The Patenting Process Quiz

PDF page 56: An applicant must first determine whether to file an application for a utility, design, or plant patent. Then, the applicant must determine their filing status: large entity, small entity, or the new category of micro entity created by the America Invents Act of 2011 (AIA) (https://www.openstax.org/l/AmericaInventsAct). Small entities, which are universities, non-profits, and small businesses with fewer than 500 employees who also

PDF page 56: An applicant must first determine whether to file an application for a utility, design, or plant patent. Then, the applicant must determine their filing status: large entity, small entity, or the new category of micro entity created by the America Invents Act of 2011 (AIA) (https://www.openstax.org/l/AmericaInventsAct). Small entities, which are universities, non-profits, and small businesses with fewer than 500 employees who also

PDF page 57: meet certain other criteria, receive a 50 percent discount on the application fees paid by large entities. Micro entities, which are small entities who have a gross income less than three times U.S. median household income or meet certain other criteria, receive a 75 percent discount. These discounts on USPTO fees for small and micro entities do not apply to the attorneys’ fees often involved in applying for a patent, which can be significant.

PDF page 57: meet certain other criteria, receive a 50 percent discount on the application fees paid by large entities. Micro entities, which are small entities who have a gross income less than three times U.S. median household income or meet certain other criteria, receive a 75 percent discount. These discounts on USPTO fees for small and micro entities do not apply to the attorneys’ fees often involved in applying for a patent, which can be significant.

PDF page 57: meet certain other criteria, receive a 50 percent discount on the application fees paid by large entities. Micro entities, which are small entities who have a gross income less than three times U.S. median household income or meet certain other criteria, receive a 75 percent discount. These discounts on USPTO fees for small and micro entities do not apply to the attorneys’ fees often involved in applying for a patent, which can be significant.

PDF page 57: Finally, the applicant must decide whether to file an abbreviated, “provisional” patent application or a complete, “nonprovisional” one. A provisional application consists only of the specification describing the invention for which a patent is sought, as well as any drawings that might be necessary to understand the invention. A provisional application is not subject to examination, and is viable for one year. The chief benefits of a provisional application are twofold. It is much less expensive to file than a regular nonprovisional application—only $1,000 in official fees for large entities, $500 for small entities, and $250 for micro entities. It also gives the inventor the benefit of the earlier provisional filing date of the nonprovisional application based on the same specification, while measuring the term of the patent from the nonprovisional application’s filing date.

PDF page 57: Finally, the applicant must decide whether to file an abbreviated, “provisional” patent application or a complete, “nonprovisional” one. A provisional application consists only of the specification describing the invention for which a patent is sought, as well as any drawings that might be necessary to understand the invention. A provisional application is not subject to examination, and is viable for one year. The chief benefits of a provisional application are twofold. It is much less expensive to file than a regular nonprovisional application—only $1,000 in official fees for large entities, $500 for small entities, and $250 for micro entities. It also gives the inventor the benefit of the earlier provisional filing date of the nonprovisional application based on the same specification, while measuring the term of the patent from the nonprovisional application’s filing date.

PDF page 57: Finally, the applicant must decide whether to file an abbreviated, “provisional” patent application or a complete, “nonprovisional” one. A provisional application consists only of the specification describing the invention for which a patent is sought, as well as any drawings that might be necessary to understand the invention. A provisional application is not subject to examination, and is viable for one year. The chief benefits of a provisional application are twofold. It is much less expensive to file than a regular nonprovisional application—only $1,000 in official fees for large entities, $500 for small entities, and $250 for micro entities. It also gives the inventor the benefit of the earlier provisional filing date of the nonprovisional application based on the same specification, while measuring the term of the patent from the nonprovisional application’s filing date.

PDF page 57: In a sense, the provisional application serves as a placeholder for up to one year while the inventor does all the prior art searching, claims drafting, and other work required of a full and complete nonprovisional application. This priority date placeholder function can be important given that many companies and inventors are working on new products and services aimed at the same markets. This is especially so under the United States’ new “first inventor to file” rather than “first to invent” priority regime, which some fear may give an edge to large companies with the legal and financial resources to file early and often. To the extent this concern may be valid, provisional applications can serve to mitigate any large company filing advantage.

PDF page 58: When it comes to filing a full nonprovisional application, the most critical task of the inventor (and patent attorney) is to draft the claims. This is an art in and of itself, one that will determine the inventor’s rights and an infringer’s liability.

PDF page 58: Each claim serves as a stand-alone definition of the patent coverage—as a sort of mini-patent unto itself. After a patent is granted, a claim is the only thing that someone can be accused of infringing. Accordingly, broad claim language is essential if a commercially meaningful patent is to be obtained.

PDF page 58: On the other hand, the broader the claim, the more likely it is that prior art may exist somewhere that anticipates the claim or renders it obvious and, therefore, invalidates the claim. So the competent draftsperson submits a dozen or more claims, typically moving from broader to narrower scope, in case the broader claims turn out to be disallowed by the USPTO or later invalidated by a court. Some applicants make the opposite mistake and draft claims that are too narrow—“a programmable multifunction computer in the shape of a metal clamshell,” for example. Such a claim is of little value because others can easily design around it simply by using plastic or other nonmetal materials in the design. Some claims are so narrow they are even referred to as “picture claims” because they paint a literal and limiting picture of the invention. You may get a patent with such picture claims, but it probably won’t be worth the paper it’s printed on.