a patent is similar to selling a car and registering the title in someone else's name. Once the patent is assigned, similar to registering the title of a vehicle in someone else's name, the new owner is the assignee (person to whom the patent was transferred to). Once the assignment is recorded with the patent office, the records will be updated to show the assignee (new owner) of the patent. This information will then be made available to the public.

Assigning a Patent vs Licensing a Patent

Assigning a patent is much different than licensing a patent. When a patent holder assigns his interest in a patent to another party, he is usually transferring ownership of the patent to the other party. Patent licensing is different in that a license is merely a transfer of the right to use the patent in the manner specified in the licensing agreement. Assignments transfer ownership while a license transfers the right to use the patented invention. That said, if a patent is assigned, the information of the assignor and assignee will become part of the public record. Whereas if an inventor licenses his patent, that information is not typically published to the public.

Does a Patent Assignment Need to be Notarized?

The USPTO does not require patent assignments to be notarized. The patent office only requires that the assignment be executed and signed by both the assignor and the assignee. Once an agreement is executed and signed by the parties, the assignment must be recorded with the patent office.

If the assignee fails to record the assignment, there is nothing to protect the assignee from the assignor assigning the patent to a third party. So, if you're an assignee, make sure to record your assignment as soon as it's executed to avoid problems.

Although a patent assignment does not need to be notarized, notarizing it can be beneficial in the event that the previous patent holder claims that he did not make the assignment. It's an added layer of protection that could prove to be very valuable.

Can Multiple People Own a Patent?

Yes, multiple people can own a patent. For example, if three inventors make a single invention, all three are considered joint inventors and their names should appear on the patent application, as well as the issued patent.

If there are multiple inventors on a patent application, all inventors must execute an assignment agreement to assign each of their interest to the assignee for the assignee to own the entire patent.

For example, if only 1 of 3 inventors assigns his interest, the assignment would be a partial assignment until all 3 inventors each assign (transfer) their interest to the assignee.

Patent Assignment Tips

1) Hire an Attorney to Assist You with Your Patent Assignment

Any individual who's either an assignor or assignee should hire an attorney to assist with the assignment of a patent. Attorneys will ensure that the assignment agreement complies with the law and contains all of the information that is required for a successful patent assignment. Although it's not unheard of for parties to execute an assignment agreement on their own, making a mistake could cause legal troubles down the road.

2) Don't Forget to Record A Patent Assignment

If you have been assigned a patent, don't forget to record your assignment with the USPTO. We say this because patent assignments don't go into effect unless the assignment is recorded with the patent office. Recording a patent assignment tells the patent office that you are the new owner of the patent.

If an assignee does not record the assignment with the patent office, it is as if the assignment never took place. Also, if it's not recorded, the assignor could possibly assign the patent to a third party. So, make sure to record your assignment as quick as possible.

3) Notarize Your Assignment Agreement

It's good practice to have an assignment agreement notarized. This helps in a situation where the assignor claims that he did not execute the assignment agreement. In the event that an assignor claims he did not execute the assignment agreement, you will have evidence to show otherwise. The burden may shift to the assignor to prove that he did not execute the assignment agreement. So, notarize your agreement, as well as other documents relating to the assignment of a patent.

4) How Much Does it Cost to Record an Assignment with the USPTO?

It's currently free to record an assignment with the USPTO if a party submits the assignment electronically. However, if a party chooses to record the assignment agreement by paper, there is a $50 fee for the service. So, record your assignment online if you want to avoid paying anything. That said, you may need to publish your assignment in an official gazette, such publication does cost $25.

Patent Assignment

Let's do a quick recap. A patent assignment is the transfer of ownership of a patent from one party to another. The party transferring its right is known as the assignor and the party receiving the patent rights is known as the assignee.

To assign a patent, both parties must execute a written assignment agreement to reflect the transfer of ownership. Once the parties execute the agreement, they must record it with the patent office to establish the new ownership. If you have any general questions or comments, please feel free to leave them in the comments section below.


What are patent maintenance fees?

What Are Patent Maintenance Fees?

What Are Patent Maintenance Fees?

If you have a utility patent or you're thinking about getting one, you might have heard about maintenance fees. People often refer to patent maintenance fees as patent renewal fees and patent annual fees. So, what are patent maintenance fees? Patent Maintenance fees are patent office fees that must be paid at 3.5, 7.5, and 11.5 years to the USPTO (United States Patent and Trademark Office) to keep a patent as granted. Patent maintenance fees start at $800 at 3.5 years, $1,800 at 7.5 years, and $3,700 at 11.5 years. So, if you're figuring out the budget for your patent, you should take into consideration the maintenance fees that need to be paid to keep the patent active.

If an inventor fails to pay the patent the mandatory maintenance fees, the patent expires. However, the patent office does offer patent holders a 6-month grace during which he can pay the maintenance fees. For example, if a patent holder fails to pay the $800 maintenance fee at the 3.5-year mark, the patent office gives the inventor a 6 month grace period during which to pay the fees, in addition to a late fee. If a patent holder completely fails to pay the maintenance fee after the 6 month grace period, the patent expires.

So, if the patent office grants your utility patent, make sure not to miss the maintenance fees. The first maintenance fee you have to pay is at the 3.5-year mark, paying this fee will keep your patent granted until the 7.5-year mark when you will have to pay the second maintenance fee.

After paying the final maintenance fee payment at 11.5 years, your utility patent will remain granted until it expires at the 20-year mark. The patent term for utility patents is 20 years from the date an inventor files his patent application with the patent office. During the 20-year patent term, a holder of a utility patent will be able to stop others from using, making, and selling the patented invention or product until the patent term expires.

Who Has to Pay Maintenance Fees?

Not all patent holders have to pay maintenance fees, only holders of utility patents are required to pay maintenance fees. Design patents and plant patents do not require patent holders to pay maintenance fees. As unfortunate as it is, only utility patent holders must pay maintenance fees at the intervals we covered above.

How Often are Maintenance Fees Due?

Here is a list of the maintenance fees that are due on every utility patent that's granted by the USPTO.

Utility patent holders must pay the following maintenance fees:

  • 3.5 Years: $800
  • 7.5 Years: $1,800
  • 11.5 Years: $3,700

These maintenance fees are calculated from the date the patent office grants the utility patent. So, the fees are required 3.5, 7.5, and 11.5 years after a utility patent is granted by the USPTO. As previously mentioned, inventors have a 6 month grace period during which to pay the required fees. Be careful though as the late fees can be painful, so paying your maintenance fees on time will save you a ton of money.

Also, the maintenance fees you pay depend on the size of your business. So, if you're a business that has less than 500 employees, you may have to pay less to maintain your patent.

If you qualify as a micro-entity you may need to pay the following fees:

  • 3.5 Years: $400
  • 7.5 Years: $900
  • 11.5 Years: $1,850

Why Do Inventors Have to Pay Maintenance Fees?

The USPTO charges maintenance fees for two main reasons. The first reason they charge them is to generate revenue to operate the patent office. A portion of the maintenance fees goes to fund the examination of patent applications. The second main reason the patent office charges maintenance fees is to free up inventions and new technology.

By charging maintenance fees, inventors who don't want to pay them or can't pay them will have their patents expire. Once the patent expires, the invention falls into the public domain, allowing others to use and improve upon the patented technology. This promotes innovation and makes way for other inventors to create new technology that's based on inventions, machines, and processes that were once patented.

Should You Pay Maintenance Fees?

If you have an invention that you're making good money from, then absolutely yes! pay the maintenance fees and keep your patent active. Paying the maintenance fees on time allows inventors to continue to stop their competitors and anyone else from using, making, and selling the patented product without their express permission. But we understand that not all inventions are successful.

So, if you've invented something and you've been unable to commercialize the patented product or invention, then you may consider not paying the maintenance fees to keep the patent granted.

We know it's a hard decision to make, especially if you've paid a ton of money to get a patent, but if you can't make money from your invention, ask your attorney about cutting your losses by not paying the maintenance fees on the patent. Your attorney should be able to explain the consequences of not paying the required maintenance fees. That said, if you have an invention and you believe it's valuable, try looking for companies that may be interested in purchasing your patent or licensing it.

Paying Maintenance Fees vs. Not Paying Maintenance Fees

We will keep this short and sweet. If you pay the maintenance fees, you will be able to continue to have control over who uses, makes, and sells your invention or product because your patent will remain granted. If you fail to pay the maintenance fees within the 6 month grace period, your patent will lapse (expire) and others will be free to use and selling your patent invention or product with obtaining your permission.

So, if you have an invention that is successful, make sure to pay the maintenance fees on time. The fees are not optional, they are mandatory and must be paid to maintain your patent and your right to restrict others from exploiting your invention by either using it, making it, and selling it.

What Can You Do If You Fail to Pay Maintenance Fees on Time?

If you fail to pay the maintenance fees on a patent at any of intervals, the patent office a 6 month grace period during which you can pay the maintenance fees that are due. However, if you pay late you will have to pay a late payment fee. That said, if you don't pay the required fees within the 6 month grace period, you will have to file a patent reinstatement petition to reinstate your patent as granted.

Here are the requirements to reinstate a patent:

  • The delay in paying the maintenance fee was unintentional,
  • Payment of the required maintenance fee,
  • Payment for the petition to reinstate your patent to its grant state,
  • A signed statement that your nonpayment of maintenance fees was unintentional,
  • The petition must be signed

Note: Filing a petition for reinstatement of a patent does not guarantee that the patent office will reinstate a patent. The patent office may refuse to reinstate your patent. If the patent office refuses to reinstate your patent, they will refund your maintenance fees. Also, if you've missed more than one maintenance fee payment (remember there are 3 required throughout the life of a utility patent), you must file a petition for every missed maintenance fee payment. Also, if the patent office refuses to reinstate your patent, the petition filing fee is not refunded, only maintenance fees will be refunded.

How to Check the Status of Your Patent?

You can check the status of your patent by heading over to the USPTO website and using the PAIR System (Public Patent Application Information Retrieval System). You can search for your patent by using either the patent number or the patent application. Both of these numbers can be located at the top portion of your patent application.

Can a Patent Be Renewed After it Expires?

If a patent expires for failing to pay maintenance fees, a patent holder may be able to renew the patent by filing a petition to reinstate the patent, however, if an invention expires because the patent term has ended, it cannot be renewed. Design patents don't have maintenance fees, so they usually expire because the patent term has ended, like utility patents, once a design patent expires, it cannot be renewed.

Patent Maintenance Fees

By now, you should know that patent maintenance fees, commonly known as patent renewal fees or patent annual fees, must be made at pre-determined times in order for an inventor to keep his patented as granted at the patent office. If an inventor fails to pay the maintenance fees, he has a 6 month grace period in which to pay the maintenance fees. If the fees are not paid within this grace period, the patent expires. If the patent expires, it falls into the public domain where anyone can use and make the patented invention without having to obtain the express permission of the patent holder. If you have any general questions or comments, please feel free to leave them in the comments section below.