2016 is right around the corner so I thought it would be fun to do a countdown of my most frequently asked questions from this past year. I have a feeling that this list will look pretty similar next year, but maybe not after reading this article.
Here is my top 10 FAQ:
10. "What is an office action?"
An Office Action (a.k.a. Official Action, Action) is a document that a patent examiner or a trademark examiner sends to a patent or a trademark applicant during the examination process (or prosecution). After a patent/trademark application is filed, a patent/trademark examiner is assigned to the application. The examiner studies the application to determine whether it is in proper form and whether it can be registered. More specifically, for patents, the examiner determines whether the claimed invention is patentable. And for trademarks, the examiner determines whether the trademark in question can be registered. The Office Action outlines whether there are any objections/rejections, what amendments should be made, and how the applicant should respond. Applicants must properly respond to Office Actions within a specified time, or the application may become abandoned.
9. "Can I tell people that I have a patent pending?"
Yes, when your patent application is filed, you can say that you have a patent pending. In most cases, you will receive a patent pending status automatically when you file a provisional patent application, so long as your application was properly filed. And you will have a patent pending status until your provisional patent application expires, unless you file a non-provisional patent application before your provisional patent application expires.
8. "Can I tell people about my invention?"
Technically there is nothing stopping you from disclosing your invention, but there are things to consider when disclosing your invention to the public. Generally, you have one year to file a utility/design patent application from the time you disclose your invention to the public. It's best to be cautious and control the distribution of your information. One way to do that is to use NDA. If you've already filed a provisional, you've already started your "one year clock" to file your non-provisional, but you should still limit your disclosure to what you've included in your application. If you've filed a non-provisional, your application will be automatically published within 18 months of filing, so it will be okay to disclose your invention to the public at that point.
7. "Do I need to protect the name of my invention?"
Your patent application won't protect the name of your invention, so you will have to file a trademark application if you'd like to protect the name of your invention. Filing a patent application and filing a trademark application are two different things.
6. "Can I provide my own drawings?"
If you're filing a provisional patent application, sure, why not. But if you're filing a non-provisional patent application, my answer is still yes, but I would highly recommend you to hire a professional patent illustrator to prepare your formal drawings for you. Your formal drawings must meet all of the USPTO guidelines and patent rules, so it's really tough for a layperson to prepare patent drawings. Additionally, I am strategic about selecting my figures so it is easier for me as a patent attorney to work with a patent illustrator who works with me on a regular basis.
5. "I want to sell my idea to a big company, so I need to file for a patent fast!"
It's great that you're ambitious and you recognize that you don't have means to manufacture and sell by yourself. This is often the case for many private inventors. However, it is also important to be realistic about what it means to "sell your idea." First, you can't patent ideas per se, so you're unlikely to sell it. Assuming that we have something more concrete than ideas by themselves, then, most licensees, investors, or assignees don't consider paying money for inventions until there is at least a non-provisional patent application pending, at a minimum. More likely, you will have to wait until your application is registered. That may not be the case every time, however. Maybe you have a solid contact so you may be able to transfer the ownership of your patent application at an earlier stage, but these are rare cases.
4. "What kind of rights do I have after I file my patent application?" or "Am I protected after I file my application?"
You don't have enforceable patent rights when your application is pending, i.e., not registered. Your rights are enforceable when your patent is registered. When I tell my clients this, many follow up with, "Then why should I file a patent application?" I see why my clients ask this follow up question, and it's a fair one. But they're forgetting something important when they ask me this follow up question, and that is, you're not going to receive a patent if you never apply for one! Also, licensees and investors value patent applications, and your patent portfolio is often the most valuable asset, especially if you're a growing/start up company. Filing a patent application will do you more good than harm.
3. "When am I going to hear from the USPTO after I file my application?"
Not for a while. If you file a provisional patent application, you're never going to hear from the USPTO after you receive your filing receipt. If you file a non-provisional/design patent application, you will probably first hear from the office when your application is published, which is about 18 months after your application is filed. It is around that time your application is assigned to an examiner, so you may also receive an office action soon thereafter. In some cases, however, depending on your art unit's docket, it may take the USPTO two years to get back to you. This is for a normal patent application process, however, and does not apply to Track One applications. For Track One applications, you will receive your final disposition within 12 months of filing.
2. "Can this be patented?"
I may be able to tell you whether your invention falls under a patentable subject matter almost right away, but I can't tell you for sure whether your application will be ultimately patented. (As with all legal matters, nothing is guaranteed.) The first thing I can do is to conduct a patent search to determine whether your invention likely or not likely patentable in light of existing prior art. The USPTO will make the final decision on whether your invention can be patented.
1. "I have an idea and I would like to file for a patent, but I am not sure where to start."
There is one right answer to this, but I generally tell clients to start out with a patent search to determine whether it's even worth it to file a patent application. After a patent search is completed, you have the option of filing a utility patent application and/or a design patent application. If you should file a utility patent application, you have the option of filing a provisional patent application or a non-provisional patent application. If you're not sure which one you should choose, then most likely you should file a provisional patent application.
A provisional patent application is usually the most time efficient and cost effective way to initiate the patent application process. Once filed, it will give you a patent pending status for 12 months, during which time you must file a non-provisional patent application in order to claim the benefit of the filing date of the provisional patent application. So the provisional will buy you time, and it may be valuable if you are still in the process of perfecting or developing your invention, but would like to obtain a filing date. If you're in a hurry to have your application examined, and you have everything you need to file your application, then maybe you can jump right into the non-provisional/design patent application.