Patent Pointers

A pro answers your most common patent questions.

Since the first U.S. patent was awarded in 1790, more than 5.4 million patents have been awarded; more than 230,000 patent applications are received by the patent office each year.

With all these people applying for patents, most entrepreneurs with a new idea feel they, too, must join in the rush to the patent office filing window. Before booking a flight to Washington, DC, however, it would be wise to learn some basic facts about patents.

The laws that protect ideas are known as intellectual property laws and are very complicated. Therefore, the advice that follows is simply my perspective as a legal consumer and a patent holder. It is not legal
advice; for that, you should consult an attorney. Following are some of the most common questions entrepreneurs have about patents.

Q:What is a patent?

A: Simply stated, a patent is a grant from the government to an inventor that protects his or her invention in the United States for up to 20 years from the date of application. Owning a patent gives you the legal right to stop someone else from making, using or selling your invention without your permission. However, proving that someone is infringing on your patent requires a legal trial, which may take three years or more to be heard in court and cost hundreds of thousands of dollars.

Q:What can be patented?

A: The patent law states that whoever invents or discovers any new and useful process, machine, manufacture, composition of matter, or any new and useful improvements thereof may obtain a patent.

To put this in simpler terms, the word process could be replaced with the words "recipe for making something" or "steps for performing a task." Therefore, process would include everything from designing a unique assembly line process to developing a method for turning straw into gold.

The word machine could be replaced with "man-made tool." Your idea cannot already exist in nature--a tree branch used to dig a hole could not be patented, for instance--it must be adapted.

Manufacture means any invention that is put together or built. A rock exists in nature and therefore would not qualify to be patented. However, if it were carved into a particular shape, it might qualify for a design patent.

Composition of matter is really a fancy way of saying "creating a substance," including chemical compositions such as the cookie dough used to make soft, chewy cookies or the recipe for specific paints.

Q:What cannot be patented?

A: An idea alone cannot be patented. Here's why: Suppose you came up with the idea to allow the easy fastening and unfastening of two pieces of fabric without damage. If you were granted a patent, all fastening devices--including snaps, buttons, Velcro and ties--would be infringing on your patent, no matter how different they were. To apply for a patent, therefore, you must provide the patent office with a detailed written description or drawing of your invention.

Court cases have set additional limits on what is not patentable; the following have been declared to be unpatentable:

1. A method of doing business (for example, the method of increasing sales by lowering prices).

2. Printed matter, such as an accounting work sheet. (This could, however, be copyrighted.)

3. Inventions for atomic weapons.

4. Mixtures in which their effect is nothing more than the expected result. For example, salt and water combined will make salt water; however, if the salt water was a cure for cancer, the recipe could be patented.

5. The idea was publicly known when you filed for a patent.

6. The invention is considered an obvious change to an existing invention. If a wooden doorknob was patented, inventing a ceramic doorknob would not qualify. However, a door lever might.

7. Inventions that are used for illegal purposes only. A shopping bag lined with something to prevent stolen merchandise from setting off an alarm would probably not be patentable.

Q:Are there different kinds of patents?

A: There are three types of patents: design, utility and plant. Each provides a unique type of protection.

A design patent protects the appearance or ornamental design of your invention. This type of patent is most effective for products such as jewelry, clothing and furniture because it will protect the way your idea looks. For example, Tiffany and Rolex have design patents to protect their signature jewelry and watches. This patent is relatively easy to register with the patent office because what is being patented is fairly straightforward. A design patent is also generally the least expensive patent to file. A design patent's term is 14 years, and no maintenance fees are required to keep it in force.

The design patent's disadvantage, however, is that someone could make changes to, say, a piece of jewelry by making it bigger, a different color or heavier and get around your patent. Additionally, if you make changes to your design, you must file another patent if you want to protect the changes.

A utility patent protects the function or method of your invention. This patent is more complicated than a design patent because it requires you to explain how your invention is used. It is also more expensive to file. It has a term of 20 years from the date you file your application and requires the payment of maintenance fees ranging from $500 to $3,000, depending on the size of your company, about every four years to keep it in force.

A plant patent protects the invention or discovery of a new or distinct plant variety. Special rules apply to this patent, including sending a copy of your application to the Agricultural Research Service and the Department of Agriculture for a plant variety report. The term of this patent is 20 years; maintenance fees are the same as for utility patents.

Q: How much do patent applications cost?

A: The cost of a patent can vary widely. While the cheapest route is to file a patent yourself, I strongly discourage this, having seen many naively written patents get knocked down in court. The best piece of advice I can give an entrepreneur considering a patent is to have a qualified patent attorney file your patent for you.

According to the most recent survey by the American Intellectual Property Law Association, in 1995 the average amount a lawyer charged for the work involved in filing a design or plant patent application was $500 to $1,500; for a minimally complex utility patent application, it was $2,500 to $4,000; and for a relatively complex utility patent, it was $5,000 to $10,000.

It's important to note these ranges don't include costs for drawings, patent searches or filing fees, and only include legal work up to the time of filing. More than 50 percent of patents receive at least one "office action," from the patent office, such as an adjustment they want you to make to your patent, to which your attorney or agent must respond. This will drive up costs. Other costs include a patent search by a legal clerk ($175 to $250) and draftsman drawings of your invention ($75 to $250 each).

Q:Where can I get help with my patent?

A: There are two types of professionals who can assist you with the process: patent attorneys and patent agents. If you are familiar with patent law and the invention process and just need someone to draw up the legal paperwork, a patent agent would be a good choice. If you have an idea but are new to inventing and need more guidance, a patent attorney is probably your best bet. Another factor to consider: While patent agents are less expensive, they can't defend your patent from challenges or product knockoffs. There is no one best way to find a good attorney or agent, but referrals are a good place to start.

Another good source of information is the U.S. Patent and Trademark Office's handbook Basic Facts About Patents; it's available free by calling (800) 786-9199.

My last piece of advice is this: If you decide to pursue a patent, to save time and money, I suggest you have a patent search done to see what ideas similar to yours have already been patented. This is a good way to determine whether you should proceed with your idea.

Tomima Edmark, the woman famous for her Topsy Tail invention has now turned her creative talents to the competitive retail arena of intimate apparel, HerRoom and HisRoom.

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This article was originally published in the April 1997 print edition of Entrepreneur with the headline: Patent Pointers.

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