Frequently Asked Questions

Practice includes filing of patent applications on behalf of inventors, prosecuting patent applications on behalf of inventors, and participating in administrative appeals and other proceedings before the United States Patent & Trade Office (USPTO) examiners and Board of Patent Appeals and Interferences boards (BPAI). The patent office in each country sets its own standards for who may practice and requires that any person who practices become registered.

In the US to be registered as a patent attorney, one must pass the USPTO registration examination. This exam is commonly referred to as the "patent bar". The exam tests a candidate's knowledge of patent law and USPTO rules and procedures. A candidate must also have adequate scientific and technical training (bachelor's degree in the natural sciences e.g. physics or engineering) to understand a client's invention. Patent attorneys are also admitted to the practice of law in at least one state or territory of the United States.

In UK Qualification is achieved by passing (or gaining an exemption from by passing certain university courses) the foundation level papers, and the advanced level papers. Almost the same applies in countries like Canada, Australia, New Zealand Japan, Singapore and other European countries. Some countries require the attorneys to train under experienced attorneys before becoming a full fledged registered patent attorney. In UK a patent attorney and patent agent have the same connotations while in the US they have different meanings. Although a European Patent Office (EPO) does exist, each European country has different qualification requirements at their national level.

EPO maintains a database of Registered Attorneys so does the Chartered Institute of Attorney in the UK. In the US a database of patent attorneys can be found at the USPTO website.

Interestingly, all countries require the attorneys to possess “good moral character”. This is, in part, because of the confidential nature of the inventions submitted by inventors.

Most law firms that recruit patent attorneys require them to have three additional characters. Be enthusiastic, have a good academic record and have great communication skills.

Patent attorneys can additionally provide legal services outside the Patent Office. These services include advising clients on legal matters related to the invention such as to file law suits on behalf of clients against infringers and defend clients against claims of infringement. These services also include appealing BPAI’s decisions to a court and drafting legal opinions as to whether a competitor is infringing the client’s patent (infringement opinion), whether the client’s product is infringing a competitor’s patent (non-infringement opinion), whether the client’s product is infringing any patent (clear-to-operate opinion), whether a patent is valid (validity opinion) and whether an invention is patentable (patentability opinion). Patent agents cannot provide legal services of this nature, nor can they represent clients before the Trademark Office section of the USPTO.

Most patent attorneys are hired by inventors for a three fold purpose, namely, searching national and international patents and printed publications, preparing patent applications (the most important step), prosecuting patent applications including appeals to the BPAI, and post issuance matters

Patent An Idea

Ideas are a prelude to invention. Do you know that eleven year old Frank Epperson, left a stirring stick in a soda on the porch overnight and woke up to a frozen "Popsicle". He patented the idea when he grew up and developed & marketed it most successfully.

How can you invent if you do not have an idea? According to current patent rules you cannot patent a law of nature, physical phenomena or abstract idea. Also your idea must not be creative like literary, dramatic, musical or artistic work. These can be copyright protected but not patented. In order to be patentable your idea must be concrete.

Confused?

Well, its like this. If you have an idea of…. lets say, a new bottle spray… you cannot patent the idea, but you can patent the bottle design or spray apparatus .

So, got a great idea! Well, conceptualize it fast. You cannot patent an idea, but you can patent the concrete expression of an idea.

Of course, to patent your idea you need to be sure that your idea fulfills the three fold criteria of: ‘novel’, ‘non-obvious’ and ‘useful’.

Why patent an idea?

You’ve worked hard at your idea- and you enjoyed your work but the bottom line is that you are developing products to try to make money. Therefore, it's very important that you patent your idea. Your patent is a legal document giving you the monopoly on your product. You can't do much without it; you certainly can't sell your invention. Most manufacturers or potential buyers/licensers won't even see you if you do not have one, or at least have applied for it.

Who can patent an idea?

Only the inventor can apply to patent an idea. There are some exceptions -- if the inventor is dead, insane or refuses to file and is under contract to others. Sometimes, an invention needs technical help from other fields. In such a case if that object reflects the ‘inventiveness’ on the part of the technical help, then the technical help may be designated as co-partner in patent. But its best to check from your lawyer, as there is a very fine dividing line.

How can you patent an idea?

Before you start on an invention, its good to check if your idea is original. Believe it or not most good ideas have already been thought out by others. So, there is a chance that your idea has already been patented. For this you need to conduct a preliminary search. You can do a preliminary search by yourself or use a patent attorney, agent or searcher. If during searches you do come across your idea, don’t be disappointed. It means there could be an existing market for your product. Lizzie Magie patented "The Landlord Game" in 1904. Charles Darrow played the game and improved it with a new version called "Monopoly." Many patents are improvements to existing patents. In this case, the owner of the new patent must obtain a licensing agreement with the owner of the existing patent. The owner of the old patent would have to get a license from the owner of the new patent in order to use the improvement. Or still, you can improve upon the idea till it looks like a new one.

Once your search is completed you can apply for a patent. You can hire a patent attorney to apply for your patent. A part of a patent attorney's job is to give your product maximum protection against infringement, copying, and theft. If anyone attempted to steal your idea and patent it him/herself, you'd be protected because you applied first.

Tips to patent an idea

Before disclosing your idea to any person, sign a confidentiality agreement with that person.

Apply for a provisional patent.. till you get a patent. That way you have claim to inventing the article first.

To the best of your ability, decide if your invention is not offensive to public morality. If it is intended for only illegal purposes it will fall into this category.

Happy Thinking!

• In the US to be registered as a patent attorney, one must pass the USPTO registration examination. This exam is commonly referred to as the "patent bar".
• Adequate scientific and technical training to understand a client's invention
• Details of all patent attorneys can be found in the database of patent attorneys at the USPTO website
• A good moral person
• A person who is enthusiastic and have a good academic record with great communication skills

To get a US patent you must apply and be granted a patent by the U.S. Patent and Trademark Office (USPTO), an agency of the U.S. Department of Commerce. It’s a long process, so I tell you an easy 5 step process to get a patent

• Step 1 : Check whether your invention is novel, useful and non obvious
• Step 2 : Have some experts registered with the USPTO check that the patent is not published in any magazine or research paper
• Step 3 : Hire a registered patent practitioner or patent attorney to determine the patent ability
• Step 4 : File an application with specification, illustration and filing fees
• Step 5 : Your application will be examined by Patent Office examiner and would be notified about the status of your patent.

In order to know more about the details of how to get a patent for your invention, Click on How to Get a Patent