Read these 25 United States Patent and Trademark Office Tips tips to make your life smarter, better, faster and wiser. Each tip is approved by our Editors and created by expert writers so great we call them Gurus. LifeTips is the place to go when you need to know about Invention tips and hundreds of other topics.
When you first enter the world of invention patenting, you should expect some bureaucracy. The number of patents has now reached into the millions. The US Patent and Trademark Office, located in Alexandra, Va, is the best place to get updated and detailed information about how to apply for a patent.
If you follow the rules listed on its website carefully, you will save a tremendous amount of time that can elapse if your patent accidentally gets routed to the wrong place. You should address your patent correspondence to: Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450. You should include your full address including zip code. If you personally deliver your patent application, it will not get processed differently or sooner so a trip just for this purpose is unnecessary. During the patent process, some mail stops for particular mailed items will be assigned. Make sure you place these mail stop addresses before 'Commissioner of Patents' on your correspondence.
If you send additional correspondence to the office it should include all of the following that applies: patentee, title of invention, application number, patent number, assigned filing date and date of issue. Any papers presented in violation of the rules of the US patent office will simply be denied. Before sending anything via mail to the US Patent and Trademark Office, check its website at uspto.gov for the most updated information.
Even though the US Patent and Trademark Office has been delegated the job of issuing patents to new inventors and inventions, the idea of patenting was not a uniquely American one. The idea actually goes back to 1449 when King Henry VI awarded a patent for a unique way to manufacture stained glass. Without patents, countries would have little control over their economic destinies so, later in history, many of the US's 13 colonies has some form of patent law.
The principals were written directly into the US Constitution in Article I, Section 8, Clause 8. Still, at that time, no entity titled the US Patent and Trademark Office existed to manage the filing and granting of patents to new inventors. Additional patent acts were passed in 1790, 1793 and 1836, which provided the foundation for such a US patent office down the road.
During Reconstruction after the Civil War, there was a significant increase in the number of patents being filed and the need for efficiency was clear. It was the Patent Act of 1836 that established a patent office under the Department of State, which would ultimately lead to what is now known known as the US Patent and Trademark Office. This act also called for copies of patents to be distributed libraries around the country offering the general public easy access to them. In 1975, the US government patent office became the Patent and Trademark Office and is now one of about a dozen bureaus of the Department of Commerce.
All too often, when applying for a US government patent, inventors get frustrated with the process, time and bureaucracy it takes for patent approval.
Turn your frustration to appreciation, and think of it this way. Intellectual Property surrounds us in nearly everything we do. With so much invention, it really is amazing that the process works as well as it does.
And it took tremendous foresight from our earliest lawmakers to realize that the first step towards progress was to reward and protect inventors. Patent protection was granted by the American colonies as early as 1641, before any formal legal system was in place. And when the Constitution was framed nearly a century later, it contained the first legal provisions for protection.
Just like many inventions, the US Patent and Trademark Office has gone through many changes and much growth. While the US patent office was initially established in 1836 under the Department of State, the office now falls under the Department of Commerce, and employs more than five thousand people. On December 15, 1836, a terrible fire in the office destroyed all its records and many of its patent models.
These days, inventors use sophisticated drawings as well as photos to prove and explain their claims. Previously, inventors submitted models as well and they are an important part of US patent history. About 3,000 of the models were restored but another fire ruined another 76,000 more. In 1880 the model submission was deemed impractical and later the remaining ones were placed in storage. Many of the models have been lost since then although some ended up in the Smithsonian. Thanks to a few investors and patent model enthusiasts, some models have been saved and put in museums. But, since so many were lost and sold at flea markets, don't be surprised if you come across one. And keep it if you do. It may be worth money.
When you hire a professional to conduct a patent search for your invention, you should receive a patent search report that can be reviewed with your patent lawyer or agent.
Your patent search report should contain:
- a description of your invention written by the researcher to confirm they understand the nuances of your invention
- a list of the patents discovered during the search
- prose that explains the relevance of the found patents and their references
- a list of classes and subclasses searched
- a list of examiners consulted.
When on the US patent and Trade office website, key in the phrase, "Tools to help in searching" by patent classification. When you click on the phrase, a listing of all current U.S. classes and subclasses or patents will be displayed. Find the classes and subclasses that most closely match your invention to do a preliminary patent search.
Writing a patent application is not as straightforward as it seems. The importance of drafting good claims cannot be overstated for they delineate the boundaries of an invention.
Most patent agents and patent attorneys prefer to write claims as broadly as possible without triggering a negative response from the US Patent and Trade Office patent examiner. While a broad claim helps cover more aspects of the invention, though, it can also bring to light a greater range of prior art. Narrow claims are easier to obtain and enforce, but leave room for competitors to move in by making only minor modifications to the invention.
Patent information can be obtained online for patents granted from 1976 to the present with word searches using phrases to describe the invention information you're looking for.
The Boolean method allows you to use more than one word at a time. For instance you can key in ‘telescope' and ‘glass'. This will show you patents that relate to both of your chosen words. To expand or deepen your search, you can comb these related patents for additional words and phrases that you can then use in another search.
Although it is recommended that a professional such as a patent lawyer or patent agent conduct a formal patent search for your new invention, it is a wise idea to conduct your own preliminary patent search using the online database at the US patent And Trade Office web site.
In addition to this being a free patent search, the advantages of conducting your own preliminary search are:
- You will familiarize yourself with the patent process.
- You will learn about product categories and sub-categories, and about how to present patent materials.
- You might find patents of products in your field or industry, giving you competitive information
- You might just find another product like yours, eliminating the need for a more costly, formal search.
Just remember that the online database at the USPTO only goes back as far as 1975, so it would never be a compete search.
Just as there are rules regulating how written documentation is submitted in a US government patent office application, there are rules governing both drawings and photos as well. First, there are two ways to submit drawings: in black and white or in color ink. Color drawings should only be submitted if color is the only way to illustrate the subject matter, and they must be of sufficient quality that all details can be reproduced clearly in black and white.
Photographs can also be submitted but only if they, too are the only practical way to make your claim. Don't submit photos just because they make your product look good. This will not help your chances of obtaining a patent. Chemical or mathematical formulas can be submitted in drawing form if the above conditions apply. Any drawing submitted should contain as many views of the invention as are necessary to adequately make the claim.
You can also use detailed views of portions of your invention. When you scale your drawing, it must be large enough to show the item when it is reduced to two-thirds its actual size in reproduction. Make sure all lines in drawings will retain quality when reproduced. When numbering pages of drawings, use consecutive numerals beginning with 1 and do not place them in the margin.
After reading all these rules on photographs and drawings--and many more exist--it's easy to understand why many inventors get help with submitting an application to the US Patent and Trademark Office. You can also glean much information from the office's website, uspto.gov. Give your patent application several reviews before you send it in to ensure you have followed every rule or your application can be significantly delayed.
At the U.S. Patent and Trademark Office, Patent Examiners review patent applications to determine if they comply with basic rules and legal requirements. Patent examiners are professionals with expertise in disciplines like biology, chemistry, physics, chemical engineering, electrical engineering, mechanical engineering, computer engineering or computer science. And your patent application will find its way to an appropriate examiner.
Because patent examiners are well versed within their fields, it is to your advantage to hire a patent agent or patent attorney who is also an engineer or scientist.
Patent prosecution is the term used to describe the USPTOs patent application process from the time an examiner begins working on a non-provisional patent application.
It is first inspected to ensure that the application is complete with all required parts. Next comes the examination phase which can take from 6 months to three years. An examine will look at all claims and issue a First Office Action raising issues about the claims that you will have to answer.
A Second Office Action can be issued, and is often a final action on certain claims. After prosecution is over you will either wind up with some claims being allowed, all being rejected or all being allowed. There is an appeals process, but it does not often end in success.
Because the 1790-1975 patents can only be searched by patent number and/or current U.S. patent classification, you must either know particular patents to search, or identify patent classification numbers to search.
To use the patent number search page at the US Patent and Trademark Office Web site at http://www.uspto.gov:
. Type the patent number or numbers into the box. If you include more than one number, they should be separated by a space. It is not necessary to include commas or to capitalize the prefix.
. Anything you enter into the patent number search box that is not a patent number (other terms, operators like 'OR' or 'AND') will be ignored. The search will be conducted only on entries you make that are recognized as patent numbers.
Click the Search button. The database will be searched for all the numbers you provide, and a list of the documents matching your query will be returned, with the most recent ones first.
After the hard work and extended time it takes to obtain a patent, it's understandable how a person can think, “Well that's finally over” and wash their hands of the process.
Many people end up losing their patent protection simply because they moved and never updated the address on record with the US Patent and Trademark Office. When notices from the USPTO don't get to you, you may fail to pay the periodic maintenance fees to the USPTO, and your patent will expire before its term.
The US Patent Office offers a service to inventors called the Disclosure Document Program. It will help establish and maintain evidence of your rights as first inventor.
Under this program, the documents will be kept in confidence and without publication for two years. The disclosure document has to be formatted according to USPTO standards outlined on their web site and should include a complete description including a drawing. It should be accompanied by a letter requesting that the document be protected under the Disclosure Document Program, and signed by the inventor.
This two year period is neither a grace period, nor should it replace keeping a daily log of your invention and its progress.
It might seem absurd, if not impossible, to protect a color. But some colors intrinsic to the utility or design of a product have merited protection by the US Patent and Trademark Office.
Whether or not a color, or for that matter, texture, sound, or smell is patentable depends on the type of patent your intellectual property falls under, and whether the color has a useful purpose or exists for design purposes only.
If filing for a utility patent, the color can be protected only if it has a purpose. For example, red might be a patentable improvement for fire engines because the color has a useful purpose – to help identify the fire engine to other vehicles and pedestrians.
If the color has no utility, but is intrinsic to the design of the product or is distinct to the brand's recognition, the color could be protected under trademark law. And, many products have simultaneously filed for a patent to protect their product and a trademark to protect the product's marketable distinctions. The pink of Owens Corning insulation is a good example of a color that is distinct to the brand's recognition without having utility.
If you are searching for patents prior to 1976, the only way to do so online is by patent number. If you have a product that you want to do some research on, you can often find the patent number right on the product, the box it came in or in its manual.
You will recognize it because it looks something like this:
Utility Patent: 5,226,120
Design Patent: D488,297
By typing the patent number in the box provided on the search page, users will obtain access to a data sheet that contains the abstract, bibliographic data (such as, for example, the name(s) of the inventors, the entity that owns the patent, and the filing date of the application), the references that were cited in the application, and a listing of all of the claims of the patent. A copy of the full patent, with drawings, can be accessed by clicking on “Images” at the top of the data sheet.
Searching by product number is not the best way to find out if your invention has already been patented. But, if you want to look at similar inventions to see how they wrote it, what claims they've made and see their drawing, searching by patent number is very direct.
If you're conducting a preliminary search using the USPTO database and are having trouble, or just have general questions about patent searches, the US Trade and Patent Office gives you several ways to get your questions answered.
- FAQs – The USPTO web site (http://www.uspto.gov) has FAQs. Check to see if your question can be found here - http://www.uspto.gov/main/faq/.
- Customer Service Representatives are available Monday through Friday (except federal holidays) from 8:30 a.m. to 8:00 p.m. Eastern Time. Contact the USPTO Contact Center (UCC) for additional information at 800 786-9199 or 571 272-1000.
- From time to time, senior officials of the United States Patent and Trademark Office, as well as a representative from the Patent and Trademark Depository Library Program go online for a live question and answer period. Check their website for dates and times.
Companies in competitive fields who need to keep abreast of the developments of others in the filed often use patent seach methods as a way of finding out where their competitors are heading.
For this purpose, patent searches can be conducted by classification or sub-classifications to find all patents in a specific category, or you can search by company to see what a specific competitor is up to.
Business method patents are invention patents that are part of the larger family of utility patents. Classified as a process because there is no physical object, any company that develops a new way of conducting business or manufacturing can protect the method.
Henry Ford's invention of the assembly line is a historic example of a business method. A More modern one would be Amazon's 1-Click method of e-commerce. The method allows a repeat customer to bypass address and credit card data entry forms, because Amazon can access that information directly from the customer's account. Amazon was granted a patent on this business method in September 1999 (U.S. Pat No. 5,960,411).
Our country was founded on the ideas of free trade and ingenuity of individuals. American innovators have strengthened our developing economy since the birth of our nation. If you have a great idea in this country, protections are offered you by the US Patent and Trademark Office so that you can reap benefits in commercial markets from your abilities. This comes in the form of invention patenting. If you obtain a patent by following the strict standards of the patent office, your idea cannot be stolen by anyone else and sold for profit.
Many countries simply do not operate this way. Their governments do not allow for such remarkable freedom. The overall goal of the US Patent and Trademark Office is to promote industrial and technological progress so our economy remains strong and we continue to be a super power in the world. The US patent office is an agency of the US Department of Commerce. Its role is to grants both patents and trademarks. This office also advises the President, Department of Commerce and other related agencies on matters involving domestic and worldwide aspects of what is called intellectual property.
On a daily basis, the US Patent and Trademark office examines patent applications and either grants or denies them. It also records assignments of patents and offers free information about the patent process. If you are considering invention patenting for your new idea, the first thing you should do is peruse the website, uspto.org where you will find a wealth of information on how patents work and the procedures for filing. You'll find out what standards constitute a patent and what can and cannot be patented. You'll also find ways to search databases to determine if someone else has already patented your idea. This first step is essential so you don't accidentally spend time and money filing for a patent that will be turned down.
The US Patent Office administers the laws about the granting and issuing of patents and trademark registrations. They examine patent and trademark applications and decide whether applications qualify for patents and trademarks.
In addition they provide information such as published lists of issued patents and trademarks, maintain Depository Libraries, and maintain informational web pages. They also supply copies of registrations and forms.
A proper and complete US patent search requires a professional. It is a painstaking process in which multiple searches by category, sub-categories, patent numbers and keywords must be undertaken.
The US Patent and Trade Office has an online database that is limited. It is searchable only from 1979 to the present. They do have satellite libraries that are more complete, but not even all of them have the comprehensive list. And even if you do have access to the entire database, only a professional has the skill and expertise to identify and examine similar products to establish that your invention is unique and in what ways. There are many subtleties involved.
One of the ways you can delay receiving an issued patent is by not taking the time to research the application rules of the US Patent and Trademark Office. Since the number of patents filed and managed each year is so vast, these rules help cut down on the typical bureaucracy that often accompanies such government applications. But, you should be prepared for some frustration in the filing of a patent anyway, and in corresponding with the office.
Here is what must be included in your patent application: a written document with a clear description of claims, an oath of declaration, a drawing or drawings if necessary, and all filing, search and applications fees (fees change each October). Your application must be in English and written only on one side of non-shiny, durable, white paper. Each document in the application packet must be of the same size and have at least a two-inch margin at the top and a left side margin of 2.5 inches. The pages must be consecutively numbered and have no holes punched in them. You should use either 1.5 spacing or double spacing. Refrain from creating any type of fancy presentation when filing a patent application; it will not affect the examiner's decision.
If you receive word from the US Patent and Trademark Office that your application is not correct, make sure you respond with the proper corrections in the time frame stated or you might have to start over. You will be informed of your patent application number and filing date via mail. If you submit drawings with your patent, make sure you check the specific rules for filing such documents with the US patent office at uspto.gov.
One of the functions of the US Patent and Trademark Office is to govern the conduct and recognize those lawyers and patent agents who can practice before the USPTO. People who do not have the distinction of being registered before the office cannot represent inventors before it. To obtain such a registration, a person has to be of good moral character and a good reputation. He or she must also pass an examination. But, also critical, is the fact that these persons must prove they have the specific legal, scientific and technical qualities to properly enter the field of patent law.
If you choose to hire a patent lawyer or agent, you should make sure they are registered with the USPTO. They can then help you do an adequate patent search as well as write your patent application in such a way as to offer you the most protection for your invention. This is truly a unique and specific skill. If some information or description is missing, you may open yourself up to business or legal trouble, or your patent may simply be denied on the merits of the application. Registered patent attorneys and agents can prepare an application for a patent and conduct prosecution in the USPTO.
But agents cannot perform patent litigation, practice law or draw up a license if their state considers that practicing law. Remember, patent law is a complicated field of study; you can't just read a few books or search a few websites to grasp all the technicalities involved so hiring someone who proves they know the ins and outs of the US patent office will be money well spent.
|Jennifer Mathes, Ph.D.|