During my twenty plus years of practicing patent law, inventors often ask me:
“Does having a U.S. patent application mean that I am protected?”
In addition, many patent attorneys or firms may advertise by saying “protect” your invention by filing a patent application.
So what “protection” does a U.S. patent application provide?
Well, the first thing to keep in mind is this: A U.S. patent “application” is not a U.S. “Patent”.
Although filing a U.S. patent “application” is a necessary step in, hopefully, obtaining a U.S. “Patent”, it is certainly very possible that an inventor may file an “application” and never obtain a “Patent”.
To give an example, let us say I filed a utility non provisional patent application today for the “old” telephone. Assuming that my telephone is not new, from the prior art, in any way, then I will never get a U.S. patent.
However, assuming I comply with some basic superficial requirements, I can file my application for the “old” telephone, get a serial number, and have a “patent pending”.
Eventually, in a year or sometimes much longer, an examiner at the US Patent and Trademark Office (USPTO) will examine my non provisional application in detail, compare my claims versus the prior art, and reject my application, since there is nothing new about it.
Theoretically, I may go back and forth with the USPTO, respond to their rejections, appeal, and/or continue with further action.
While this is happening, I will have a patent application pending, with patent pending status.
However, I will never get a U.S. Patent, because there is nothing new about my “old” telephone.
And because I will never get a U.S. Patent, I will never be able to sue anyone for patent infringement.
Filing the patent application, assuming it is eventually published by the USPTO, may be useful as prior art against a later patent application by someone else to prevent them from patenting the “old” telephone; so perhaps this can be viewed as a kind of “protection”.
However, it is probably more accurate to view filing a non provisional patent application as a “step” to obtaining “protection” for an invention, i.e. a “step” to obtaining a “U.S. Patent”. Filing the patent application is one step, but to get an actual, approved, issued U.S. Patent, there are also other steps which must take place.
In any case, if you are thinking of filing for a U.S. non provisional patent application, you should consult with a registered patent attorney, such as Walter J. Tencza, Jr., Esq., PATENTNOW.COM®.
Copyright 2014 Walter Jr. Tencza, Jr. , Esq., All Rights Reserved.
Legal Disclaimer- the information provided herein is not legal advice. Transmission of this information is not intended to create, and receipt by you does not constitute, an attorney / client relationship. Although effort has been made to ensure that the answers are correct, Law Office of Walter Jr. Tencza Jr. and Patentnow.com® cannot and does not offer any warranty, express or implied that the answers contained are accurate statements of law. This document is provided for informational purposes only. Viewers must not act upon any information without first seeking advice from a qualified attorney outside the context of this document.
