Entrepreneur's Toolkit - Things to Know about Patents Skip to main content
Technology Transfer

Entrepreneur's Toolkit - Things to Know about Patents

Things to Know about Patents:

  • Patents are country-specific - you must have a patent in each country you want enforcement.
  • While patents have several parts, the claims define your right to exclude others in the market.
  • Patents require an application process, with costs up-front, during the application process, and throughout their lifetimes. The process can last months to years before a patent issues.
  • There are several kinds of patents and patent-like rights that can protect your ideas.
  • Patents are only as good as your willingness (and financial ability) to enforce them.
  • Patents are not always the right choice - choose wisely.
  • Patents do not guarantee business success.
  • Patents can only be granted for what is useful, new, and non-obvious, including relative to your own publicly available work (from a sale, offer for sale, or public disclosure). If you want protection outside the U.S., you must file for protection before a sale, offer for sale, or public disclosure occurs. The U.S. offers a one-year grace period where your own activities may not be disqualifying (don't blindly count on it).
  • Seeking patent protection requires identification of one or more inventors. An inventor is a human being who contributed to conception of the invention (coming up with the ideas of the invention).
  • While a patent may disclose (or describe) multiple inventions, only one invention can be protected per issued patent. Other inventions must be protected in other patents.
  • While a patent can only claim one invention, that single invention may be claimed in multiple ways, which is why patents often contain more than one claim.
  • Patents can only be enforced after they issue. Until then, they are "patent pending." In some rare cases, damages are available for infringement (unauthorized use, sale, offer for sale, or importation by another) that occurs prior to issuance.
  • While you cannot enforce a pending patent application, you can use the designations "Patent Pending," Patent Applied For," or similar, which may discourage a competitor from copying you.

Terms to Know:

  • Abstract - patent or application part; a very brief summary of the invention
  • Applicant - the person or entity seeking issuance of a patent by filing an application; the applicant(s) can be the inventor(s) of the invention or someone or some entity to which they assign the invention
  • Application - documents filed at a patent office seeking issuance of patent rights
  • Assignee - the person or entity to which the inventor(s) have transferred ownership of an invention (by an assignment)
  • Assignment - a document transferring ownership of a patent or patent application
  • Claim/Claims - patent or application part; typically at the end of the patent or application, the claim(s) define the scope of the right to exclude held by the patent owner
  • Comprising (see Consisting Of, Consisting Essentially Of) - a special word used in a claim to define the scope of the right to exclude and meaning "including everything that follows, plus anything more"
  • Conception - coming up with the idea or design of an invention (in a definitive and permanent form); conception is complete when the invention is sufficiently clear in the mind of the inventor to enable someone else (of "ordinary skill" in the relevant endeavor) to be able to make or use the invention without undue experimentation; conception does not require reduction to practice
  • Consisting Essentially Of (see Comprising, Consisting Of) - a special phrase used in a claim to define the scope of the right to exclude, meaning "including everything that follows, plus substantially nothing more"
  • Consisting Of (see Comprising, Consisting Essentially Of) - a special phrase used in a claim to define the scope of the right to exclude, meaning "including only the following and nothing more"
  • Continuation Application - a type of continuing application that does not add new disclosure or seek to protect a different invention than was sought in the prior application
  • Continuation-in-Part Application - a type of continuing application that adds new disclosure and seeks to protect a combination of the old disclosure and the new disclosure
  • Continuing Application - a type of patent application that claims priority to a previously filed application (discloses identical or similar subject matter and seeks the benefit of the earlier filing date when determining newness and non-obviousness
  • Divisional Application - a type of continuing application that does not add new matter but seeks to protect a different invention than was sought in the prior application
  • Drawing - application part; a visual depiction included in an application to aid in understanding the invention
  • Election - after a patent office requires restriction of an application to a single invention, the application files an election to elect which invention to pursue in the application; any non-elected invention(s) are pursued in one or more divisional applications
  • Examiner's Report (see Office Action) - a formal document issued by a patent office (not in the U.S.); explains action being taken by the patent office and/or action being required of the applicant
  • Enablement - a requirement that a patent application actually teaches and describes how to make and use the claimed invention
  • Examination - the process by which a patent application is reviewed and a determination of whether and at what scope a patent should issue is arrived at
  • Examiner - a human at the patent office who conducts examination of an application
  • Grant/Issue - the step of formally turning an application into a patent after examination
  • Industrial Applicability (see Utility)
  • International Search Report (ISR, see Written Opinion) - for international applications, a document summarizing results of the patentability search conducted by the international searching authority
  • Invention - the product, process, machine, manufacture, composition of matter, or improvement thereof that is the subject of a patent or application
  • Inventor - a human being (as opposed to an AI entity) who contributes significantly to conception of an invention; someone who contributes only to reduction to practice of an invention is not an inventor
  • Issue/Grant - the step of formally turning an application into a patent after examination
  • Method (see Process) - one of the types of invention that can be patented; a series of steps for doing something useful
  • Nationalization/National Stage - individual application filing in each nation from an international patent application
  • Nonobvious - the concept that the monopoly of a patent should not be granted to cover obvious improvements on what has gone before; the question of obviousness/nonobviousness is often a key focus of patent examination
  • Novelty - the concept that an invention must be "new," including that the invention cannot have been known or used by others before the application was filed and that even the applicant or inventor(s) cannot have publicly used or disclosed the invention before the application was filed (with very limited exceptions)
  • Obvious (see Nonobvious) - obvious inventions cannot be patented
  • Office Action (see Examiner's Report) - a formal document issued by a patent office; explains action being taken by the patent office and/or action being required of the applicant
  • Paris Convention - an international treaty governing several types of IP, and ensuring that an applicant who files a patent in one country can file corresponding patents in other countries within 6 months (design patents) or 12 months (utility patents)
  • Patent - the granted/issued enforceable right to exclude others from making, selling, offering to sell, importing, or using the claimed invention
  • Patent Cooperation Treaty (PCT) - an international treaty allowing applicants to take the initial stages of seeking patent protection in multiple countries without having to file applications in each country of interest (reduces up-front costs)
  • Patent office - a government agency assigned to receive and examine patent applications and issue patents
  • Patentable/unpatentable - each patent application is subject to an examination process that examines whether a patent should be granted or not; in office actions, "unpatentable" often means "obvious"
  • Power of attorney - a document authorizing a representative to act for an applicant or owner with respect to a patent or application
  • Process (see Method) - one of the types of invention that can be patented; a series of steps for doing something useful
  • Receiving office - a government agency (typically a patent office) authorized to receive international applications under the PCT
  • Reduction to Practice - the process of building a working invention that was conceived by the inventor; reduction to practice may be actual (actually making or using a process, machine, manufacture, or composition of matter or actually producing a product with an inventive design) or constructive (effective upon filing a patent application disclosing the invention)
  • Restriction (or Restriction Requirement) - a process that occurs when a patent office determines that the claims of a single application are directed to more than one invention; the patent office will require that the application elect only one invention to be examined or pay for more inventions to be examined
  • Specification - patent or application part; the written disclosure of an application, excluding the claims and abstract; contains a detailed written description of the invention in a way that others can make and use the invention; includes background, summary, and detailed description
  • Unity of Invention - a requirement that each patent be directed to only one invention (related to restriction and election)
  • Utility - a requirement for patentability that a claimed invention be useful (sometimes known internationally as "industrial applicability")
  • Written Opinion - a document accompanying the ISR (see International Search Report) that explains the patentability or unpatentability of claims of an international application (see Office Action/Examiner's Report for national version)