View our FAQs about patent protection to learn more about the process of obtaining a patent.

Small Inventions Can Have a Powerful Effect

A patent is a very powerful property right that allows the inventor to exclude others from the day a patent is granted until the date 20 years after the patent application was filed. Many times people believe that a small advancement over what has been done before is not patentable. However, even small advancements can receive patent protection and, in fact, most inventions do not involve a quantum leap over what has been done before. Many times it is the smallest advancement on an existing product that proves to be the most profitable to a business because the market for the product is already developed.

Polster Lieder's Patent Practice

Polster, Lieder’s patent practice can be divided into five primary areas:

1. Obtaining Patent Protection for Our Clients

At Polster, Lieder we have been helping our clients obtain patent protection on their inventions since 1879, and we have the longest continuing patent practice in the St. Louis area. To view Polster, Lieder patents, click here.

Ninety-five percent of our partner and associate attorneys are licensed to practice before the U.S. Patent & Trademark Office and have degrees in areas such as Electrical Engineering, Civil Engineering, Mechanical Engineering, Chemical Engineering, Chemistry, Pharmacy and Computer Science.

We take great pride in helping our clients obtain the broadest patent protection to which they are legally entitled.

2. Protecting Foreign Rights

Polster, Lieder attorneys assist their clients in obtaining and enforcing foreign patent rights every day. Our attorneys understand the differing requirements for obtaining patents in every region of the world and have an extensive network of foreign patent attorneys through which we work. We commonly assist our clients in obtaining patents in established economic regions, like Europe, Canada, Japan and Australia, as well as economies beginning to have a large impact on U.S. exports, such as South America, Korea and China.

3. Avoiding the Intellectual Property Rights of Others

Obtaining patent rights to protect one’s own inventions is an important part of starting or running a business. Avoiding the patent rights of others is just as important. Seeking the advice of an attorney early in the product or process design cycle can help a business in a number of ways. First, conducting even a quick, in-the-office computer search may avoid having you or your employees re-inventing what has already been invented and can materially shorten the design process. Second, this search will help you avoid infringing the legitimate patent rights of others and/or prevent your later defending a patent litigation suit or being forced to redesign a product or process. Additionally, our attorneys can research various sources of prior art to determine if a competitor’s patent is still enforceable or if a competitor’s patent is invalid.

4. Licensing

All Polster, Lieder attorneys have experience in assisting their clients to license their technology and obtain licenses from third parties. Licenses can be structured in a myriad of ways to best meet the expectations and requirements of both parties. Polster, Lieder attorneys can draw upon their previous experience to craft a suitable agreement, as well as utilize creativity in meeting a new situation.

5. Prosecuting and Defending Patent Suits

Sometimes it becomes necessary to utilize the courts to protect one’s legitimate patent rights. Our attorneys have decades of experience both prosecuting and defending patent litigation and have assisted clients in fighting off suits that sought injunctions and minimum money damages to suits that sought millions in money damages along with an injunction. Likewise, we have prosecuted suits that have successfully obtained millions of dollars in damages for our clients.

Additionally, alternatives to litigation in the federal courts may be more advantageous to a client. In some cases, it may better suit a client’s need to prosecute a case before the U.S. International Trade Commission to block importation of goods, or to file for a re-examination of an issued patent by the U.S. Patent & Trademark Office, or even to go to arbitration or mediation.

Patent FAQs

1. What is a Patent?
2. Can I get a patent on my invention?
3. What are the standards for an invention to be patentable?
4. What Are the Steps for Obtaining a Patent?
5. Do I have a time limit in which to file a patent from when I start selling or offering to sell my product or showing or using it publicly? What does the term statutory bar mean?
6. Can someone else file after me and prevent me from obtaining a patent even though I filed first? Should I keep an inventor's notebook?
7. Can I do my own patent search?
8. Do I have to inform the Patent Office of the patents found in a patent search?
9. Can I file my own patent application?
10. What is a patent attorney?
11. Can I sell my invention without obtaining a patent?
12. People have told me that my invention has probably been done before, should I forget about obtaining a patent?
13. Does a U.S. Patent protect my invention outside the U.S.?
14. What is a plant patent?
15. What is a design patent?
16. What is a provisional patent application?
17. What is a Utility Patent?
18. What does "Patent Pending" mean?
19. When does patent protection begin?
20. Can I sell my invention to a company without a patent application or patent?
21. Can I get any sort of protection by writing down my invention and mailing it to myself (i.e. a poor man's patent)?
22. I am an employee, what should I know about my patent rights?
23. I am an employer, what should I be doing to protect employees' invention?
24. I would like to get a patent on an existing product that upon which the patent has expired, can I do this?
25. Are patents renewable?
26. I want to get a patent on an idea that has been out there, but no one ever filed for a patent upon, can I do this?

What is a Patent?

A patent is essentially an agreement between the government and the inventor. Within the patent the inventor explains how to make and use the invention and the best way known to the inventor for carrying out the invention. In return, the government grants the inventor the right to prevent others from making or using the claimed invention for a period of time. The period of time will vary depending upon different factors, such as the time it takes to get the patent granted, but is in the range of 17 years.

It is the “claims” at the end of the patent that define what the inventor is allowed to prevent others from doing. The claims must be specific enough to cover the invention, but should be broad enough to encompass different ways competitors may attempt to avoid (or design around) the patent. The claims are the most important reason for obtaining the assistance of a skilled and experienced patent attorney.

Patents are different from trademarks and copyrights. Click the links to understand what trademarks and copyrights cover.

Can I get a patent on my invention?

Volumes have been written on this subject, but essentially, you can obtain a patent on any new, novel and non-obvious product or process. Improvements to existing products are patentable, as well as business methods, computer software, methods of making products, and methods of using products.

Additionally, special categories of patents, called plant patents and design patents, are available to protect new plant types and to protect the ornamental appearance of new product designs.

What are the standards for an invention to be patentable?

First, the invention must be useful.

Second, the invention must be new or “novel”. An invention is novel as long as there is no prior patent, publication or existing product that contains all the elements of your invention, or which, if combined, as suggested by the prior art itself, make the invention obvious.

Lastly, the invention must not be “obvious”. If it would be obvious to modify an existing product, or if it would be obvious to combine two or more existing products, to come up with your invention, then your invention is “obvious” and not patentable. If it is not obvious to modify a prior product or if it is not obvious to combine prior products to come up with your invention, then your invention is not obvious and is patentable.

What Are the Steps for Obtaining a Patent?

Generally, the process for obtaining a patent can be broken down into four primary steps:

First, the inventor can have a search done at the U.S. Patent & Trademark Office to see if anything, the same or similar to the invention, has been done before. From the results of the search, a patent attorney can give you an idea of whether your patent will receive broad or narrow coverage, or whether your invention is patentable at all. See below for an explanation of what it means to have broad or narrow coverage. This is an optional step. There is no requirement that the inventor perform a patent search prior to the filing of an application, but the search can help determine whether meaningful patent protection is available and aids in drafting a specification that meets the patent statue's requirements.

Second, a patent application is prepared and submitted to the U.S. Patent & Trademark Office with the filing fee. The patent application contains a full description of the invention and concludes with a number of claims that define the inventor’s legal right to exclude others from the invention. The claims can be compared to the metes and bounds on a deed to a piece of land. The claims define what belongs to the inventor and describe the invention. However, they cannot be so broad as to cover things that have been done before, but should not be so narrow as to allow others to easily design around your invention.

After the application is filed with the U. S. Patent & Trademark Office, the application is assigned to a patent examiner. The examiner will review the application and conduct his or her own patent search to make a determination of the patentability of the claims filed in the application. The examiner writes up his or her opinion of the patentability of the claims in a communication called an office action. Typically, in the first office action, the examiner rejects some or all of the claims of the patent application. At this point, the inventor must respond with an argument that the patent examiner has misconstrued the invention or the patents relied upon in the rejection, or, if the rejection is legitimate, the inventor must narrow the patent claims. This “prosecution” or “examination” phase can continue for as long as the examiner makes new rejections or continues in his previous rejections, until the examiner makes the rejection “final.” Generally, the differences with the examiner can be resolved within 1-3 office action responses.

When a resolution is reached with the examiner, a Notice of Allowance will be issued and an issue fee and publication fee will have to be paid. The U. S. Patent & Trademark Office will issue the patent within about three months from the payment of the issue and publication fees. The patent is enforceable for 20 years from the date of filing of the application. However, to maintain the patent in force, maintenance fees must be paid by the end of 3˝, 7˝, and 11˝ years from the issue date of the patent. If the maintenance fees are not paid, the patent will lapse.

When the patent expires, or lapses due to a failure to pay a required maintenance fee, the patent becomes part of the public domain, and no one can be stopped from using the claimed invention.

Do I have a time limit in which to file a patent from when I start selling or offering to sell my product or showing or using it publicly? What does the term “statutory bar” mean?

You do have a time limit in which to file a patent application. If you wait too long you may be subject to a “statutory bar”, which essentially means that the rules no longer allow you to file a patent application. In the U.S., the grace period for filing a patent application is one year from the date that:

• the invention was patented or described in a printed publication in this or a foreign country by anyone (including yourself) more than a year before your filing date OR

• the invention was in public use or on sale in this country more than one year prior to the date of your patent application filing date in the United States (by you or anyone else).

Keep in mind that if you are interested in obtaining foreign patent rights in your invention, almost all foreign countries have no grace period at all.

Can someone else file after me and prevent me from obtaining a patent even though I filed first? Should I keep an inventor's notebook?

In the United States, the first to invent, not the first to file an application, is awarded the patent. The U. S. Patent & Trademark Office assumes that the first filer is the first to invent. However, if two people claim the same invention, the U. S. Patent & Trademark Office may declare an interference in which a proceeding is held in which it is determined who invented the invention first. This is a very complicated proceeding where, very generally, each inventor attempts to show his invention date through corroborating evidence.

If the other person claims their invention differently from yours, but the patent examiner has determined that their patent application renders your invention old or obvious, you may “swear behind” their application if you can show that you invented before the other person’s filing date. If you cannot show evidence of your invention before the other’s filing date, the other person’s patent or patent application can prevent you from obtaining a patent.

Both of these situations give good reason for you to keep very detailed records of your activities. Keep a record of your activities such that a person with average skill in the area of your invention could read and understand it. Include critical information about your invention, such as sketches, printouts, photographs, blueprints or other important information. You should keep a record as you go along, rather than try to recreate what you did later. The notebook should preferably be bound, entries should be written in ink and the notebook should not have blank pages. The notebook should have pre-printed numbers on the pages by the printer. Each page should be dated by you and witnessed by two other people who are not co-inventors and do not have an interest in the invention. Each person should state, in writing, that they have read and understood your notes and they should sign and date their statements. Also, keep a record of your failures as well as your successes.

Can I do my own patent search?

You can do your own search by searching the U.S. Patent & Trademark Office’s online database at www.uspto.gov/patft/. However, an experienced patent attorney will be able to formulate a search that may find more patents. Additionally, an experienced patent attorney may consider patents you would reject, as being important to the patentability of your invention. If you do your own search, remember to print out copies of the patents you view.

Do I have to inform the Patent Office of the patents found in a patent search?

Yes. Every applicant has a duty of candor to inform the Patent Office of any information that may be pertinent to the examination of the application. This duty of candor is an on-going duty, and lasts until the patent has been allowed. Such information includes patents and other publications, as well as any existing products. Failure to inform the Patent Office of such “prior art” can cause your patent to be invalidated. You should inform your patent attorney of any information you may have so that he or she can determine if it needs to be provided to the Patent Office.

Can I file my own patent application?

You can file your own patent application. However, it is advisable to seek the assistance of a knowledgeable and experienced patent attorney. The reference book used by patent examiners and patent attorneys for the practice and procedure for obtaining a patent has over 2500 pages and the process is filled with traps and pitfalls. However, if you are interested in investigating and acting as your own patent attorney, these pages and the U.S. Patent & Trademark Office’s Inventor's Assistance Center may provide some useful information.

What is a patent attorney?

A patent attorney is an attorney at law who is licensed by the U.S. Patent & Trademark Office to represent inventors before it. Only those who are licensed by the U.S. Patent & Trademark Office can represent inventors (other than someone representing him or herself) seeking a patent. Ensure that anyone you speak to is licensed by the U.S. Patent & Trademark Office.

A patent attorney usually has a degree in engineering or a pure science (i.e. Biology, Chemistry, Computer Science, etc.). As attorneys at law, they are also licensed to practice law in at least one state.

Additionally, “patent agents” may represent individuals in patent matters before the U.S. Patent & Trademark Office. Patent agents usually have a degree in engineering or a pure science but are not licensed to practice law. Patent agents may not give legal advice regarding infringement, patentability, patent validity or other legal matters handled by the courts.

Can I sell my invention without obtaining a patent?

Yes, but you cannot stop others from copying your invention and selling it as well.

People have told me that my invention has probably been done before, should I forget about obtaining a patent?

No. Unless the person can tell you what they have seen that is like your invention, do not be discouraged by the advice of non-patent attorneys. Without a thorough search of the prior art, no one can “guess” that your invention was previously invented. Unless that person can point to a specific product that incorporates your inventive concept, no person can tell whether or not an invention is new without performing a search of the prior art.

Does a U.S. Patent protect my invention outside the U.S.?

No. Patents are national in scope, and in order to protect yourself in foreign countries, you must obtain patents in the countries in which you want protection. Polster, Lieder attorneys can help you in obtaining patents in foreign countries.

What is a plant patent?

Plant patents can be obtained to protect new varieties of plants that have been asexually reproduced. “Asexually reproduced” means that are reproduced by means other than from seeds, such as by the rooting of cuttings, by layering, budding, grafting, inarching, etc.

What is a design patent?

Design patents cover the ornamental appearance of a product rather than the functionality or structure of the product. Design patents are less expensive to obtain than utility patents, but last only 14 years from their issue date. Because a design patent covers only the ornamental appearance of a product, a design patent cannot be used to prevent others from making the same type of product but with a different appearance. There are no maintenance fees for design patents.

What is a provisional patent application?

A provisional application is a basic filing that discloses the invention. A provisional application must meet all the requirements of a regular or non-provisional application, but can be filed without claims. A provisional patent application is not examined or even read by anyone at the Patent Office. A provisional patent application expires one year after it is filed. To receive a patent based on the provisional, you must file a non-provisional (i.e. “normal”) patent application that claims “priority” to the provisional application within one year after the filing date of the provisional application. The non-provisional application receives an effective filing date of the provisional for everything disclosed in the provisional application. Because provisional applications are not reviewed by the U. S. Patent & Trademark Office, there is no such thing as a “provisional patent”, only a “provisional patent application”.

An inventor would file a provisional instead of a non-provisional application if:

1. the inventor wants to keep patent costs low while attempting to find a market for the invention;

2. the inventor wants to get an early filing date quickly; or

3. the early years of the invention will not be as profitable as the later years. This is because the expiration of the resulting patent will be measured from the filing date of the later-filed non-provisional application, not the filing date of the provisional application. If the inventor waits the full year before filing his non-provisional application, the inventor is essential giving up one year of term off of the front of the patent term in exchange for an extra year on the end of the patent term.
    

What is a Utility Patent?

A utility patent is a “standard” patent for an invention, i.e. not a design patent or a plant patent. When people think of patents, they are generally thinking of utility patents.

What does "Patent Pending" mean?

“Patent pending” means that the person who has placed the “patent pending” marking upon the product has filed a patent application with the U. S. Patent & Trademark Office which they believe, when issued, will cover some aspect of the product upon which they have placed the marking. A person who marks a product with “patent pending” has no legal right to exclude others from making the same product. However, competitors may avoid copying a product that is marked “patent pending” due to the possibility that they may be stopped from making the product at some time in the future. This is particularly true where there are high startup costs to making the product. It is unlawful to mark a product with the legend “patent pending” if no application is filed.

When does patent protection begin?

Your patent is not enforceable until it is issued by the Patent Office. However, unless non-publication is requested at the time the application is filed, patent applications are now published 18 months after their effective filing date. If the claims in the issued patent are substantially identical to the claims in the published application, you can collect damages from an infringer equal to a reasonable royalty from the date of publication or date of infringement, which ever is later, to the date of issuance of the patent.

Can I sell my invention to a company without a patent application or patent?

While that is possible, a better approach is to have your potential buyer sign a nondisclosure agreement. Most companies refuse to sign non-disclosure agreements and require you to have an application on file before they will even talk to you.

Can I get any sort of protection by writing down my invention and mailing it to myself (i.e. a poor man's patent)?

You obtain no patent rights by mailing yourself a letter containing a description of your invention. Because the letter is self-serving and not corroborated, it is poor evidence of conception of the invention. The U. S. Patent & Trademark Office does maintain  Document Disclosure Program that is excellent evidence or proof of conception of an invention. However, you should be aware that the Document filed under this procedure does nothing to obtain any sort of patent rights and does nothing to protect your invention from the statutory bars to obtaining a patent.

I am an employee, what should I know about my patent rights?

Many companies require their employees to sign agreements that state the employee will sign over to the employer any inventions they make on the job or within the scope of employment. These agreements are binding, although many states have laws that affect the allowable scope of these agreements, preventing the company from obtaining the rights to patents that are outside of your scope of employment and done “off the job.”

If you have not signed such an agreement, but arrived at the invention using your employer’s time and/or materials, you may own the invention, but your employer may have a non-transferable “shop right” to use the invention without payment of a royalty to you. If you have not signed an agreement and made the invention with your own time and materials, you may own the invention and not be subject to a shop right.

In certain instances, it is possible that your employer owns your inventions made within the scope of your employment even if you did not sign a written agreement. You should contact an attorney to resolve the ownership status of inventions made within the scope of your employment.

I am an employer, what should I be doing to protect employees' invention?

First, you should have every employee sign an agreement that requires them to assign to the company their inventions made within the scope of their employment. Many states have specific requirements for these agreements and you should contact a patent attorney.

Next, you should have appropriate forms for employees to disclose their inventions to you. Many times employees have goods ideas about improvements to your products or the way they are made, but there is no formal process for these ideas to make their way up the chain of command. Consider a financial award for employees to submit new ideas. Many companies will give a small reward for non-trivial disclosures, a larger award if a patent application is filed and a larger award if a patent is actually granted.

Can I obtain a patent on an existing product upon which the patent has expired?

No. Once a patent has expired, the public is free to make and use that invention forever. Further, you may not obtain patents to products that you did not invent. If, however, you modified the product, you may be able to obtain a patent to the improvements to the product.

Are patents renewable?

No, patents have a fixed term and are not renewable. Congress can extend the life of patents and have done so in some specific situations.

I want to get a patent on an idea that has been out there, but no one ever filed for a patent upon, can I do this?

No. Even if someone never filed for a patent application upon a product that would have been patentable, you may not file a patent application for the product. First of all, you would not be the inventor, and could not honestly sign the declaration that must be submitted with the application. If, however, you modified the product, you may be able to obtain a patent to the improvements to the product.

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