Areas of Practice
What do patents protect?
A patent protects a useful invention and certain types of designs. A patent owner may exclude others from making, using, selling, or importing its invention throughout the United States without its consent. An inventor may license or sell the rights to its patented invention.
Why would I want to obtain a patent?
Patents allow you to protect your inventions from competition. They grant you a time-limited monopoly on realizing the benefits of your inventions. Patents can be very lucrative if you sell or license your inventions. The value of a patent may increase over time.
What should I do before I file for a patent with the United States Patent and Trademark Office?
First, define your idea as best as you can and begin drafting designs. A working prototype is not always necessary to obtain protection. At the same time, determine whether your invention is marketable. If it’s not, applying for a patent would be a waste of time and money. Second, visit www.google.com/patents and conduct a limited search for your idea to see what has already been done (this is called “prior art”). Next, hire a reputable patent search firm and/or an attorney to conduct a thorough search for prior art. Finally, hire a patent attorney to evaluate your invention in light of the prior art and begin drafting a patent application if the invention is patentable.
Are there any time limits or deadlines for applying for a U.S. patent?
Yes. A patent application must be filed within one year of publishing your invention or using it publicly (e.g., a sale or public demonstration). The U.S. now uses a “first-inventor-to-file” system, so the earlier you file the better.
What is a provisional patent application?
A provisional patent application establishes a filing date for an invention and gives the invention “patent pending” status. A provisional patent application is less expensive and less complicated than a full patent application; however, a provisional application is only temporary. A non-provisional patent must be filed within 12 months, or the provisional patent will expire and the early filing date will be lost.
How long does the patent application process take?
It generally takes 2 to 6 weeks for a patent agent/attorney to draft a patent application and receive the necessary drawings from a patent artist. Once an application is filed with the United States Patent and Trademark Office, the Office will review it and then either issue a patent or deny the application. The review process can take a minimum of eight months and often much longer. If an application is denied, you may have an opportunity to amend the application.
How long does patent protection last?
This varies depending on the type of patent. Design patents protect the overall appearance of an invention for 15 years, while utility patents protect the function of an invention for 20 years from the filing date.
What is a trade secret and how is that different from a patent?
A trade secret is information, such as a formula, pattern, compilation, program, device, method, technique or process, that derives actual or potential independent economic value from being kept confidential. A trade secret continues indefinitely as long as it’s not revealed to the public. A trade secret can be a collection of information or patterns or methods. The Coca-Cola formula is an example of a trade secret.
A patent, on the other hand, must be issued by the United States Patent and Trademark Office, is for a limited time, and the invention or design that it protects becomes public record. Many times patents cannot be issued for sets of information, patterns or programs.
What needs to be done to protect a trade secret?
Reasonable steps need to be taken to protect a trade secret, such as:
- Having employees sign confidentiality agreements;
- Restricting access to information;
- Educating employees and others about the status of items as trade secrets;
- Using legal means to prevent unauthorized disclosure.
What are the advantages of having a trade secret and protecting it as such?
The holder of a trade secret can legally maintain a monopoly as to the information that is a trade secret. Possession of trade secrets can strengthen the ability to enforce covenants not to compete in employment agreements or agreements for the sale of a business or its assets.
All Rights Reserved - Copyright © 2004-2018 Hymson Goldstein Pantiliat & Lohr, PLLC
16427 North Scottsdale Road, Suite 300 Scottsdale, AZ 85254 Phone 480-991-9077