FREQUENTLY ASKED QUESTIONS ABOUT PATENTS

1. Do I have to file a patent to practice my invention?

No. You are not required to file a patent to practice your invention. But without patent protection, you risk your invention being copied by others.

2. Can a person or entity who has already obtained a patent on the same invention, stop me from practicing the invention? 

Yes. A patent gives the owner of the patent, exclusive constitutionally bestowed rights to stop others from practicing the invention described in the patent. This falls under patent infringement.

3. What are the other things to remember when deciding whether to patent an invention or not?

Two other things to contemplate about are money and time. Obtaining a patent costs money in terms of filing fees, maintenance fees, and attorney fees. It is up to the inventor to evaluate the cost benefit of filing and maintaining a patent.

4. When should I file a patent?

You should file a patent application before you disclose your invention to the public, such as seminars or trade shows, or even before signing a potential license agreement with a third party.

5. What benefit does a patent give?

Once a patent is granted, it gives the owner of the patent rights to exclude others from using/copying, selling, offering for sale and importing the invention from another country.

6. Who should file a patent application for an invention?

Inventors, owners and individuals or organizations with sufficient proprietary interest in the invention can file a patent application for an invention.

7. Where do I file my patent?

You need to file patents in countries in which you wish for patent protection. Many inventors choose to file in the United States because the United States is one of the largest economies in the world. Other regions that people consider are Europe, Japan, China, Brazil, and India.

8. Do I need a patent agent to file a patent application at the USPTO?

No, you do not need a patent agent to file your patent at the USPTO. You can file it pro se, that is, by yourself. However, the USPTO strongly recommends that, “all prospective applicants retain the services of a registered patent attorney or patent agent to prepare and prosecute their applications”. Visit http://www.uspto.gov/web/offices/dcom/gcounsel/oed.htm for a list of registered patent attorneys and agents in your area.

9. How does the services of a patent agent help in the preparation and prosecution of applications at the USPTO?

Time is a scarce resource. You get what you pay for. Even for filing an application at the USPTO and receiving a filing date (the importance of which is described below), there are technical and legal requirements to be met.

A patent is only as good as what is claimed and how it is described in a patent application. A strong patent protection requires good patent application drafting skills. A good patent helps to prevent others from designing around your invention and prevent others from entering the same market space. An experienced patent attorney or agent brings such skills in drafting patent applications. In addition, the attorney/agent also helps in prosecuting the application before the USPTO. Once an application is examined, the USPTO sends out office actions- official communications to the inventor, and may reject or allow based on the merits of the patent application. The attorney/agent, on behalf of the inventor, can present arguments to meet the legal and technical thresholds set by the USPTO and help in obtaining a patent.

10. Why is the filing date important?

Filing date is one of the important criteria on which your right to stake exclusive rights to your invention is decided. The earlier the filing date, the better the chances that no one else will obtain a claim to the same or a similar invention.

11. I am not a US citizen, but my invention was made in the US. Can I file for a patent in the US?

You can file your patent application in the USPTO.

12. I am not a US citizen, but my invention was made in the US. Should I file for a patent in the US or the country of my citizenship?

Any person can file for a patent in the US. However, if the invention was made in the US and the inventor wants to first file a patent outside the US, the inventor has to apply for a foreign filing license.

13. How long does it take to file a patent application at the USPTO?

It takes anywhere from one week to more than a month to file a patent application. The main factor that determines the time taken is drafting a patent application, which usually depends on the nature of the invention.

Complex inventions, such as inventions in biotechnology and life sciences take around 2-3 weeks to draft a good patent application.

14. Is it necessary to visit the USPTO to get a patent issued?
No.

15. Who is an inventor in a patent application?

Anyone who has contributed even partly to at least one concept (inventive embodiment) listed in the claims section of a patent application is eligible to be an inventor in a patent application.

16. Can an individual who is not the inventor file a patent application?

Yes. If the person filing the invention has sufficient proprietary interest in the invention, he or she can file a patent application for the same.

17. Are the contents of a patent application held in confidence by the patent agent? 

Yes. Patent agents are registered with the USPTO and they are required to maintain the confidentiality.

18. Are the contents of a patent application held in confidence by the USPTO?

Yes. Patent applications are held in strict confidence until they are published by the USPTO.

19. Is it possible to prevent publication of a patent application by the USPTO?
Yes.

20. Are individual inventors or small businesses eligible for discounts for USPTO fees?

Yes. There are micro entity and small entity statuses that can be claimed in order to obtain discounts for several USPTO fees.

21. Can I discuss my invention with others before I file a patent application?

Yes. But, you should discuss your invention with others only if they can maintain confidentiality of the information disclosed. If you are not sure, it is better to enter into a non-disclosure agreement between the two parties.

22. Is there a difference between patents and exclusivity?

Yes. Patents are granted by the USPTO and can encompass a wide range of claims. Exclusivity is exclusive marketing rights granted by the Federal Drug Administration (FDA) upon approval of a drug and can run concurrently with a patent or not.

23. What is the minimum I have to do in order to claim that I have an invention that is “patent pending”?

You have to file a patent application.

24. How can I get patent protection in many countries?

There are three options.
1. You can file separate patent applications in selected or all of the countries.

2. You can file a patent application in a Paris Convention country and then file separate patent applications in other Paris Convention
countries within 12 months of the filing date of the first patent application.

3. You can file an application under the Patent Cooperation Treaty (PCT). The PCT is an international treaty, administered by the World
Intellectual Property Organization (WIPO), between more than 140 Paris Convention countries.

Option 3 is the most cost-effective one.