Does a patent apply to my product?
A patent may be the right intellectual property (IP) protection for your product if it is an invention or improvement of a function or if it has a unique appearance. Products like the lightbulb, telephone, Bluetooth technology, and Amazon 1-Click have been covered by patents.
Contact MILS
If you need additional assistance, please contact MILS at 231-947-0122.
What is a patent?
Patents protect your business’s inventions. There are three types of patents: utility, design, and plant. Utility patents are for inventing a new or improved and useful process, machine, article of manufacture, or composition of matter. They are the dominant form of patent. In order for the invention to be protected, the patent must be granted by the United States Patent and Trademark Office (USPTO).
What protections do patents provide?
A U.S. patent gives the inventor the right to “exclude others from making, using, offering for sale, or selling” an invention or importing it into the US. Unlike infringing on a copyright or trademark, someone infringes on a patent even if they were not aware of the patent’s existence.
This is useful if you are basing your company on a new product or process and you want to prevent others from taking your market. It also can be useful to attract investment or to license your IP to someone else.
Utility Patents
How do I obtain a utility patent?
In order to get the patent approved, the patent must meet several conditions. While you may file a patent application on your own, a patent attorney is highly recommended as navigating the USPTO pro se may be complicated and/or cause avoidable delays.
Utility Patent Requirements
Eligible Subject Matter
Patent must be directed to a process, machine, manufacture, or composition of matter.
Patent may not be directed to laws of nature, natural phenomena, or abstract ideas.
For example, E=MC2 and photosynthesis are not patentable.
Utility
The invention must have a practical application or be useful in some way.
For example, a purely decorative design is not patentable.
Novelty
The invention must be new and not previously disclosed to the public.
The USPTO examiner will look for “prior art”, public knowledge or publications that predate your patent filing date, that disclose the invention your patent claims.
For example, known tools like sunglasses, without the addition of new features, would not be novel, and thus not patentable.
Non-Obviousness
Non-obviousness requires that the invention is different enough from any combination of prior art to warrant protection.
Written Description
The claimed invention must be described in sufficient detail that one skilled in the technical field can reasonably conclude that the inventor had “possession” of the claimed invention.
This requirement ensures that the inventor actually invented their claimed invention.
Enablement
The disclosure, when filed, must contain sufficient information regarding the subject matter of the claims as to enable one skilled in the technical field to make and use the claimed invention.
Process
File a patent application with the USPTO which must:
Describe the invention such that a person skilled in the technical field would know how to make and use the invention.
Include a set of claims that particularly point out and distinctly claim the subject matter regarded as the invention.
Be complete—no new matter can be added to the application after it is filed.
Include filing fees, which may be as low as $664 for a small entity or $364 for a micro entity.
You may choose to file a provisional application first.
A provisional application locks in a priority date for the material disclosed in the provisional application, but it is not examined by the USPTO.
Once either a provisional or a nonprovisional application is filed, you may refer to the product in the application as “Patent Pending.”
In order to keep the early priority date, the provisional application must be converted into a nonprovisional utility patent application within one (1) year of the filing date of the provisional application.
Prosecute your patent application to obtain your patent.
Prosecution is the back-and-forth negotiation with the USPTO to determine whether your invention is patent-eligible, new, and non-obvious in light of prior art.
The overwhelming majority of patent applications are rejected at least once; expect at least two rejections.
The timeline is highly variable, but you can expect at least 12-24 months before your patent application is granted by the USPTO.
Once a patent is granted, you pay periodic maintenance fees to keep the patent alive. Utility patents have a lifespan of 20 years.
Maintenance fees are due at 3.5, 7.5, and 11.5 years from issuance of the patent.
Fees are subject to change every year.
2024 small entity fees: $800, $1,800, $3,700, respectively.
2024 micro entity fees: $400, $900, $1,850, respectively.
If the patent is properly maintained, the patent will last for twenty (20) years from the filing date of the nonprovisional utility patent application.
Design Patents
A design patent is a patent that protects new, nonfunctional designs for functional products. They are for the ornamental appearance of a product rather than how the product functions. Designs such as the curvy Coca-Cola bottle, the Statue of Liberty, and the iPhone have been covered by design patents.
How do I obtain a design patent?
File a design patent application with the USPTO that includes drawings of a sufficient number of views of the ornamental design such that the entire design can be understood.
Note: Because design patents only protect the way that a product looks, it is critical that the drawings in the patent application precisely match the product you want to protect. Any differentiation between the drawings and the actual appearance of the product could compromise your design patent protection.
What do I do if…
I get a demand letter?
In order to find what will work best for you in your situation, contact an attorney who will be able to guide you through the process.
First, review the demand letter and determine if their patent claims even cover what you are doing. You will likely need a patent attorney to make a definitive assessment.
Someone is infringing my patent?
In order to find what will work best for you in your situation, contact a patent attorney, who will be able to guide you through the process.
There are several paths forward if you find that someone is infringing your patent.
A demand letter may work if your goal is to stop others from using your patent.
An offer to license may work if your goal is to monetize your patent.
If the other person will not willing stop using your patent invention and refuses to take a license to your patent, then you may need to consider filing a lawsuit against them to enforce your patent.