FAQ

Getting started

When should I talk to a patent attorney?

Before you disclose the invention publicly: a paper or preprint, a conference talk or poster, a public demo, a website, or a pitch deck shared without a confidentiality agreement. In the United States you have one year after your own disclosure to file. In most other countries, a public disclosure before filing can rule out a patent altogether. See When to file.

What should I bring to a first conversation?

A short description of what the technology does and how, what is new compared with existing approaches, any planned papers or talks, and who contributed. Please do not send confidential technical details in a first email. We will put confidentiality in place before discussing specifics.

Is my invention patentable?

To be patented, an invention must be new, not obvious to an expert in the field, and described well enough for an expert to reproduce it. It must also be the kind of thing the law allows to be patented: abstract ideas, laws of nature and natural phenomena are excluded as such. A search of earlier patents and publications helps answer the question before you invest in an application.

Process and timing

What is a provisional application?

A lower-cost filing that sets an early filing date and lets you say “patent pending.” It is never examined and expires after 12 months. To keep the date, you file a full (non-provisional) application, and often an international application, within that year. A provisional protects only what it actually describes, so a thin one can give false comfort.

How long does it take to get a patent?

In the United States, typically two to three years or more after a full application is filed, depending on the technology and the exchanges with the examiner. Prioritized examination (Track One) is available for an additional fee and aims for a final decision in about a year.

Can I protect my invention outside the United States?

Yes, usually through an international application under the Patent Cooperation Treaty (PCT), filed within 12 months of your first application. It preserves your rights in most countries and postpones the choice of countries, and most of the foreign cost, until about 30 months from the first filing. Deadlines abroad are strict and generally cannot be recovered once missed.

Cost

How much does a patent cost?

It depends mainly on the complexity of the technology and how much back-and-forth examination takes. Costs come in stages: preparing and filing the application, examination over the following years, maintenance fees after the patent is granted, and separate costs for each foreign country. Government fees are reduced for small and micro entities. I give an estimate for each stage before we begin.

Ownership and strategy

Who owns the invention: me, my company or my university?

The inventors own it at first unless they have assigned it. Employment agreements usually assign inventions to the company. University policies often give the university ownership of inventions made with its resources, which a startup then licenses, and federally funded research carries additional rules. Investors will check that every contributor has signed a written assignment.

Who should be named as an inventor?

Everyone who contributed to the conception of at least one claim, and no one else. Inventorship is a legal question, not a matter of seniority or authorship on a paper. Mistakes can sometimes be corrected, but they can also put a patent at risk.

Should I patent it or keep it a trade secret?

A patent gives exclusive rights for a limited term, generally 20 years from filing, in exchange for publishing the invention. A trade secret can last indefinitely, but only while it stays secret, and it does not stop someone who develops the same thing independently. Features competitors can see in your product usually suit patents; internal processes that cannot be reverse-engineered can suit secrecy.

Can software or a quantum algorithm be patented?

Sometimes. U.S. courts reject claims to abstract ideas, including pure mathematics or a method that simply runs on a generic computer. Claims fare better when they describe a specific technical improvement, such as a way of operating quantum hardware that reduces errors. Hardware and control systems are examined like other devices. See What can you patent in quantum computing?

What do investors ask about patents?

Usually who owns the technology, whether the inventors are named correctly, whether the claims cover the product, where applications are filed, whether you are free to sell without infringing others’ patents, and what is kept as a trade secret. See What investors ask about your patents.

Working together

Does contacting you create an attorney-client relationship?

No. An attorney-client relationship begins only when we agree in writing to work together. Until then, please do not send confidential details about an invention.