The follow questions reflect the most common questions concerning IP issues.
If you have another question, please email us at info@JohnBrooksLaw.com to submit your question. We will reply as soon as we research your question and can provide an answer.
- I’m just generally interested in getting a Patent or a Trademark, can you provide some general information on the application process?
- Can I file an application on my own or can I work with someone to help me file a patent application on a Pro-Bono basis?
- Why should I get a Patent?
- Are there different types of Patents?
- When I should file my Patent Application?
- What is a Provisional Patent Application and should I use one?
- Should I get a Patent by myself, without the advice of a patent attorney?
- Should I get a Patent in countries other than the United States?
- I just applied for a Trademark and got a suspicious looking request asking for another type of registration, is this letter or email legitimate?
- Where can I find information on maintaining my patent and paying patent maintenance fees?
I’m just generally interested in getting a Patent or a Trademark, can you provide some general information on the application process?
A general description of patents, trademarks and copyrights can be found here at the U.S. Patent and Trademark Office (USPTO) website.
Patents are generally used to prevent others from making, using or selling your novel device or process. A good summary of the patent application process in the United States can be found here at the USPTO website.
Trademarks are generally used words, names, symbols or devices to indicate the source of goods or services and to distinguish them from the goods and services of others. A good summary of the trademark application process in the United States can be found here at the USPTO website.
Can I file an application on my own or can I work with someone to help me file a patent application on a Pro-Bono basis?
The USPTO is starting a program where some firms will work for certain clients on a pro-bono basis. Information on the program can be found here.
The USPTO is also offering services to help inventors file a patent application by themselves (called filing “pro se”). Information on this program can be found here.
Patents give the patent owner (the inventor or the party to whom the inventor legally transfers patent rights) the right to exclude others from making, using or selling the invention for 20 years.
Are there different types of Patents?
There are three different types of (non-provisional) patents granted from the US Patent and Trademark Office:
Utility Patents: This type covers inventions that produce a utilitarian result. A good resource for Utility Patents is the Patent Guide at the US Patent and Trademark Office … http://www.uspto.gov/patents/resources/types/utility.jsp.
Design Patents: This type of patent covers the unique, ornamental, or visible shape or design of a non-natural object. A good resource for Design Patents is the Design Patent Guide at the US Patent and Trademark Office … http://www.uspto.gov/patents/resources/types/designapp.jsp.
Plant Patents: This type covers asexually reproducible plants that use grafts and cuttings.
When I should file my Patent Application?
Generally, if you decide to file an application, you will want to file it as soon as you can. There are stiff penalties to not filing your application in a timely manner and many of the rights patent owners desire are dependent upon the date you file your application. Some of the penalties of filing late can preclude you from ever getting a patent. You should be diligent in turning your idea into a workable model and getting the correct Intellectual Property protection.
When you file your application might depend on when you are able to make a working model of your invention. This is important because you will want to know exactly how to make your invention work so that it can be adequately described in your application.
In considering when you want to file your patent, you will also want to consider when you plan to talk with potential users of the invention. Since this might qualify as a publication of the invention this could significantly effect your patent rights later. A publication can prevent you from getting certain foreign patents and it also might dictate when you need to file a US Patent to ensure you can get a US Patent.
What is a Provisional Patent Application and should I use one?
A Provisional Patent Application (PPA) is a method created by the US Patent Office where an invention can be documented and submitted to the Patent Office and be used to create an earlier filing date than the later submitted Patent Application (non-provisional).
It is typically a good process to use if you are not in a position to file a Regular Patent Application. This could be the case if you are interested in determining the marketability of your idea before you spend the funds to file a Regular Patent Application.
There are many important considerations to filing a PPA which might make it benefit or detrimental to you to file such an application. We recommend a decision on whether or not to file a PPA be made only after a thorough understanding of the invention and the inventors situation.
Information regarding provisional patents can be found at … http://www.uspto.gov/patents/resources/types/provapp.jsp
Should I get a Patent by myself, without the advice of a patent attorney?
It is possible to go through the patent application process as a layman and get an approved Patent. Many of the steps to the application process are well defined and purely procedural. However, the strength of the resulting Patent, when challenged by the marketplace and your competitors, will rely on the specific wording in the your patent application. The language in your application will define the bounds of your invention. An issued patent with incorrectly defined claims could provide a costly lesson.
The USPTO is now offering services to help inventors file a patent application by themselves (called filing “pro se”). Information on this program can be found here.
Should I get a Patent in countries other than the United States?
This usually depends on the likelihood that you will need patent protection in foreign countries. Points to consider in this decision is whether you expect to have a market in these foreign locations and whether you can afford to apply and defend an action is these countries. Foreign patent applications are very costly and should only be applied for if you believe the benefits outweigh the costs.
I just applied for a Trademark and got a suspicious looking request asking for another type of registration, is this letter or email legitimate?
When you apply for a U.S. Trademark, much of the contact information used in that application is publicly available after the application is accepted. Sometimes marketers will use that information to solicit services. Sometimes, their services are legitimate but many times the services offered are not. The USPTO has has a warning on its website about these solicitations at http://www.uspto.gov/trademarks-getting-started/non-uspto-solicitations. Another good summary of the issues can be found here. If you are contacted and would like to discuss the legitimacy of the solicitation, feel free to contact us.
Where can I find information on maintaining my US patent and paying US patent maintenance fees?
A good site for information on payment of US maintenance fees are at the following USPTO web pages:
- http://www.uspto.gov/web/offices/pac/mpep/s2506.html
- http://www.uspto.gov/patents-maintaining-patent/maintain-your-patent
The specific USPTO site that (1) populates maintenance fee information during the time-window you have to pay and (2) has links to ways to pay the fee is at (you’ll need to know the patent number and the patent application number):