Frequently Asked Questions

What is a Patent?


How do recent Federal Circuit and Supreme Court cases affect how Utility Patent Applications should be drafted and prosecuted before the US Patent and Trademark Office (USPTO)?

What are general considerations with respect to acquiring international patent protection for an invention?

How does use of the USPTO's Electronic Filing System (EFS) and Patent Application Information Retrieval (PAIR) improve the patent application process?

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Q: What is a Patent?

A: patent is a property right granted by the Government of the United States of America to an inventor “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.  

What can be patented –utility patents may be granted for a new, nonobvious and useful:

What can be patented –utility patents may be granted for a new, nonobvious and useful:

• Process
• Machine
• Article of manufacture
• Composition of matter
• Improvement of any of the above

What cannot be patented:

• Laws of nature
• Physical phenomena
• Abstract ideas
• Literary, dramatic, musical, and artistic works (these can be Copyright protected).
    For more information, visit the  Copyright Office.
• Inventions which are:
  • Not useful (such as perpetual motion machines); or
  • Offensive to public morality

Invention must also be:

• Novel
• Nonobvious
• Adequately described or enabled (for one of ordinary skill in the art to make and use the invention)
• Claimed by the inventor in clear and definite terms

Note: In addition to utility patents, encompassing one of the categories above, patent protection may be available for
(1) ornamental design of an article of manufacture or (2) asexually reproduced plant varieties as design and plant patents.

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Q: How do recent Federal Circuit and Supreme Court cases affect how Utility Patent Applications should be drafted and prosecuted before the USPTO?

A: The courts have placed an ever greater burden on the patent applicant, during both application drafting and prosecution. To avoid being narrowed during litigation, applications should unambiguously describe what the invention is and the full scope of coverage claimed by the applicant. Items disclosed in the application but not specifically claimed may be held to have been dedicated to the public. Descriptions should be drafted with an awareness that, if there is a question as to the scope of a claim or the meaning of a claim term, the courts look closely at the written description and any statements made by the applicant during application prosecution.

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Q: What are general considerations with respect to acquiring international patent protection for an invention?

A: Each case is unique.  Consultation is required in order to develop a strategy which fits each particular circumstance.  Generally, international patent protection requires a considerable investment.  A US Patent Application resulting in a Patent creates exclusionary rights only within the United States of America. When deciding where to obtain additional patent protection we may suggest evaluating each country that is or may become a potential market for the invention. The size of the potential market and the likelihood of competitors making or practicing your invention absent patent protection versus the cost of patent protection and the costs and likelihood of patent enforcement in that market may be weighed.

Delaying the expense of prosecution, within the applicable time limits,  in individual countries allows a client to further test the marketability of the invention before committing to a large investment for application prosecution in multiple countries.

Care should be taken to file any PCT or other international applications in the desired country(s) before the specific novelty requirements of the desired country(s) are lost and or opportunities to claim an earlier filing date based upon a prior application have passed.

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Q: How does use of the USPTO's Electronic Filing System (EFS) and Patent Application Information Retrieval (PAIR) improve the patent application process?

A: EFS and PAIR are the first steps toward the USPTO's goal of a paperless patent application process. The EFS authoring software checks that all required application parts are present, lowering the opportunity for administrative errors that may arise during final photocopying and mail deposit of a large paper application. Rather than relying upon the postal service for delivery of a patent application to the USPTO, encrypted electronic filing provides an immediate secure transmission of the application and simultaneous return of a receipt and serial number to the applicant. 

PAIR gives the applicant access to the same application status information that the examiners use. Previous status inquiry practice often took months to return a reply, if any from the USPTO. PAIR enables instant status checks of whether or not office actions/ responses have been issued/received. Prior to patent issue, patent term extension data may be verified and if necessary disputed - providing the longest possible patent term for applications delayed by the USPTO.

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