The Law Office of David P. Gaudio, P.C
The Inventors Network, Inc.

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Frequently Asked Questions

What is a U.S. Patent?
A U.S. patent is essentially a right which the government grants to the inventor permitting him "to exclude others from making, using, or selling the invention" within the U.S., its territories and possessions. You may obtain a patent on any "new, useful process, machine, or composition of matter, or any new and useful improvement thereof." However, contrary to a common misconception, a U.S. patent does not grant the inventor a right to make or use the invention himself--he may do so only if he does not infringe someone else's unexpired patent.
The U.S. government grants patents for a term of 20 years from the filing date (14 years from issue date for design patents). Congress may extend the term only in special circumstances. After the term expires, you lose your exclusive right to the invention. Everyone is now free to exploit the product which you disclosed in the patent. In addition, failure to pay maintenance fees will result in the patent prematurely expiring

What's the first step?
There isn't one first step that suits every situation. The best choice for a first step depends on your own knowledge of the market and of the technology. Often the best approach is to try to get partial answers to some of these questions:

• How well will it work? Will it work well enough to replace what's already in use?
• Who wants it? And -- how much will they pay for it?
• How can it be made?
• How much will it cost?
• How things like this are usually sold?
• Can you keep other people from copying it? Is it usefully patentable?

Picking one of these questions and working it to death is usually not a good approach. It's better to get a rough estimate in several areas and then go back and refine the estimates later.

Do I need to make a prototype?
If you can make an actual working product, that should be one of the first steps. There's always room for doubt about how well something will work until it actually does work. Even simple products commonly take two or three tries before they come out just right. In order to get patent protection, the inventor must be able to describe the invention well enough that someone "ordinarily skilled in the art" can practice the invention. The best way to know that the description is good enough is to make and test the product. On the other hand, if making the first article is going to be a long expensive process requiring outside investment, you may be better off looking into patent protection on the invention before actually making something.

What is the difference between Design/Utility Patent, Trade Secret, Copyright and Trademark?

Do I need to get a patent in order to sell my product?
No. A patent is meant to keep somebody else from making, using or selling your claimed invention without your permission. In fact, if you get a patent on an improvement for a product protected by someone else's patent, you may need to get a license from the earlier inventor before going into business.

What does "patent pending" mean?
Only that a patent application has been filed. In the US, patents are not actually enforceable until the application has been examined and allowed and a patent actually issues. Nevertheless, a "pat. pending" marking can discourage competition by putting the would-be competitors on notice that they may lose their start-up costs when the patent issues and they have to close up shop.

Is there any danger that the USPTO will give others information contained in my application while it is pending?
Most patent applications filed on or after November 29, 2000, will be published 18 months after the filing date of the application, or any earlier filing date relied upon under Title 35, United States Code. Otherwise, all patent applications are maintained in the strictest confidence until the patent is issued or the application is published. After the application has been published, however, a member of the public may request a copy of the application file. After the patent is issued, the Office file containing the application and all correspondence leading up to issuance of the patent is made available in the Files Information Unit for inspection by anyone, and copies of these files may be purchased from the Office.

If two or more persons work together to make an invention, who will the patent be granted?
If each had a share in the ideas forming the invention as defined in the claims – even if only as to one claim, they are joint inventors and a patent will be issued to them jointly on the basis of a proper patent application. If, on the other hand, one of these persons has provided all of the ideas of the invention, and the other has only followed instructions in making it, the person who contributed the ideas is the sole inventor and the patent application and patent shall be in his/her name alone.

How long does it take to get a Patent?
The period of time which the Patent Office usually requires to review and grant a patent varies from about 1.5 to 2.5 years. In special circumstances, you can accelerate the process. Your age and health, as well as the importance of your invention to society, are factors which the government will consider if you ask it to accelerate your application's review. This is known as the period during which your patent application is "pending".

Where to get More Information
regarding the Patent process:
Public Service Center
Patent and Trademark Office
Washington, D.C. 20231, or call (703) 557-INFO;
regarding performing a patent search in the Houston area:
Patent Depository Library
Fondren Library--Government Documents Department
(713) 527-8101 Extension 2587;
regarding how to subscribe to a free resource directory:
The Inventor Assistance Source Directory
by Pacific Northwest Laboratory
Attn: Ray Watts
P.O. Box 999, K8-11
Richland, WA 99352
(509) 372-4274; and