Design patent functionality

Design Patent Functionality

If you have a design that you want to protect, you've probably heard that you can only patent a design that is not functional. This is true, design patents can only protect the appearance of your invention, it cannot be used to protect the functional aspect of your invention. If you want to protect the functional aspect of your invention, the correct intellectual property protection is a utility patent and not a design patent. The main goal of this article is to discuss the functionality test for design patents.

Design Patent Functionality Requirement

Design patents protect the new and ornamental features of an article of manufacture. Said differently, design patents protect the appearance of an article or product and how it looks. Patent law does not allow inventors to use design patents to protect the primarily functional elements of an invention.

To be able to patent a design, the design must be separable from the functionality of the article to which the design is applied. Design patents do not cover the article of manufacture itself or its function, instead, design patents are used to protect the appearance of an article or good.

If you have a design that you want to protect, you should use solid lines to identify the design you want to protect and broken lines to indicate the environment of the article that you do not want to protect as part of your design patent. Said differently, broken lines illustrate what an applicant is not claiming as part of the design patent.

If you have to include the environment in which the claimed design is present, you can include it in your patent drawings, but you have to distinguish from the design you want to protect by using broken lines such as those shown in the image below.

In this design patent drawing, the air compressor design is claimed as the invention to be protected and the environment surrounding the air compressor, which is not to be protected is differentiated and pointed out by the use of broken lines.

Design Patent Functionality Test

To patent your design, the inventor must have made a conscious act to create the design to improve the appearance of the product or article of manufacture.

To determine the ornamentality of a design, the courts have asked whether a design is primarily functional and in doing so the court examines the elements of the design as a whole.

For a design to be ornamental, it must have been made for the purpose to improve the appearance of an article or product. It must not have been made to improve the function of an article.

When determining whether a design is primarily functional or primarily ornamental in nature, the design is looked at in its entirety. The design will not be looked at element by element, rather the article is looked at as a whole to determine whether the design actually improves the appearance of the article or whether it really improves the function of the article.

The initial burden to show that a design is not ornamental lies on the patent examiner to provide a prima facie case of unpatentability. The presence of lack of ornamentality must be made on a case-by-case basis.

To support a finding that your design is ornamental, it would help any applicants case to show that the design is something that the end-user of the article would see and notice the design by using the article of product. On the other hand, if the design is hidden during the normal use of the article, the design patent application may be rejected.

Obtaining Both a Design Patent and a Utility Patent

Inventors can obtain a design patent to protect the appearance of an invention and they can also obtain a utility patent to protect the functional aspects of the invention.

When illustrating how a design patent and utility patent can be obtained over the same invention, we always use the nail clipper example. Now to our nail clipper example. You can patent the functional aspects of a nail clipper, such as the hinges or mechanism that allows it to cut nails by using a utility patent and if the nail clippers have a unique handle, you can patent that handle using a design patent.

That said, if you want both design patent and utility patent protection, you need to apply for both patents separately, meaning you'll need to file a utility patent application and a design patent application.

If you have an invention where the utility and appearance are overlapping and cannot be separated, you should consult with an attorney on how to approach patenting your invention. Your attorney may recommend only filing a utility patent or he may recommend that you seek both types of patent protection depending on your specific circumstances.

Design patents are much easier and less expensive to obtain than utility patents. Utility patents are costly, mainly because of the time it takes an attorney to prepare your patent application. Design patents take a fraction of the time that utility patents take to prepare.

Also, utility patents cost more to file than design patent applications. However, if your design is important to your product because it's something that your customers consider when purchasing your product, you may want to invest the extra money in patenting the appearance of your invention.

That said, utility patents offer much stronger protection than design patents. This is so because utility patents protect how an invention works, so even if your competitor makes an invention looks different, if it works the same way your utility patented invention works, you will be able to stop them from using, making, selling, and importing your invention to the United States.

Counterfeiters are smart and they do know how to copy your invention without copying its appearance, so if you only have a design patent protecting how your invention looks, you're out of luck if the counterfeiter changes the way it looks.

But, if you have a utility patent, even if the counterfeiter changes the way your invention looks, you will have a remedy if they copy how your invention works. So, obtaining a utility patent is a very important form of intellectual property protection.

That said, having a design patent is still important, especially if the way your product looks is a selling point for it. So, ask your attorney about obtaining both a utility patent and a design patent. The utility patent protects how your invention works and the design patent will protect how it looks.

Design Patents vs Utility Patents

The basic difference between design patents and utility patents is that design patents protect how your invention looks and utility patents protect how your invention works.

Design patents are much cheaper to obtain than utility patents. It might cost you $2,000 to obtain a design patent, while it may cost you more than $8,000 to obtain a utility patent. However, it should be noted that utility patents protect far more than design patents.

As we mentioned above, it tends to be easier for a bad actor to design around the design of your invention to make a competing product look different than it is for a bad actor to design around the function of your invention. This is why utility patents tend to be a stronger type of intellectual property protection.

That said, design patents tend to have a much lower probability of being rejected by the patent office. Almost all utility patent applications are initially rejected, necessitating the applicant to make changes and/or amendments to the application before it's approved by the patent office. However, many design patents are approved without ever been rejected.

Benefits of Obtaining a Design Patent

If you patent the design of your invention, you will be able to stop others from using, making, selling, and importing an article that has the design you've patented. That said, it is the design patent holder's job to police his design to ensure that no else is using his design without his permission. The patent office only grants the patent rights to the patent holder, the patent holder is then responsible for enforcing his rights under patent law.

Frequently Asked Questions

1) What is a Design Patent Used For?

A design patent is used to protect how your invention looks. Said differently, it protects the ornamentality or appearance of your invention. You can obtain a design patent by applying using a design patent application.

2) Can You Patent a Design Concept?

You cannot patent a concept or an idea. To patent a design, you must have a design that's applied to an article of manufacture. You must be able to provide drawings of the design as applied to an object if you want to be able to patent it.

3) What Are the Three Types of Patents?

The patent office offers design patents, utility patents, and plant patents. This article focused on the two most popular patents: design patents and utility patents. As mentioned previously, design patents protect the appearance of an invention, while utility patents protect the function of an invention or how the invention works.

4) How Do You Avoid Design Patent Infringement?

To avoid design patent infringement, the design that you use must be different than any other design that has been issued a patent that is still active. If you have a design that was once patented but is no longer patent, you can use that design without committing patent infringement, however, make sure that the design is not protected by other forms of IP protection, such as copyright law and trademark law.

5) What is an Ornamental Design Patent?

An ornamental design patent is really just a design patent. Design patents protect the ornamental design of an object or how an article looks. All design patents are meant to protect how your invention looks.


How to expedite a patent application?

How to Expedite a Patent Application?

Whether you've just finished working on your invention or you're just curious about how to expedite your patent application, you've come to the right place. The patent office offers applicants for both utility patents and design patents the ability to expedite their patent applications. We will discuss how to expedite a utility patent application and a design patent application below.

Can You Expedite a Patent Application?

Yes, you can expedite your patent application. The USPTO (United States Patent and Trademark Office) offers applicants for utility patents, design patents, and plant patents the ability to expedite their patent applications. However, utility patent and design patents are expedited differently, we will show you how to expedite your patent application.

How to Expedite a Patent Application?

You can expedite your patent application by filing a request to expedite it. Utility patents and design patents are expedited differently. To expedite a utility patent, you can make a request to use the USPTO's Track One service. To expedite a design patent application, you can use what's known as Rocket Docket by filing a request to expedite your design patent application. By expediting your patent application, your application skips the long line of pending patent applications to the front of the line.

To use either of these services, an applicant typically has to make a request to expedite his patent application. For Track One services for regular (nonprovisional) utility patent application, an applicant must request to use Track One and the same goes for Rocket Docket for design patents.

How to Expedite a Utility Patent using Track One?

Track One promises applicants to either grant or deny a utility patent application with 12 months of an applicant being granted Track One status. That said, even though Track One promises to have a final disposition within 12 months, it currently only takes them 6 months to grant or deny a patent application.

So, if you have an invention that you want to patent as quickly as possible, it's best to request expedited examination under Track One. If your request is granted, you will likely be able to patent your invention within 6 months of being granted Track One status.

That said, Track One isn't free, an applicant must pay a fee to have his utility patent expedited. For micro-entities, the fee is $1,000, for small entities, it's $2,000, and large entities have to pay $4,000. This fee must be paid in addition to the normal fees associated with filing a utility patent application.

To get track one, an applicant must file a request for expedited examination. It currently takes the patent office 50 days to accept an individual into its Track One Program.

How to Expedite a Design Patent Using Rocket Docket?

Rocket Docket is used by applicants for design patents to expedite their design patent application. To obtain expedited examination for a design patent application an applicant must file a request for expedited examination in addition to filing a design patent application.

The request for expedited examination can be made at the time an applicant files his design patent application. However, if an applicant decides after filing a design patent application that he wants to expedite, he may later make a request for expedited examination.

If an applicant's request to have his design patent application expedited is approved, his design patent application skips the line of non-expedited patent applications. The entire process of examining a design patent application is faster by using Rocket Docket.

Like Track One for utility patent applications, Rocket Docket is not free. An applicant has to pay a fee to expedite his design patent application. The fee for micro-entities is $225, small entities pay $450, and large entities must pay $900.

Note: The fee that must be paid is in addition to the normal fees associated with filing a design patent application. If the fees for expediting your patent application are not sent, your application will proceed as a regular design patent application.

How to Speed Up the Process to Patent Your Invention?

  1. Make sure your patent application is completed properly

    When preparing a patent application, you need to make sure that you've properly described to the patent examiner how to make your invention, as well as how to use it. If you don't have experience preparing and filing a patent application, you should hire an attorney to assist you with its preparation and filing. This is so because making even seemingly minor mistakes could get your application rejected, costing you more time and money to fix the mistakes.
  2. Expedite your patent application by either using Track One or Rocket Docket

    If you don't want to wait for 24+ months to have your utility patent application granted or 18+ months for your design patent, you can use the methods we explained above to expedite the processing of your patent application. Just remember that you'll need to pay additional fees to expedite your patent application.

  3. Rush to the patent office to file your patent application

    The United States has a first to file system that awards a patent to the first person who files a patent application for an invention and not the first person who invents it. As such, if you have an invention that you want to patent, you should file a patent application as soon as you can.
  4. Track the status of your patent application

    After filing your patent application with the trademark office, your application will be assigned a serial number. You should periodically check the status of your application to see if the patent office needs any additional information or amendments to your patent application. Responding quickly and on time will help the patent examiner process your patent application as quickly as possible.

How Long Do Patent Applications Take Without Being Expedited?

Utility Patents

If you do not expedite your patent application, the application process will take much longer. White Track One for utility patents promises a disposition on your patent application within 12 months, it often takes as little as 6 months to get your patent approved.

On the other hand, if you do not expedite a utility patent application, it takes 24 months on average to get your utility patent application approved. So, if you have an invention that you want to patent as quickly as possible, Track one is the best option to speed up your patent application.

Design Patents

If you do not expedite your design patent using Rocket Docket, it currently takes 21 months to get your design patent application approved. So, if you want to patent your design as quickly as possible, you may want to file a petition to expedite your design patent application at the same time you file your design patent application.

Applicants who have filed a request to expedite their design patent application have seen their designs patented in less than 6 months. So, if time is of the essence, expediting your design patent application is the way to go to speed up the patenting process.

Frequently Asked Questions

1) What is a track one patent application

A track one patent application is a patent application that has been expedited using the USPTO's Track One service. Track One, often referred to as Track 1, is a service that promises to either grant or deny a patent application within 12 months. So, if you have an invention that you want to patent as quickly as possible, track one may the best option for you.

2) How long does a patent take to get approved?

Patent applications that have not been expedited take longer than those that have been expedited. For example, it takes the patent office 24+ months to approve a utility patent application and it takes them 20 months to approve a design patent application that has not been expedited. If you expedite a utility or design patent application, you should expect a disposition on your patent application within as little as 6 months.

3) How do you start the patenting process?

The patenting process is started by performing a prior art search to determine whether anyone has patented the invention that you want to patent. If your patent search turns up an invention that is similar to yours, the patent office will not allow you to patent something that has already been patented or something that has been publicly disclosed.

After you're finished conducting a prior art search, you need to prepare your patent application and file it with the patent office. At the time you file your patent application, you need to pay the filing fees and associated patenting fees.

Once you've filed your patent application, you need to communicate with the patent office and make any required amendments or changes to your patent application. If your invention satisfies the patenting requirement, the patent office will grant your patent application.

4) How to Get a Patent Faster?

As we mentioned previously, you can get a utility patent faster by requesting to use Track One to expedite your utility patent application or your plant patent application. If you want to expedite a design patent application, you can do so by requesting to expedite it using Rocket Docket.


design patent vs copyright protection

Design Patent vs Copyright Protection

If you have a design that you want to protect, you may be wondering how patenting your design with a design patent differs from protecting your design by registering it with the U.S Copyright Office for copyright protection. Both design patents and copyright protection protect new designs, but they are different forms of intellectual property protection. We will now explain the difference between protecting your design with a design patent vs protecting your design with a copyright.

Design Patent vs Copyright Protection

A design patent allows inventors to protect new, nonfunctional designs that are applied to an article by granting a patent holder the right to restrict others from using and selling their designs. On the other hand, copyright law protects expressions of art, such as photographs, artwork, photographs, songs, and sculptures.

Design Patents

Design patents are a form of intellectual property protection that protects how an object looks or its appearance, they do not protect the functional aspects of an object. If an inventor has a design that's functional, he can only protect it by applying for a utility patent and not a design patent.

If you want to protect your design with a design patent, you need to prepare and file a design patent application with the USPTO. Unlike copyright protection which is automatic in the US, patent protection is not. Instead, a designer needs to apply for a design patent.

To be able to patent a design, an applicant must show that his design is novel (new), nonobvious and that the design is applied to an article of manufacture.

Design patents cannot be used to protect general ideas, an inventor must have a specific design that he wants to protect. Only one design can be protected by a single design patent application.

So, why do inventors choose to protect their designs with design patents?

Inventors choose to protect their designs with design patents because design patents allow patent holders to restrict others from using, making, selling, offering to sell, and importing an object that has the patent holder's design to the United States.

It is the design patent holder's duty to find those infringing upon his design and ask them to stop their infringing activities. It is not the USPTO's job to police a patent holder's patent.

If a patent holder asks a party infringing upon his patent to stop the infringing use and they do not comply with his request, he can bring a lawsuit against that party for patent infringement in Federal District Court.

Copyright Law Protection

Copyright protection is another form of intellectual property protection that protects new works of art that have been fixed in a tangible medium. Copyright law protects things, such as paintings, movies, artwork, songs, sculptures, and computer software.

Copyright protection in the United States is automatic, however, the U.S Copyright Office allows artists who've created artistic works to register them with the Copyright Office for more robust intellectual property protection.

If you want to be able to sue anyone who reproduces your artwork without your permission in Federal Court for copyright infringement, you need to register your artwork with the Copyright Office.

So, if you expect that your artwork may be reproduced or distributed without your permission, you should register it with the copyright office as soon as you've reduced it to a tangible medium.

Which Protection Should You Choose?

If your design is applied to an article of manufacture, design patent protection is the proper type of protection and it's also the strongest type of protection you can get for your design.

Said differently, if you have a product that has a unique appearance, you can protect the appearance of your product by obtaining a design patent.

However, to be able to obtain a design patent over the design of your product, the design must not be functional. Said differently, the design cannot serve a purpose other than an aesthetic one.

For example, if you've invented a new type of nail clippers that has a new and unique design, you may be able to protect its design by patenting it with the patent office.

On the other hand, you will most likely be unable to protect its design with copyright law, unless there is something artistic about its design that can be separated from the article itself, which in the case of out hypothetical nail clippers is not possible because the design is part of the article.

So, if you have a product that has a new and unique appearance, the best intellectual property protection for your product is patenting its design using a design patent.

On the other hand, if you have a cool design that you've applied to a shirt that you want to sell and you don't want others to copy the design you've applied to a shirt, you should register your design with the copyright office because it is the sort of thing that the copyright office protects.

By registering your design with the copyright office, you will be able to bring a copyright infringement lawsuit against anyone who reproduces or distributes your design without your permission.

Why Do Copyrights Last Longer Than Patents?

Copyrights last longer than patent because copyrights are artistic works, so offering creators of artwork a long time of protection is desirable. Patents, on the other hand, are granted to inventors of new and unique invention, so allowing patents to last too long would hinder the advancement of technology because people would not be able to build upon existing patented inventions and designs.

It would hinder the advancement of technology because inventors will not be able to build upon or use patented inventions for a very long period of time. As such, the patent office set the patent term for utility patents to 20 years and the patent term for design patents for 15 years.

Once the patent term expires, the invention falls into the public domain name, allowing anyone to use, make, and sell the once patented invention, as well as to build upon it and improve it.

Why Do We Have Patents and Copyrights?

Patent law was created to encourage inventors to invention new inventions by offering them a monopoly over their invention for a limited period of time. Inventors can profit their invention for a limited period of time without having to compete with others that copied their invention.

This is so because a patent allows an inventor to stop others from using, making, selling, and importing the invention to the United States without their express permission.

However, in return for this monopoly, inventors must disclose in great detail how to make the invention to the public. Once a patent expires, the public is free to use, making, and sell the once patented invention without the permission of the patent holder.

On the other hand, copyrights allow artists who create new artistic works, such as songs, movies, plays, paintings, and sculptures to register their artistic work worth with the U.S Copyright Office to prevent others from reproducing and redistributing their artwork without their permission.

Copyrights last much longer than patents because they usually last throughout the life of the creator of the artwork and an additional 70 years after the life of the creator.

Length of Protection (Copyright vs Design Patent)

Copyright protection in the United States lasts for the life of the creator and an additional 70 years after the author passes away. Design patents, on the other hand, last for 15 years from the date the patent office grants a design patent application.

While copyright protection in the U.S is automatic, design patent protection is not. An artist has 12 months after publicly disclosing or offering the design for sale to file a design patent application with the patent office.

If an inventor does not file a design patent application within 12 months of publicly disclosing the invention or offering it for sale, he will not be able to patent the design.

Qualifying For Both Design Patent and Copyright Protection

Some intellectual property qualifies for both a design patent and copyright law protection. If you have a valuable design you should consider both patenting the design by filing a design patent application and registering the design with the copyright office for dual protection.

That said, to qualify for copyright protection, an artist does not need to register it with the copyright office because it's automatic but registering it allows an artist to sue others who make unauthorized use of his artwork in federal court.

Copyright vs Design Patent Protection

At this point, you should know the difference between a copyright and a design patent. Copyright protection protects artistic works, such as paintings, songs, and movies. Design patents protect new and unique designs that are applied to an object, such as the way a product looks. Copyright protection allows the copyright holder to stop others from distributing and reproducing his artistic work without his permission. Design patents allow inventors to stop others from using, making, and selling an article that incorporates the patent holder's design. If you have any general questions or comments, please feel free to leave them in the comments section below.


What are the parts of a patent application

What Are the Parts of a Patent Application?

What Are the Parts of a Patent Application?

According to the USPTO, a patent application has the following components or parts:

  • Patent Application Specification
    • Title of your invention
    • Cross-referencing related application(s)
    • Statement regarding public disclosure of the invention by the inventor(s)
    • Statement providing the field of the invention
    • Description of the related prior art
    • Brief Summary of the invention
    • Description of the invention's drawings
    • A detailed description of the invention
    • Invention claims
    • Abstract of the disclosure
  • Invention Drawings
  • Oath or declaration
  • Paying filing fee

We will now discuss each of the previously listed parts of a patent application in more detail below.

Title of Your Invention

The title for your invention should be placed on the heading of the first page of the specification. The title should describe the invention you're seeking to patent. If your invention performs a variety of functions, it may be difficult to name your invention, so if you have this problem, you may want to contact an attorney to find the most suitable title for your invention.

If you choose a title for your invention that does not accurately describe your invention, the patent examiner may request that you change the title. Also, you want to choose an appropriate title for your invention because it is the first thing that a patent examiner will look at, so making a good first impression is extremely important.

When creating a title for your invention, do not use words, such as "new" "improved" or "improvement of." Also, words such as "a," "an" and "the" should not be used in the title of your invention. If you use such words, the patent examiner may request that you change the title for your invention by removing them.

Note: The title for your invention must not exceed 500 characters in length. It's best to choose the shortest descriptive title that accurately tells the patent office and the public what your invention is all about.

Cross Referencing Related Patent Applications

You should cross-reference any related patent applications by including them in the Cross Reference section of your patent application. Cross-referencing a previously filed provisional patent application is important and mandatory if you want to benefit from the early filing date of your provisional patent application.

The reference to a provisional patent application can be done either in the patent application specification or the patent application datasheet.

You can cross-reference an earlier filed provisional patent application by including the following text:

"This application claims the benefit of U.S Provisional Patent Application ###,###,###, filed on January 1st, 2020."

You can cross-reference an earlier-filed nonprovisional patent application by including the following text:

"This application is a continuation of U.S Patent Application Number ###,###,###, filed on January 1st, 2020."

Statement Regarding the Public Disclosure Of the Invention by the Inventor(s)

As you may know, an inventor cannot patent an invention that he publicly disclosed or offered for sale more than 12 months prior to filing either a provisional or nonprovisional patent application. So, an inventor must include a statement that lists whether you publicly disclosed your invention prior to filing a patent application.

Publicly disclosing an invention includes publishing the invention online, writing about it in a magazine, and listing it on your website. If you publicly disclosed your invention, you should include such disclosure in your patent application.

Statement Providing the Field of the Invention

Every U.S patent application must include a statement as to the field that the subject matter of the claimed invention relates to. Applicants can title this section as the "Technical Field" of the invention. For example, if you want to patent a computer processor, the field would be "Electronic Digital Data Processing."

Description of Related Prior Art

Every applicant for a patent must conduct a prior art search prior to preparing his patent application. The applicant must include a description of the prior art that his related prior art search turned up.

Applicants should include prior art that's similar to their invention and how the invention they're currently seeking to patent differs from that art. Inventors can point to prior art and explain how their invention solves problems that prior art has not been able to solve.

Applicants can title this section as the "Background Art" section in their patent application.

Brief Summary of the Invention

According to the USPTO, every patent application should include a brief summary of the invention that comes before the detailed description of your invention.

The summary of your invention should be able to describe the specific invention you're seeking to protect to the public, as well as the patent examiner.

The summary of your invention should explain how your invention operates, as well as the purpose of your invention. When writing a summary for your invention, make sure to use easy to understand and clear terms.

You want an ordinary person to be able to understand what the invention you're patenting is.

Description of the Invention's Drawings

Most applicants will and should include drawings of their invention because drawings help fill in the gaps that are left by the written description. An applicant must provide a brief description of each of the included drawings.

When describing a drawing of an invention, an applicant should refer to the different drawings or figures by identifying the figure or drawing number. Applicants can refer to different parts of the same drawing by using reference numerals or letters.

A Detailed Description of the Invention

After you've prepared and included a brief description of the invention and a brief description of the drawings, it's time to add a detailed description of your invention.

You will know that you have satisfied the detailed description of your invention requirement if your description will enable a person skilled in the field of your invention to understand how to make your invention, as well as how to use it without having to experiment too much with it.

Invention Claims

Invention claims are usually added after the detailed description of the invention. No other material can be added to a sheet that has patent claims.

Every patent application should include claims, claiming the subject matter of the invention. Utility patents can include more than one patent claim. Patent applications typically have independent claims, as well as dependent claims.

Dependent claims usually refer to an independent claim and they limit the scope of the independent claim.

The broadest claims should be placed as the first claim, and all other, narrower claims should come after it.

Claims should be numbered consecutively in Arabic numerals.

If the patent examiner rejects and cancels a claim of an invention, the remaining claims should not be renumbered, they should retain their original numbering.

Abstract of the Disclosure

In the section after the patent claims, an inventor must include the abstract of the disclosure. The abstract of the disclosure is included to allow the public to quickly and easily get an idea of the nature and type of the invention disclosed in the patent application.

The abstract should disclose what's new about the invention. If your invention improves upon an existing invention, this should be pointed out in the abstract of the disclosure.

The abstract of the disclosure should identify the invention as one of the following:

  • A machine (how it operates)
  • An article (method for making it)
  • A chemical compound (identity and use of it)
  • A mixture of ingredients
  • A process (steps for the process)

The abstract of the disclosure should be included on a separate sheet of paper and organization wise, it should come after the claims of your invention.

Typically, abstracts should be no longer than 150 words, or one paragraph. The abstract should be concise and easy to understand.

If your abstract does not comply with these requirements, the patent office can reject it, requiring you to make changes before your patent application is examined.

Invention Drawings

Should You Include Them?

We often get asked whether a patent application should include drawings of an invention? The short answer is that drawings are required whenever they're necessary for the public or patent examiner to understand your invention.

Drawings are almost always required because they help explain how to make your invention and how to use it.

Drawings should show every feature of the invention you're claiming in your patent application.

Patent drawings must be included in your patent application because they cannot be added later because the patent office does not allow applicants to add new matters after an applicant's filing of his patent application.

Invention Drawing Requirements

The patent office requires that patent drawings be made with black ink on white paper. If you're filing your patent application online, you should save your patent drawings in PDF format. If you have drawings of your invention that you made by hand, you should scan your drawings and save them as a PDF and include them with your patent application.

Your invention drawings should be numbered, starting with 1, going up to whatever number of drawings you're including in your patent application.

All page numbers should be included on the top middle portion of the sheet of paper. That said, when we say the top, the number should not be placed in the top margin of the paper, instead, the number should be placed in the top middle portion of the sheet of paper after the margin.

Oath or Declaration

When preparing a patent application, an applicant must name the inventor or inventors responsible for inventing the invention claimed in a patent application.

According to the USPTO, every inventor for the invention claimed in the patent application must give an oath or declaration that (1) the application was made by or authorized by the declarant (person making the declaration), and (2) the person making the declaration believes himself to be the original inventor of the claimed invention.

Patent Application Fees

The patent application fees include:

  • Basic utility patent application filing fee: $75
  • Utility patent search fee: $165
  • Utility patent examination fee: $190
  • Utility patent issue fee: $250
  • Each claim in excess of 20 claims: $25
  • Each independent claim in excess of 3 claims: $115
  • Each additional 50 sheets in excess of 100 sheets: $100

What is the Most Important Part of a Patent Application?

The most important part of a patent application is the claims part of a patent application. Claims define the scope of the invention that's protected by the patent application. It defines what an inventor claims as his invention.

The claims portion of a patent application defines the scope of what the patent holder can stop others from doing with his invention. The broader the scope of a patent application, the more things a patent holder can restrict others from doing with his invention.

Parts of a Patent Application

At this point, you should know the different patent application parts. The USPTO has strict rules that must be followed by applicants for a utility patent and a design patent. Although the patent office allows inventors to prepare and file their own patent application, it does recommend that inventors hire an attorney to prepare, file, and prosecute their patent application. We covered all the main parts of a patent application. If you have any general questions or comments, please feel free to leave them in the comments section below.


what are utility patents

What Are Utility Patents?

Whether you're an inventor who wants to protect his invention or you're just interested in learning what a utility patent is, you've come to the right spot. The USPTO (United States Patent and Trademark Office) offers inventors the ability to protect their invention by obtaining a patent on them. So, what are utility patents? We will cover this below.

What Are Utility Patents?

Utility patents are an intellectual property right that allows patent holders to restrict others from using, making, selling, offering to sell, and importing his patented invention to the United States for a limited period of time. Utility patents last for 20 years from the date an inventor files his utility patent application with the patent office.

A utility patent can be acquired by an inventor who has created a new machine, invention, process, or composition of matter. Said differently, a utility patent can be obtained to protect how a product works and how it's used by the end-user.

Once a utility patent application is approved or granted by the USPTO, an inventor can stop others from using, making, and selling the patented invention or product.

An inventor does not have the right to control who uses, makes, and sells his invention until the patent office grants his patent application. While a patent application is pending at the patent office, an applicant cannot sue anyone for patent infringement.

Utility patents are a very important form of intellectual property rights that offer inventors tremendous protection and control over their invention. They allow inventors to exclusively profit from their invention by excluding others from making and selling the patented invention.

That said, obtaining a utility patent can cost a lot of money. A simple straightforward utility patent for a simple invention could cost anywhere from $8,000 to $15,000, with more complex inventions costing more than $15,000 to patent.

How to Get a Utility Patent For an Invention?

For an inventor to get a utility patent for his invention, he must prepare and file a utility patent application with the USPTO. Prior to preparing a patent application, an inventor must be able to describe how his invention works, as well as how his invention can be used by the end-user.

Also, an inventor cannot patent an invention or machine that has been patented by others or has been disclosed to the public. As such, an inventor must conduct a prior art search to determine that his invention is new and has never been patented or publicly disclosed.

It's critical to conduct a prior art search prior to preparing and filing a patent application. It's critical because patenting an invention costs a lot of money and if you find that someone else has already patented the same invention, it's not worth pursuing a patent because the patent office will reject your patent application if someone else has already patented the same invention.

That said, if your prior art search does turn up inventions that are similar to yours, you can proceed by patenting your invention by either filing a provisional patent application or filing a regular, nonprovisional utility patent application.

Although the patent office allows inventors to patent their own invention, they do recommend that applicants without experience patenting an invention hire an attorney to assist them with preparing their patent application, filing it, and prosecuting it.

After preparing a utility patent application, what should inventors do?

After preparing a utility patent application, an inventor needs to file his application with the patent office. When filing a patent application, an inventor must pay the patent office filing fees, patent search fees, and patent examination fees.

To obtain a utility patent, an inventor must be able to explain these two things in his patent application. Although an inventor does not need to have a working prototype of his invention to patent it, he must be able to describe in much detail how to make his invention and how to use it.

What Do Utility Patents Protect?

Utility patents protect the functional aspects of a new machine, invention, process, or composition of matter. Said differently, utility patents protect how an invention works and how an invention is used by consumers or others.

Utility patents allow inventors to restrict others from using, making, selling, offering to sell, and importing the patented invention to the United States for a limited period of time. Utility patents grant inventors this right for 20 years, starting from the moment an inventor files his utility patent application with the patent office.

The great thing about utility patents is that they protect how an invention works or how it achieves its desired result. This means that if someone else creates an invention that looks different from an inventor's invention but internally works the same way or uses the same steps to achieve the desired outcome, a patent holder will still be able to stop that party from using, making, and selling that product or invention.

That said, it is a patent holder's job to look for bad actors who are using, making, or selling his patented invention without his express permission and asking them to stop using it. The patent office only grants patent rights, it does not enforce them, instead, it's the patent holder's job to enforce his rights.

If an inventor finds someone who is making unauthorized use of his invention, he can send them a cease and desist letter, asking them to stop the infringing use of his invention.

If the party does not stop its unauthorized use, the patent holder can bring a lawsuit against the bad actor in Federal District Court for patent infringement.

If the patent holder is successful in his lawsuit against the bad actor, he may be able to obtain an injunction to stop the infringer from using, making, and selling the patented invention. In some circumstances, inventors can even obtain monetary damages for any losses the patent holder sustained as a result of the bad actor's infringement.

How Long Do Utility Patents Last?

Utility patents last for 20 years from the date an applicant applies for a utility patent application. If an inventor files a regular, nonprovisional patent application, the patent term starts from the date an inventor files his nonprovisional utility patent application.

On the other hand, if an inventor files a provisional patent application and then files a nonprovisional patent application that claims the benefit of an earlier-filed provisional patent application, an invention will have a priority date of provisional application and the patent term would start from the date of filing the nonprovisional utility patent application. This effectively offers a patent term of 21 years.

For example, if an inventor files a provisional patent application on January 1, 2019, and files a nonprovisional patent application that claims the earlier filing date of the provisional patent application on January 1, 2020. The patent term would be 20 years and the patent would expire on January 1, 2040. The patent term begins at the time of filing the nonprovisional patent application.

Note: If an inventor chooses to file a provisional application, he should know that a provisional application can never turn into a granted patent, meaning that for an inventor to obtain a patent, he must file a regular, nonprovisional patent application that relates to an earlier-filed provisional application.

A nonprovisional patent application must be filed within 12 months of filing a provisional application. If a nonprovisional application is not filed within the 12 month grace period, a provisional application will be deemed to have been abandoned and the application will lose the early filing date obtain by the provisional application.

Can a Utility Patent Be Renewed After It Expires?

A utility patent cannot be renewed after it expires. Once a patent expires because the patent term has ended, it cannot be renewed. At this expiration of the patent term, the patented invention falls into the public domain, meaning that anyone can use, make, and sell the patented invention without having to obtain the patent holder's permission to do so.

Inventors often seek to prolong their monopoly over an invention by coming up with improvements to their existing invention and patenting those improvements. That patent office allows inventors to patent improvements to an invention so long as some requirements are met.

For example, if an inventor had a patent on a chair for 20 years and the patent expired, the inventor may be able to obtain an improvement to such an invention, such as developing a rocking chair.

In this example, while an inventor may have an improvement patent for a rocking chair, he can only stop others from making a rocking chair but he cannot stop others from making a regular chair that was once patented.

What is the Difference Between a Utility Patent and a Design Patent?

The difference between a utility patent and a design patent is that a utility patent protects how an invention works and how it's used by others, whereas a design patent protects how an invention looks or its appearance.

For example, if you have a pair of nail clippers, a utility patent can be obtained to protect how the nail clippers work and how a person uses the nail clippers to clips his nails.

In this example, a design patent may be obtained to protect how the nail clippers look, but to obtain a design patent over the appearance of nail clippers, the nail clippers must have a new and unique appearance that no other nail clippers have.

Design patents cannot be used to protect the functional aspects of the nail clippers because design patents can only be used to protect purely aesthetic aspects of nail clippers.

How Much Does it Cost to Obtain a Utility Patent?

Obtaining a utility patent on a simple and straightforward invention usually costs anywhere between $8,000 and $15,000, depending on the complexity of the invention you're seeking to patent, as well as the geographical location of your attorney. Attorneys in different places charge different amounts.

If you can't afford an attorney, you should consider hiring a patent agent to assist you with the preparation of your utility patent application, filing it with the patent office, and prosecuting for you. Patents agents are qualified and licensed by the patent office to assist inventors with patenting their inventions.

What is a Utility Patent?

At this point, you should know that a utility patent is an intellectual property right that is granted to inventors who create new inventions, machines, processes, and patent them with the patent office. A utility patent allows patent holders to control who uses, makes, sells, and imports the patented invention to the United States. A utility patent lasts for 20 years from the date an inventor files his patent application with the patent office. That said, once a utility patent expires, the patented invention falls into the public domain, allowing the public to use, make, and sell the once patented invention. If you have any general questions or comments, please feel free to leave them in the comments section below.


Design patent pending

Design Patent Pending

Inventors want to protect their invention as quickly as possible and display "patent pending" on their new invention or product to tell the world that they have taken the legal steps to protect their invention. We will discuss what design patent pending is, as well as how you can protect your design with the patent-pending designation.

What is Design Patent Pending?

Design patent pending is a legal status for an invention that can be obtained by filing a design patent application with the USPTO (United States Patent and Trademark Office). An inventor who files a design patent application with the patent office can immediately begin using the "patent pending" designation on the article or product that bears his patent-pending design.

An inventor can continue to use this designation until the patent office either grants or denies his patent application. If the patent office grants an inventor's design patent application or denies it, an inventor can no longer use the designation.

Many inventors file design patent applications to not only patent their invention but also to gain the ability to use the patent-pending designation. The designation can be a good tool to market your invention to the public and investors who see value in a product that is patent pending.

The main function of patent-pending is that it serves to inform the public that an inventor has taken the legal steps to protect his invention and that infringers may be legally liable for infringing upon an inventor's design patent.

Note: Patent-pending status does not allow inventors to stop others from using, making, or selling the patent-pending design. An inventor can only stop others from using, making, and selling an article bearing the inventor's design when the patent office grants the inventor's design patent application.

How to Get Design Patent Pending?

An inventor can get a design patent pending by preparing a design patent application, filing it with the USPTO, and paying the applicable filing fees.

The patent office allows inventors to prepare, file, and prosecute their own design patent application. However, they do recommend that inventors seek the assistance of an experienced patent attorney to prepare their patent application, make drawings for the design, and to file it with the patent office.

Once you or your attorney file a design patent application with the patent office, you can immediately begin marketing and advertising your product as patent pending. You can add the term patent pending to the product bearing your design, product packaging, and product materials.

Patent-pending status is immediate, the moment you file your design patent application, you can begin using the patent-pending designation.

How Long Does it Take to Get a Design Patent Pending?

Patent-pending status can be obtained as soon as you file your design patent application with the USPTO. The time it takes to get a design patent pending depends on how much time it takes you or your attorney to prepare a design patent application and file it with the USPTO. It typically takes attorneys between 1 week to 2 weeks to prepare and file a design application. The time it takes your attorney depends on how busy your attorney is and the complexity of the design you want to patent.

How Much Does it Cost to Get a Design Patent Pending?

It costs anywhere from $50 to $200 to file a design patent application. Micro entities pay $50 to file a design patent application, small entities pay $100, and large entities pay $200. That said, the majority of the cost associated with patenting a design is attributable to the attorney fees that an inventor has to pay an attorney to prepare a design patent application.

Attorneys typically charge $2,500 to $3,500 to prepare and file a design patent application. Lawyers may charge more if they have to communicate with the patent office on your behalf or if they have to make amendments or changes to the patent application. So, in total, you're looking at approximately $3,000 to patent your design.

When Can You Use Design Patent Pending?

You can use the "patent pending" designation as soon as you file a design patent application with the USPTO. You can use the designation on an article that incorporates your design, on product packaging, and other written materials. Just remember to make it clear as to what is patent pending in your invention.

Is Patenting Your Design Worth It?

Patenting your design is worth it if you know that you can profit from your design. If you have a product that sells well and it sells well because of its appearance or design, you should patent the design because it provides you with value. On the other hand, if your design isn't unique and doesn't add any value to the article to which it is applied, then it may not be worth your time and money to patent it. That said, you should consult with your own attorney to determine whether your design is worth patenting.

Can You Sell Something that is Design Patent Pending?

If you've applied your design to an article, you can sell the patent-pending article without any issues. Make sure to include the term "patent pending" on your article to serve as a warning to others who may want to copy your design. Of course, including the warning does not guarantee that your product won't be copied and sold by others, but it makes proving intentional patent infringement much easier because the designation itself serves as notice to others that the article will be legally protected in the future.

Going from Design Patent Pending to Patented Design

It currently takes the patent office 20.5 months to either grant or reject a design patent application. While a design patent application is pending, the patent examiner may communicate with the patent holder or his attorney to ask any questions or request that changes be made to the patent application.

However, most design patent applications are approved without any issues. So, hiring an experienced patent attorney to prepare and file your patent application is the best thing you can do to ensure that the process goes as smoothly as possible. Experienced patent attorneys may charge more upfront, but they may save you money in the long run.

Once the USPTO grants your design patent application, you will be able to restrict others from using, making, selling, offering to sell, and importing an article or product that bears your design, without your express permission. If a bad actor uses, makes, or sells your design without your permission, you can send them a cease and desist letter, asking them to stop their infringing behavior.

If they don't comply, you can enforce your rights by bringing a lawsuit against them in federal district court for patent infringement.

How to Speed Up Getting Your Design Patented?

You can speed up the examination and processing of your design patent application by filing a request for expedited examination using Rocket Docket. Rocket Docket cuts the time required to obtain a patent grant from 21 months to less than 6 months. Some applicants have reported obtaining a patent in as little as 4 months. So, if you have a design that you not only want to get patent-pending, but you actually want to patent, rocket docket will help you jump the line and get your patent approved in as little as 4 months.

Design Patent Pending

At this point, you should know that design patent pending means that an inventor has applied for patent protection for his design, but the patent office has not yet approved his patent application. Applicants who have a design that is patent-pending can use the patent-pending designation to advertise their product as pending a patent and they use the designation to ward off potential bad actors who may copy and sell the design. If you have any general questions or comments, please feel free to leave them in the comments section below.


Rocket docket for design patents

Rocket Docket Design Patents

If you've just finished working on a design, you probably want to patent it. Patenting a design in the United States takes 20.5 months from the date an applicant files a design patent application with the USPTO (United States Patent and Trademark Office). However, the USPTO offers an expedited service to inventors that allows them to patent their designs quicker. This expedited service is known as Rocket Docket.

What is Rocket Docket?

Rocket Docket allows design patent applicants to request an expedited review of their design patent application. Some inventors have patented their designs using rocket dock in under six months. They have been able to do so because if a request for expedited review is granted, an inventor's patent application is expedited and is given priority to other design patent applications.

That said, to qualify for expedited examination of a design patent application, there are some requirements that must be met. An applicant must:

  • Make a request for expedited examination to the USPTO
  • Pay the basic filing fees for a design patent application
  • Pay the fee for the expedited examination
  • Prepare a complete design patent application that is free of any errors
  • The application must include black and white drawings of the design he wants to patent
  • Have conducted a preexamination search
  • Prepare and include a statement that the preexamination search was conducted
  • Include a statement as to the field of the search must be included
  • Include an information disclosure statement must also be included

Can you Expedite the Review of Your Design Patent Application?

Yes, you can expedite the review of your design patent application. However, to qualify for expedited review of your application, you must satisfy the requirements we listed above, as well as filing a request for expedited examination, along with additional fees for the service to expedite the processing of your design application. So, how do you get your design patent application expedited? Read below to find out.

How Do You Request Expedited Design Patent Application Review?

An applicant for a design patent who wants to expedite the review of his design patent application can do so by filing a design patent application along with a request for expedited design patent application review. If you're filing your design patent application online, you can submit your design patent application along with a "Request for Expedited Processing, Design Rocket Docket."

That said, if you've already filed a design patent application and you want to expedite it after the filing of your patent application, you can do so by making an online request for expedited examination. If the patent office grants your request for expedited examination, your design patent application will be expedited throughout all steps of the process.

The patent office recommends that if you know that you want to expedite your patent application, you should file both the design patent application and request for expedited examination together to expedite the process. Filing them separately may cause some delays.

Applicants who request expedited examination will receive a confirmation from the patent office indicating that the examination process has been expedited.

How Much Does Rocket Docket Cost?

According to the USPTO, requesting expedited examination of a design patent application via Rocket Docket costs $225 for micro-entities, $450 for small entities, and $900 for large entities. This expedited examination fee is charged in addition to the normal filing fee for design patent applications.

The fee for expedited design patent application processing must be sent along with the request for expedited examination. If an applicant fails to send in the fee for expedited examination, the patent office will send you a notice of deficiency, if you don't respond to the notice, your design patent application will not be expedited and will be processed normally.

How Much Time Does It Take to Get a Patent With Expedited Examination?

According to applicants that we interviewed, it takes 4 months to 6 months to get a design patent application approved using expedited examination with rocket docket. Without using expedited examination for a design patent application, it typically takes the patent office 21 months to either approve or deny a design patent application.

Using rocket docket prioritized examination reduces the amount of time it takes the patent office to approve a design patent application by 75%. Applicants who have used rocket docket expedited patent examination have reported receiving their first office action within 1 month of filing their design patent application.

Application Completeness for Expedited Review

For an applicant to qualify for an expedited review of his patent application, the applicant must have not made any mistakes in preparing the patent application and patent drawings. The applicant must have included the proper filing fees and expedited review fees. The application must be 100% complete and free of any errors for it to be ready for review and examination by a patent examiner.

If a design patent application is complete but fails to comply with the requirements for expedited review, the patent office will notify the applicant of the deficiency and will give the applicant an opportunity to address and fix the deficiency.

Once an applicant fixes the deficiency, he must submit a renew request for expedited examination. If an applicant does not address any deficiencies with the request for expedited examination, the design patent will not be expedited and will continue through the patent process as would a regularly filed design patent application.

Rocket Docket Pre-examination Search

To expedite a design patent application using rocket docket, an applicant must conduct a pre-examination search to assist the patent office with their prior art search. The preexamination search must be thorough and complete. If the patent examiner suspects that you have not conducted a thorough search, he might reject your request for expedited review.

So, it's important that you conduct a professional prior art search for the design you're trying to expedite. Make sure to do as thorough a search as possible because if the design patent is litigated, you may have to answer questions about the search that you performed.

Benefits of Rocket Docket For Design Patents

Today, more than ever, bad actors around the world are copying the designs of others and selling them as originals. So, to combat this infringement, rocket docket expedited examination, allows inventors of new designs to quickly patent their designs to enforce their patent rights against bad actors who copy and profit from their original designs.

Design patents only allow inventors to enforce their rights once the patent office grants their design patent application. Prior to the patent office granting a design patent application, an inventor cannot stop others from copying, making, and selling his design.

However, once the patent office grants an inventor's design patent application, a patent holder will be able to enforce his right to stop others from using, making, selling, and importing his patented design to the United States.

The patent office is not responsible for looking for infringers and stopping them. It is the patent holder's duty to find those infringing upon his patent and asking them to cease the infringing activity.

If they do not respond to a patent holder's request to stop using, making, or selling his patented design, the patent holder can bring a lawsuit for patent infringement against the bad actor.

If the patent holder is successful in his lawsuit against someone copying and selling an article bearing his design, he will be able to obtain an injunction to stop them from engaging in activities that infringe upon his patent.

Also, in some circumstances, patent holders may recover monetary damages caused by the infringer using the patent holder's design without his permission.

Rocket Docket Expedited Design Patent Examination

If you have a design that you want to patent but don't want to wait 20+ months for the patent office to approve your design patent application, you can make a request to the patent office for expedited processing of your patent application.

Under expedited processing, applicants have reported having their design patent applications approved within 4 to 6 months of filing their design patent applications. It currently costs between $225 and $450 for inventors to expedite the review of their design patent applications. The fee is reasonable considering the time savings associated with expediting your application.

For some inventors, obtaining a design patent quickly is very important because it enables them to stop others from copying and selling the patented design without their permission. That said, if you have any general questions or comments, please feel free to leave them in the comments section below.


What is patent novelty?

What is Patent Novelty?

If you have a great invention or design that you want to patent you probably heard that your invention has to be novel in order for it to qualify for a patent. We will explain the novelty requirement in great detail below.

What is Patent Novelty?

For an inventor to be able to obtain a patent, he must show, among other things, that his invention is novel (new). The novelty requirement prohibits inventors from patenting inventions that have been patented in the past or inventions that an inventor has publicly disclosed, offered for sale, or sold more than one year prior to filing a patent application with the USPTO.

Said differently, if you want to patent an invention, you cannot patent something that has already been patented or an invention that you have publicly disclosed more than one year prior to filing a provisional or nonprovisional patent application.

The novelty requirement was added to prevent people from patenting the same inventions over and over again. If an inventor publicly disclosed his invention or offered it for sale more than one year prior to filing a patent application, he will not be allowed to patent it because the patent office considers it as prior art that prohibits patenting it.

So, does your invention pass the novelty test?

To determine whether your invention passes the novelty test, you should hire an attorney to perform a patent search (commonly known as a prior art search or a novelty search) and a search of public databases to determine whether someone has already disclosed or patented the invention you want to patent.

When conducting a prior art search, your attorney will do his best to prove that your invention is not new. Approaching a search this way allows your attorney to document similar inventions and discuss the differences (if any) between them and your invention.

Attorneys typically perform a prior art search by performing a search of the patent database and all relevant publications. For example, if you want to patent a glucose-measuring medical device, your attorney will search medical publications that discuss new glucose measuring technology.

That said, no prior art search is perfect, sometimes an attorney's search will not turn up any prior art even after a patent is granted.

So, once you've satisfied novelty, what else do you need to show to patent your invention?

In addition to the novelty requirement, an inventor must show that his invention has patentable subject matter, is nonobvious, and serves some useful purpose. The two most difficult requirements to satisfy are invention novelty and nonobviousness. Now that you know what novelty is, what's nonobviousness?

Nonobviousness requires an inventor to show that his invention was nonobvious at the time he filed his patent application. That is, the inventor has to show that an ordinary person, experienced in the field of the invention would not believe the invention to have been obvious.

For example, if you're developing a new drug that promises to cure cancer by combining new and unique ingredients that have never been combined before, you have a pretty good shot at satisfying the nonobviousness requirement.

That said, this is just an example we used to illustrate the nonobviousness requirement, your invention does not have to be this nonobvious to qualify for a patent, nevertheless, it has to satisfy this requirement.

Now back to patent novelty, why is it important? Read below to find out.

Why is Patent Novelty Important?

Patent novelty is important because it prevents people from re-patenting inventions that were already patented. Just imagine a world where a patent on an invention expires and another party patents the same invention. Patents on inventions would last forever.

This is why we have a novelty requirement, to prevent patents from lasting indefinitely. This frees up technology and allows inventors to improve upon technology that was once patented.

The second benefit of having a patent novelty requirement is that it prevents others from patenting inventions that have already been disclosed to the public. For example, if you publish new battery technology in a car magazine, others won't be able to patent it after you've published it because it's considered as prior art that prevents patenting publicly disclosed inventions.

How Do You Keep Your Invention Novel?

If you don't want your invention to become prior art, here are a few tips:

  • Don't discuss your invention with anyone, including friends and family
  • Don't publish your invention on any websites, magazines, or journals
  • Don't offer your invention for sale
  • If you need to talk about your invention with anyone have them sign a confidentiality agreement
  • Don't sell your invention

Now that you know what you shouldn't do to keep your invention novel, what if someone discloses your invention?

If someone publicly discloses your invention, you should immediately prepare and file a patent application with the patent office. Filing a provisional patent application is a quick way to protect your invention by obtaining an early filing date.

Once you have a filing date, anyone else who submits a patent application to the patent office after you've filed a patent application won't be able to patent the same invention.

Confidentiality Agreement

If you need the assistance of anyone with your invention and you're still not ready to file your patent application, consider having a party sign a confidential agreement before disclosing your invention to them. By having them sign a confidentiality agreement, you're not publicly disclosing your invention.

That said, confidentiality agreements are not perfect because sometimes a party to an agreement may not keep your invention confidential. So, if someone discloses your invention, you should immediately contact an attorney and ask them about filing a provisional application to secure a filing date for your invention.

Securing a filing date is really important in the U.S because it uses a "first to file system" that awards the patent to the first person who files a patent application with the USPTO. So, it's best to contact a licensed patent attorney and ask them about the option of filing a provisional application.

Filing a Provisional Application

Inventors often choose to file a provisional patent application instead of filing a regular, nonprovisional utility patent application to protect their invention because provisional applications are much easier to prepare and file, they're also a lot less expensive than nonprovisional applications.

Provisional applications are great in the U.S because they allow inventors to secure an early filing date for their invention while they continue to work on their invention.

While the patent office allows inventors to prepare and file provisional patent applications on their own, they do recommend that applicants hire a patent attorney to assist them. They make this recommendation because patent law is complex and making minor mistakes could cause costly problems down the road.

One thing to note is that provisional applications do not turn into patents, so if you file a provisional application to secure an early filing date for your invention, remember that you need to file a nonprovisional utility application to patent your invention.

That said, once you file a provisional application, you have 12 months to file a regular patent application. If you don't file a regular, nonprovisional application within the 12 month grace period, your application will be abandoned and you will lose the benefit of your early filing date, so don't forget to file a regular application!

Check out this awesome, straightforward guide to filing a provisional patent application.

That said, before filing a provisional patent application, you may want to speak to your attorney and ask them about how you should proceed with protecting your invention.

Novelty Abroad

You may or may not know that a patent issued by the USPTO (United States Patent and Trademark Office) only protects inventors in the United States. That is, an inventor can only restrict others from using, making, selling, and importing the invention to the United States.

A U.S patent does not offer protection in countries other than the U.S. So, if you want protection abroad, you will need to file a patent application in the country where you want protection.

Other countries aren't as forgiving as the United States. The U.S gives inventors a 12 month grace period to file a patent application after disclosing their invention, other countries require absolute novelty, meaning that the invention has never been disclosed or offered for sale.

Many European countries require absolute novelty, meaning that if the inventor or any other party publicly discloses the invention anywhere in the world, the inventor will be barred from patenting his invention.

So, if you anticipate that you want protection overseas, make sure that you do not disclose your invention to anyone, as disclosing it make cost you the opportunity to patent your invention.

Novelty Requirement to Patent an Invention

At this point, you should know that to patent your invention or design, it must be novel, meaning that your invention has never been publicly disclosed by you or others. Also, you must not have sold or offered the invention for sale more than 12 months prior to filing a patent application with the patent office.

That said, if you want to protect your invention, research the patent laws where you want to patent your invention because some countries don't allow any disclosure of the invention before patenting it. 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 ****ENTER HERE****

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.


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.