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Patent Questions and Answers

Common Questions

Is my invention patentable?


What is the cost of filing a utility/nonprovisional patent? 

 

What are the different types of patents?


Will my product infringe a known design patent? 

Is my invention patentable?

At a minimum your invention needs to pass limitations in the US laws 35 U.S.C. 101, 102, and 103. There are many caveats, and other challenges that can prevent an invention from obtaining a patent, but 35 U.S.C. 101, 102, and 103 are a start.


Patentable Subject Matter: 35 U.S.C. 101

An invention must be patentable subject matter in order for the invention to obtain a patent. Patentable subject matter is: (a) a process (e.g. a way of making a chemical), (b) a machine (e.g. a new power drill), (c) a manufacture (e.g. a new part for a power drill), or (d) a composition of matter (e.g. a new wood varnish).[1]  Even if the invention is a process, machine, manufacture, or composition of matter, the invention cannot be an abstract idea, natural phenomena, or law of nature.[2] 


Novelty: 35 U.S.C. 102

An invention must be novel in order for the invention to obtain a patent. An invention is novel if all the elements of the invention were not previously described by someone else. An invention is not novel if all the elements of the invention were: (a) described in a printed publication (e.g. an academic article, blog post, etc.); (b) in public use (e.g. a used known home remedy for treating a cold like mixing tea and honey); (c) on sale (e.g. a product on the market); or (d) otherwise available to the public (e.g. an invention in a Youtube video).[3]


Nonobvious: 35 U.S.C. 103

An invention must be nonobvious in order for the invention to obtain a patent. An invention may be novel (all the elements of the invention were not previously described by someone else), but the invention may be obvious. The meaning of obvious in patent law is similar to the normal definition of obvious.  In patent law, an invention is obvious if someone who is familiar with the type of invention would interpret the invention as not sufficiently different than previously known inventions.[4] 

    

[1] 35 U.S.C. 101

[2] MPEP 2106.04

[3] 35 U.S.C. 102; https://www.uspto.gov/patents-getting-started/general-information-concerning-patents#heading-5

[4] 35 U.S.C. 103; https://www.uspto.gov/patents-getting-started/general-information-concerning-patents#heading-5

What is the cost of filing a utility/nonprovisional patent?

The cost of filing a utility/nonprovisional patent depends on the technology that is being patented and the entity that is trying to obtain the patent rights.


The more complex the technology, the more time that is needed to prepare the application, and therefore a higher cost. What is considered simple or complex technology tends to follow: (simple) mechanical; (intermediate) electrical; and (complex) software, business methods, or pharmaceuticals.  


The estimated attorney’s fees for writing and submitting an initial utility patent application are $4,200 and up. The attorney’s fees for communicating, or prosecuting the patent after the initial application, also depend on the complexity of the work needed. The most common work performed by the attorney during prosecution of the patent are Office Action responses to rejections of the patent application. The patent office will very frequently (up to 90% of the time) make rejections of the initial application. In order to continue pursuing the patent application, an attorney must respond to the rejection(s) in the Office Action, where the Office Action responses have an estimated cost in attorney’s fees of $1,000 - $2,400, depending on the complexity of the response.  


Above are the estimated attorney’s fees.  There are other costs related to a patent application, which include USPTO fees. The USPTO fees vary depending on the size of the applicant. For the same application, a large company will pay more money in USPTO fees than an individual who doesn’t make more than about $190,000 per year. The initial filing fees for a utility patent for a micro entity (an individual who doesn’t make more than about $190,000 per year) are $430. Also, when the patent is issued there is a patent issue fee, which for a micro entity is $250. There can be other USPTO fees too.


For a full explanation of attorney’s fees and other costs, go to the Patents section of the firm’s website.

What are the different types of patents?

There are three types of patents: (1) utility patents; (2) design patents; and (3) plant patents.


A utility patent protects the functionality of an invention or “protects the way an article is used and works”.[1] A utility patent can be obtained for a “new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.”[2] The length of patent protection for a utility patent is 20 years from the filing date of the patent,[3] although the patent term can be extended if there are delays by the patent office during the application process.[4] 


A design patent “protects the way an article looks.”[5] A design patent can be obtained for “any new, original, and ornamental design for an article of manufacture.”[6] “An ornamental design may be embodied in an entire article or only a portion of an article,”[7]meaning the design can be the way the whole item looks or the way part of an item looks (e.g. the whole refrigerator or the handle of the refrigerator). Or, the design can be “ornamentation applied to an article” (e.g. a leaf and flower design on the surface of a jewelry box).[8] The length of protection for a design patent is 15 years from the date the design patent was granted.[9]


A plant patent protects a plant which was “invented or discovered in a cultivated state, and asexually reproduced.”[10]Also, there is the requirement that “the part of the plant used for asexual reproduction is not a tuber food part” such as a potato.[11]  “Algae and macro-fungi are regarded as plants, but bacteria are not”.[12]  The length of protection for a plant patent is 20 years from the filing date of the plant patent application.[13]

    

[1] https://www.uspto.gov/patents-getting-started/patent-basics/types-patent-applications/design-patent-application-guide#def

[2] 35 U.S.C. 101; https://www.uspto.gov/patents-getting-started/general-information-concerning-patents#heading-2

[3] 35 U.S.C. 154(a)(2)

[4] 35 U.S.C. 154(b)

[5] https://www.uspto.gov/patents-getting-started/patent-basics/types-patent-applications/design-patent-application-guide#def

[6] 35 U.S.C. 171(a)

[7] https://www.uspto.gov/patents-getting-started/patent-basics/types-patent-applications/design-patent-application-guide#def

[8] https://www.uspto.gov/patents-getting-started/patent-basics/types-patent-applications/design-patent-application-guide#def

[9] 35 U.S.C. 173

[10] https://www.uspto.gov/patents-getting-started/patent-basics/types-patent-applications/general-information-about-35-usc-161#heading-1; 35 U.S.C. 161

[11] https://www.uspto.gov/patents-getting-started/patent-basics/types-patent-applications/general-information-about-35-usc-161#heading-1

[12] Id.

[13] 35 U.S.C. 154(a)(2); MPEP 2701

Will my product infringe a known design patent?

The first part of the analysis is a determination of whether the patent, which the product is possibly infringing upon, is active. “[D]esign patents resulting from applications filed on or after May 13, 2015 have a 15 year term from the date of grant. However, patents issued from design applications filed before May 13, 2015 have a 14 year term from the date of grant.”[1] The date of grant is found in the upper right hand corner of the published patent, written as the “Date of Patent.”  . 


A design patent may have a shorter term if there is a terminal disclaimer. A terminal disclaimer occurs when the term of the patent ends prematurely giving the patent rights to the public. Notice of a terminal disclaimer can be found on the upper left hand part of a published patent. Also, in order to double check a terminal disclaimer, in case a terminal disclaimer was made after the publication of the patent, a terminal disclaimer should be checked on Public Pair[2] under the Image File Wrapper tab with the possible existence of a document with the document description of “Terminal Disclaimer Filed,” which will contain a terminal disclaimer if one exists.


Some adjustments in the patent term, which affect other types of patents, do not affect design patents. “Since the term of a design patent is not affected by the length of time prosecution takes place, there are no patent term adjustment provisions for design patents.”[3] This is different from utility or plant patents, where the patent term can be adjusted based on delays during the application process.[4] Also, design patents do not require maintenance fees, which are required for utility patents.[5] A utility patent is no longer active if maintenance fees are not paid,[6] although this does not affect design patents. 


Once it is determined that the design patent is still active, then there is a comparison of the accused product to the design patent. During the comparison there are two steps. 


The first step is to construe the scope of the design patent,[7] which means determining what the patent is protecting. A design patent has one written claim and as many drawings as necessary to show the design. The claim is usually very simple, but gives a general description of what the design patent is protecting. The drawings will show what is protected in detail. When looking at the drawings, if there is a portion of a drawing that has broken lines, that portion is not protected in the patent, but gives a reference to surrounding environment or the boundary of the design which is not included as part of the design. The surrounding environment means, something else near the design. Using a design patent related to table legs as an example, if the legs to a table are in solid lines and the top of the table is in broken lines then the top of table is not part of the claimed design. If there is a broken line between the legs of the table and the top of the table then that is a boundary of the design, but that element, or line, is not part of the design.


The second step in the comparison is to compare the accused product to the claimed design as construed.[8] The comparison of the accused product to the claimed design will be done under the “ordinary observer test.”[9] Under the ordinary observer test, an accused product infringes a design patent if in the eye of a hypothetical ordinary observer the two designs are substantially the same, such that the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other.[10] This comparison by the hypothetical ordinary observer will be “comparing the patented design with the article's overall appearance.”[11] “[T]he patented and accused designs need not be identical in order for design patent infringement to be found.”[12] There can be minor differences and still infringement. The comparison should be “evaluated in the context of the claimed design as a whole, and not in the context of separate elements in isolation.”[13] It is improper to do “an element-by-element comparison.”[14] Although small differences can have an effect on how the hypothetical ordinary observer views the overall appearance. The hypothetical ordinary observer will look at the claimed design and the accused product “giving such attention as a purchaser usually gives.”[15] “The ordinary observer is considered to be familiar with prior art designs, and when the differences between the claimed and accused designs are viewed in light of the prior art, the attention of the hypothetical ordinary observer may be drawn to those aspects of the claimed design that differ from the prior art. If the claimed design is close to the prior art designs, small differences between the accused design and the claimed design assume more importance to the eye of the hypothetical ordinary observer.”[16] Prior art designs are the designs that are similar to the claimed design and that existed before the claimed design.
   

[1] MPEP 1505.

[2] Public Pair is a USPTO website which shows the prosecution history of the patent, which includes the application documents and communication between the applicant and USPTO, among other information related to the patent. Public Pair is available at https://portal.uspto.gov/pair/PublicPair.

[3] MPEP 2710.

[4] Id.

[5] 35 U.S.C. 41(b)(3).

[6] 35 U.S.C. 41(b)(2).

[7] Curver Luxembourg v. Home Expressions Inc., 938 F.3d 1334, 1338 (Fed. Cir. 2019).

[8] Id.

[9] Id.

[10] Id.

[11] Hafco Foundry & Mach. Co. v. GMS Mine Repair & Maint., 2018-1904, at *10 (Fed. Cir. Mar. 16, 2020)

[12] Id

[13] Id

[14] Id

[15] Columbia Sportswear N. Am., Inc. v. Seirus Innovative Accessories, Inc., 942 F.3d 1119, 1129 (Fed. Cir. 2019)

[16] Id