Frequently asked questions about patenting (part 2)

in Sci-IP by

Syam

• Can I patent an idea that is just an idea?
No. Ideas that do not describe an identifiable embodiment or do not have any functionality are not patentable.

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

• When should I file a patent?
Usually when your invention is enabled and before you disclose your invention to public, for example through seminars or trade shows, or even before signing a potential license agreement with a third party.

• How do I know that my invention is enabled?
In simple terms, your invention is enabled if it functions as described by you and extensive experimentation is not required to practice it.

• Do I have to submit a working prototype of the invention when I am filing a patent application?
No.

• I do not know how my invention works, but it works. In other words, I do not know the scientific principle that makes my invention work. Can I file a patent application for the said invention?
Yes.

• Why should I file a patent application?
Once a patent is granted, its gives the owner of the patent, rights to exclude others from using/copying, selling, offering for sale and importing the invention from another country.

• Why should I file a patent application if my employer owns the rights to my invention?
You may benefit from financial and professional incentives that many employers give for generating intellectual property that adds value to the employer.

• My employer owns the invention I wish to patent. How should I go about filing a patent application for my invention?
Please contact your employers. They will guide you. In general, industries have patent liaisons or counsels and academic organizations have technology transfer experts who will guide you.

• My employer does not own the invention I wish to patent. How should I go about filing a patent application for my invention?
You can file a patent application all by yourself (called pro se) or with the help of a professional who has knowledge about patent laws.

• What kind of professional help should I seek for when I am filing a patent application myself?
Almost all countries have patent agents who are qualified to represent inventors and registered with the country-specific patent office. You may discuss your invention with patent agents or patent attorneys (who are also lawyers) after signing non-disclosure or confidentiality agreements with them.

• Am I required to go through a patent agent to file a patent application?
No. In fact, you can file patent applications pro se, that is, by yourself. However, most patent offices recommend that prospective applicants retain the services of a registered patent attorney or patent agent to prepare and prosecute their applications.

• Can I take the help of a patent agent in India for representing me at the United States Patent and Trademark Office (USPTO)?
No. Only candidates who pass the USPTO registration examination (also known as the patent bar exam) and registered at USPTO can represent inventors in the US. However, inventors may utilize the expertise of other individuals including patent professionals in other countries to prepare and submit applications. In this scenario, the inventor will be representing himself/herself at the USPTO. Similarly, only candidates who have passed the Indian Patent Agent examination and registered at the Indian patent office to practice Indian patent law can represent you at the Indian Patent Office.

• How does the services of a patent agent help in the preparation and prosecution of applications at the USPTO?
When filing an application at a patent office, 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 patent office. Once an application is examined, the patent office 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 patent office and help in obtaining a patent. This requires an understanding of the patent law and claim language.

• What are the contents of a patent application?
The main contents of a patent application are a written description of your invention called specification, drawings that help to describe the invention and specific claims that you seek exclusive protection for based on the specification. Among other things, it also contains information about the inventor, owner and representative of the invention.

• How long does it take to file a patent application?
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 good patent application.

• How long does it take to obtain a patent after filing an application?
In the US it may take from 1-3 years depending upon the area and the procedure for examination used. There are accelerated procedures available for an increased fee. In India it takes up to 8 years to obtain a patent.

• 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 United States because United States is one of the largest economies in the world. Other regions that people consider are Europe, Japan, China, Brazil, and India.

• I am not a US citizen, but my invention was made in the US. Should I file for patent in the US or the country of my citizenship?
Any person can file for a patent in US. However, if the invention was made in US and the inventor wants to first file a patent outside US, the inventor has to apply for a foreign filing license.

• I do not want to obtain a foreign filing license for my invention. What are the consequences?
Not getting a license and still filing outside will cost US patent.

Read the first part here

Syam Prasad Anand, PhD
Founder, Mainline Intellectual Property
Ardmore, Philadelphia, USA.

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