Often Asked Questions About Patenting

The information provided below is not legal advice. It is of a general nature and does not apply to sets of specific facts or circumstances.

Q. Is there a time limit for filing a U.S. patent application after coming up with an idea and making a public disclosure by, for example, telling a potential investor who is not obligated to keep the disclosure of the idea confidential?

A. Yes, there is a time limit. The United States Code mandates that a patent application must be filed within one year from the first public disclosure. Not even one day more is permitted. Prospective patent applicants should promptly and fully inform their counsel of all facts surrounding any possible public disclosure that has been made and obtain specific advice about when and how to protect their patent rights.

Q.Will U.S. patents protect my invention in other countries?

A. No! In the present state of the law, application for patent must be made in the patent office of each country where protection is desired except that in some regions, protection may be available from a Patent Office subscribed to by a group of countries. An example is Europe, where the European Patent Office can grant a patent recognized in each of numerous European countries. There are similar situations that can be availed of in Africa and South America. Consult your own counsel for specific advice about this.

Q. Is there a time limit for filing a U.S. patent application after the invention to be patented has been offered for commercial sale?

A. Yes, an offer for commercial sale of the invention more than a year before filing an application covering it may bar the acquisition of enforceable patent rights. The Supreme Court in 1988 held that if an invention has been developed at the time of offer for sale to the point where a patent application could be prepared or a prototype could be made, then the clock for the one year period has begun to run. Again, prospective patent applicants should consult counsel promptly upon offering to sell and fully inform such counsel of all pertinent facts. Failing to so proceed risks loss of patent rights.

Q. Can a U.S. patent application be the basis for obtaining protection of the disclosed invention in foreign countries?

A. Yes, but separate applications must be filed in each of the foreign patent offices where protection is to be sought and in general, they must be filed within one year of the filing date of the U.S. application. In the economically developed foreign countries, moreover, there cannot have been any public disclosure, or actual sale of an embodiment of the disclosed invention prior to the filing date of the U.S. application. For answers to more specific questions, be sure to consult your counsel promptly.

Q. Is computer software patentable?

A. The U.S. Patent and Trademark Office has issued patents covering computers programmed with software to be protected and also patents covering software implementable methods. This is a developing area of the law, and courts have begun to rule on the patentability or validity of different types of claims, including software for conducting business. Again, it is important to consult your counsel promptly about the specific facts of the software you wish to protect.

Q. Are substances that occur naturally, but have not been previously discovered, capable of being patented?

A. In most economically developed countries, including the United States, a chemical compound that is a natural product, but which occurs naturally in a complex admixture with other substances, can be patented by one who both obtained that product in a partly or completely purified form and demonstrated a practical use for the so-purified compound.