FAQs

  1. Introduction and Disclaimer
  2. Q: What is a Patent?
  3. Q: Can a US patent provide worldwide protection?
  4. Q: Can I apply for an international application under Patent Cooperation Treaty (PCT) in the US?
  5. Q: What can be patented?
  6. Q: Who can apply for a patent?
  7. Q: How can I apply for a patent?
  8. Q: Must I apply on-line with the Patent Office?
  9. Q: What are the criteria of patentability?
  10. Q: Should application for patent be filed before or after, publication of the invention?
  11. Q: Can any invention be patented after publication or publicly displayed or offered for sale?
  12. Q: How can one find out that an invention is already patented?
  13. Q: How detailed should my patent application be?
  14. Q: What is a provisional specification?
  15. Q: Why should I consider a provisional application?
  16. Q: Is my application with the Patent Office secret?
  17. Q: When is an application for patent published?
  18. Q: Once patent application is filed, is it examined automatically?
  19. Q: Is there any provision for early examination?
  20. Q: What happens to a patent application once it is examined?
  21. Q: What happens when applicant is not able to meet the requirement within the prescribed time?
  22. Q: Is there provision for extension of the response deadline beyond time limit of 6 months?
  23. Q: What are the various stages involved in the grant of patent?
  24. Q: Is it necessary to go to the US Patent Office to transact any business relating to patent application?
  25. Q: Can one use the words “Patent Pending” or “Patent Applied For”?
  26. Q: How useful is the marking of a product with “patent pending” or “patent applied for” before the grant?
  27. Q: Does patent office help in finding licensees for a patent?
  28. Q: What is the term of patent?
  29. Q: Is there any difference in the amount of fees to be paid by an individual or a legal entity for filing a patent application?
  30. Q: What are obligations of the patentee after the grant of patent?
  31. Q: Can a patent be restored after an accidental lapse?
  32. Q: Is it necessary to engage a registered patent agent for filing an application for patent?
  33. Q: Does the Patent Office help to select a patent attorney or agent to make patent search or to prepare and prosecute patent application?
  34. Q: Do I need to obtain prior permission from the Patent Office to file application for patent outside US or abroad?

Introduction and Disclaimer

This FAQ is dedicated to educating and helping inventors to harness the IP system to benefit from their hard work. Disclaimer: All materials have been prepared for general information purposes only to permit you to learn more about our company, our software, and the experience of our users and patent lawyers. The information presented is not legal Back to Index

Q: What is a Patent?

A: A Patent is a statutory right for an invention granted for a limited period of time to the patentee by the Government, “to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States” for a limited time in exchange for public disclosure of the invention when the patent is granted Back to Index

Q: Can a US patent provide worldwide protection?

A: Patent protection is territorial right and therefore it is effective only within the territory of the issuing country. However, filing an application in the US enables the applicant to file a corresponding application for same invention in conventional countries, within or before twelve months from the filing date in the US. Therefore, separate patents should be obtained in each country where the applicant requires protection of his or her invention in those countries. Back to Index

Q: Can I apply for an international application under Patent Cooperation Treaty (PCT) in the US?

A: The Patent Cooperation Treaty (PCT) enables U.S. applicants to file one application, “an international application,” in a standardized format in English in the U.S. Receiving Office (the U.S. Patent and Trademark Office), and have that application acknowledged as a regular national or regional filing in as many Contracting States to the PCT as the applicant “designates,” that is, names, as countries or regions in which patent protection is desired. The PCT provides an additional and optional foreign filing route to patent applicants and does not preclude taking advantage of the priority rights and other advantages provided under the Paris Convention and the WTO administered Agreement on Trade-Related Aspects of Intellectual Property (TRIPS Agreement). Back to Index

Q: What can be patented?

A: An invention relating either to a product or process that is new, involving inventive step and capable of industrial application can be patented. However, it must not fall into the categories of inventions that are non- patentable under section 3 and 4 of the Act. Back to Index

Q: Who can apply for a patent?

A: A patent application can be filed either by the true inventor(s), or the legal representative of any deceased person. The inventor(s) can then assign the rights to an entity (such as his/her employer or company). Back to Index

Q: How can I apply for a patent?

A: A patent application can be filed with the US Patent Office either with complete specification or with provisional specification along with government fee. In case the application is filed as a provisional application, a utility application conversion with a complete specification must be filed within 12 months from the date of filing of the provisional application. There is no extension of time for the Provisional to Utility application conversion. Trusty Patent helps inventors to apply for provisional and non-provisional utility patent easily and accurately. Back to Index

Q: Must I apply on-line with the Patent Office?

A: The US Patent Office has put in place an online filing system for patent application and if you don’t file electronically, the PTO charges paper filers extra fees. More information for filing online application is available on the website of Patent Office at www.uspto.gov. This facility is also available for filing trademarks application. Back to Index

Q: What are the criteria of patentability?

A: An invention to become patentable subject matter must be directed at one of the four patent-eligible subject matter categories: process, machine, manufacture, or composition of matter? The subject matter of the claim must be directed to one of the four subject matter categories. i. Process – an act, or a series of acts or steps performed upon the subject-matter to be transformed and reduced to a different state or thing. ii. Machine – a concrete thing, consisting of parts, or of certain devices and combination of devices. This includes every mechanical device or combination of mechanical powers and devices to perform some function and produce a certain effect or result. iii. Manufacture – an article produced from raw or prepared materials by giving to these materials new forms, qualities, properties, or combinations, whether by hand labor or by machinery. iv. Composition of matter – all compositions of two or more substances and all composite articles, whether they be the results of chemical union, or of mechanical mixture, or whether they be gases, fluids, powders or solids, for example. Back to Index

Q: Should application for patent be filed before or after, publication of the invention?

A: The application for patent should be filed before the publication of the invention and even then, it should not be disclosed or published. Disclosure of invention by publication before filing of the patent application may be detrimental to novelty of the invention as it may no longer be considered novel due to such publication in certain countries. However, in the US, under certain conditions, there is grace period of 12 months for filing application even after publication. Back to Index

Q: Can any invention be patented after publication or publicly displayed or offered for sale?

A: Generally, a patent application for the invention which has been either published or publicly displayed cannot be filed. However, in the US, a grace period of 12 months for filing of patent application from the date of public availability such as an offer of sale, a sale, or a publication, for example. Back to Index

Q: How can one find out that an invention is already patented?

A:The person concerned can perform a preliminary search on Patent Office website patent data base of granted patent. This search is also available on Trusty Patent when you use the software. Back to Index

Q: How detailed should my patent application be?

A: According to 37 CFR 1.71: (a) The specification must include a written description of the invention or discovery and of the manner and process of making and using the same, and is required to be in such full, clear, concise, and exact terms as to enable any person skilled in the art or science to which the invention or discovery appertains, or with which it is most nearly connected, to make and use the same. (b) The specification must set forth the precise invention for which a patent is solicited, in such manner as to distinguish it from other inventions and from what is old. It must describe completely a specific embodiment of the process, machine, manufacture, composition of matter or improvement invented, and must explain the mode of operation or principle whenever applicable. The best mode contemplated by the inventor of carrying out his invention must be set forth. (c) In the case of an improvement, the specification must particularly point out the part or parts of the process, machine, manufacture, or composition of matter to which the improvement relates, and the description should be confined to the specific improvement and to such parts as necessarily cooperate with it or as may be necessary to a complete understanding or description of it. While provisional applications do not require any claims, a utility specification must contain at least one claim or statement of claims defining the scope of the invention for which protection is sought for. Back to Index

Q: What is a provisional specification?

A: A provisional application is a U.S. national application that is not required to have a formal patent claim or an oath, declaration, or prior art statement since provisional applications are not examined. A provisional application for patent has a pendency lasting 12 months from the date the provisional application is filed, and this period cannot be extended. Therefore, an applicant who files a provisional application must file a corresponding nonprovisional application for patent (utility application) during the 12-month pendency period of the provisional application in order to benefit from the earlier filing of the provisional application or else the application is treated as deemed to have been abandoned. Back to Index

Q: Why should I consider a provisional application?

A: A provisional application provides the means to establish an early effective filing date in a later filed nonprovisional patent application and legally allows “Patent Pending” to be used. A filed provisional application gives the inventor one year to assess and evaluate the market potential of his invention before filing complete specification. However, it is not necessary to file an application with provisional specification and one can file application directly with complete specification. Back to Index

Q: Is my application with the Patent Office secret?

A: Yes, if you filed a provisional application. However, non-provisional patent applications are kept secret for 18 months from the date of filing or priority date whichever is earlier. Afterward, non-provisional applications are published so that the public can view the patent information. You can request non-publication if you relinquish international filing rights. Back to Index

Q: When is an application for patent published?

A: Every non-provisional application for patent is published after 18 months from the date of its filing or priority date whichever is earlier. However, following applications are not published: Application in which secrecy direction is imposed Application which has been abandoned (for example, by not paying the filing fees) and Application which has been withdrawn prior to the 18 month period Back to Index

Q: Once patent application is filed, is it examined automatically?

A: In the US, provisional applications are not examined after its filing, and examination is automatic only for non-provisional applications. Back to Index

Q: Is there any provision for early examination?

A: Applications are generally examined in the order they are filed. However, you can petition to accelerate on the basis of inventor age, or payment of a prescribed fee for acceleration. You can also accelerate if you have a positive PCT search report. Back to Index

Q: What happens to a patent application once it is examined?

A: After examination, the Patent office issues an examination report to the applicant which is generally known as First Office Action. Thereafter the applicant is required to comply with the requirements within a period (typically one, two, or three months from the date of the Office Action). In case, the application is found to be in order for grant, the patent is granted. A letter patent is issued to the applicant. Back to Index

Q: What happens when applicant is not able to meet the requirement within the prescribed time?

A: After examination, the Patent office issues an examination report to the applicant which is generally known as First Office Action. Thereafter the applicant is required to comply with the requirements within a period (typically one, two, or three months from the date of the Office Action). In case, the application is found to be in order for grant, the patent is granted. A letter patent is issued to the applicant. Back to Index

Q: Is there provision for extension of the response deadline beyond time limit of 6 months?

A: There is no provision for extension of time beyond the period of 6 months. Back to Index

Q: What are the various stages involved in the grant of patent?

A: Your application will initially be checked for formality requirements, and if your application is incomplete, you will be notified of the deficiencies by a letter from the USPTO, known as an Office Action. Once your application has been accepted as complete, it will be assigned into a queue for examination in about one to two years. An examiner will review the contents of the application to determine if the application meets the requirements for a patent. If the examiner does not think your application meets the requirements, the examiner will explain the reason(s). You will have opportunities to make amendments or argue against the examiner’s objections. Final rejections may be appealed to the Patent Trial and Appeal Board (PTAB). If the inventor convinces the Examiner that all requirements are met, a patent will be issued in due course. Back to Index

Q: Is it necessary to go to the US Patent Office to transact any business relating to patent application?

A: No, normally all the communications with the office are done through written correspondence. However, interviews relating to patent application can be had with examiners with prior appointment on any working day during prosecution. Back to Index

Q: Can one use the words “Patent Pending” or “Patent Applied For”?

A: These words are normally used by the patent applicant to their products after filing his application for patent so that the public is made aware that a patent application has been filed in respect of that invention. Use of these words where no application has been made is prohibited by law. Back to Index

Q: How useful is the marking of a product with “patent pending” or “patent applied for” before the grant?

A: Marking of a product with the words “patent pending” or “Patent applied for” after filing of the application for patent serve as a notice to the public that an application for patent is pending with the Patent Office but any legal action can be initiated only after the patent is granted. Back to Index

Q: Does patent office help in finding licensees for a patent?

A: The Patent Office has no role in the commercialization of patent. However, for a nominal fee-currently $25 for each published item-the USPTO will publish an announcement of patents and serial numbers available for license or sale. This publication occurs on the second Tuesday of each month in the Official Gazette for Patents. Similarly, the World Intellectual Property Organization (WIPO) maintains a register in which applicants can offer to license their inventions disclosed in international applications. Applicants may request that the WIPO International Bureau post indications of availability of patents for licensing purposes on its free PATENTSCOPE service. These resources help the inventor connect with potential manufacturers or licensees. Back to Index

Q: What is the term of patent?

A: Term of every patent in US is 20 years from the date of filing of patent application, irrespective of whether it is filed with provisional or complete specification. However, in case of applications filed under PCT the term of 20 years begins from the International filing date. Back to Index

Q: Is there any difference in the amount of fees to be paid by an individual or a legal entity for filing a patent application?

A: Yes, the application filing fees for an individual person(natural person) is Rs.1, 000/- and for a legal entity other than individual is Rs.4, 000/- up to 10 claims and 30 pages. However, in case, the number of pages exceed beyond 30, then natural person has to pay Rs.100/- each extra page and person other than natural person has to pay Rs.400/- per page. Similarly if the number of claims exceed beyond 10, then natural person has to pay Rs.200/- for each additional claim and person other than natural person has to pay Rs.800/- for each additional claim. Back to Index

Q: What are obligations of the patentee after the grant of patent?

A: After the grant of patent, every patentee has to maintain the patent by paying renewal fee every four years. In case the renewal fee is not paid the patent will lapse. Back to Index

Q: Can a patent be restored after an accidental lapse?

A:If the lapse was unintentional, the lapsed patent can be revived through a petition along with the prescribed fee. Back to Index

Q: Is it necessary to engage a registered patent agent for filing an application for patent?

A:No, it is not necessary under the patent law to engage a registered patent agent for filing an application for patent. The applicant is free to file an application by himself or through the patent agent. However, the USPTO advises that a registered professional be used. When you use Trusty software tools, a registered practitioner can review your application and file the application for you. Back to Index

Q: Does the Patent Office help to select a patent attorney or agent to make patent search or to prepare and prosecute patent application?

A: No, Patent Office does not make any recommendations regarding selection of a patent agent. However, the applicant is free to hire any patent agent from a list of patent agents maintained by the office. This list can also be viewed at Patent Office website. Back to Index

Q: Do I need to obtain prior permission from the Patent Office to file application for patent outside US or abroad?

A: Generally speaking, you should obtain prior permission from the US Patent Office to file patent application abroad. When you file an application with the USPTO, the USPTO generally provides a foreign filing permit along with the formal filing acknowledgment. Back to Index
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