Intellectual Property Law
The three primary types of U.S. patents are:
To qualify for a patent, an invention generally must be:
The patent process involves a series of decisions that unfold over months or years. We walk through each stage in plain English so you understand what you are deciding before you decide it.
Not every invention qualifies for patent protection. We start by discussing what you have created and whether it is likely to meet the thresholds of novelty, non-obviousness, and utility. Understanding where your invention stands relative to those requirements is the right starting point before any filing decisions are made.
Before filing, it is worth understanding what has already been patented or publicly disclosed in your field. A prior art search reviews existing patents, published applications, and technical literature to identify what is already out there. This helps clarify how your invention compares and how your claims might be positioned.
For many inventors, the process begins with a provisional patent application. A provisional establishes a filing date, allows use of the term “patent pending” for up to 12 months, and gives you time to continue developing your invention before committing to a full utility application. Understanding the differences between provisional and non-provisional filings, and the tradeoffs of each, is an important early decision.
The utility patent application includes a written description of the invention, drawings where applicable, an abstract, and the claims. Claims define the legal scope of what your patent covers. How they are written determines what you actually own. This is where the quality of drafting has the most direct impact on the value of the patent.
After filing, the USPTO assigns your application to an examiner who reviews it and issues an office action, typically raising objections or rejections to some or all of your claims. Responding to office actions, making arguments for allowance, and negotiating the scope of your claims is a process called prosecution. Most applications go through at least one round before a decision is reached.
A granted patent gives you enforceable rights for the duration of the patent term, subject to maintenance fees paid at set intervals. Understanding your ongoing obligations after a patent issues, and what happens if those obligations are not met, is part of managing your intellectual property as a long-term asset.
A utility patent may cover a new and useful process, machine, article of manufacture, or composition of matter, as well as improvements to any of these. To qualify, the invention generally needs to be novel, non-obvious, and useful. Abstract ideas, natural phenomena, and laws of nature are not patentable on their own, even if they are newly discovered. Software and business methods can qualify in some circumstances depending on how they are framed and what they do. An assessment of your specific invention is the most reliable way to understand whether it is likely to meet the requirements.
A provisional application establishes a filing date with the USPTO and allows use of the term “patent pending” for up to 12 months. It is not examined and does not become a patent on its own. To pursue an actual patent, you must file a non-provisional utility application before the provisional expires. Many inventors start with a provisional because it is less costly to prepare and gives them time to assess commercial viability before committing to the full process. The 12-month window is fixed, and missing it means losing the benefit of the earlier filing date.
Utility patents granted under current law generally last 20 years from the filing date of the non-provisional application, subject to maintenance fees paid at set intervals. Design patents have a term of 15 years from the date of grant. After a patent expires, the invention enters the public domain and can be used freely by anyone. Failure to pay required maintenance fees before a patent expires can result in the patent lapsing early.
Patent prosecution refers to the back-and-forth process of communicating with the USPTO after an application is filed. After an examiner reviews your application, they typically issue an office action raising questions, objections, or rejections related to your claims. Responding to those office actions, arguing for allowance, and negotiating the scope of what gets covered is prosecution. The quality of prosecution has a direct effect on how broad or narrow your final patent claims are, which affects the practical value of the patent.
Yes. The USPTO allows inventors to file without an attorney, a process called filing pro se. However, the scope of what your patent actually covers depends heavily on how the claims are drafted. A patent can technically issue and still offer very limited coverage if the claims are poorly constructed. Writing claims that accurately capture what you invented, and anticipate how a competitor might design around them, is a significant part of what patent attorneys do. The value of the patent is often directly tied to the quality of that drafting work.
Patent pending means a patent application has been filed with the USPTO and is currently awaiting examination. It applies after either a provisional or non-provisional application is filed. The designation itself does not grant any legal rights, but it serves as public notice that an application is on file and that a patent may eventually issue. Using the term “patent pending” without having a filed application is a federal offense.
No. A U.S. patent only provides rights within the United States. If coverage in other countries is important, you would need to file in those countries individually or use the Patent Cooperation Treaty process, which allows a single international application to be extended into multiple member countries. International filing involves additional cost, specific deadlines, and strategic decisions about which markets matter most. These considerations are worth discussing with an attorney if foreign markets are relevant to your situation.
Yes. Tom Fortenberry, the firm’s founding attorney, began his legal career as a patent attorney, working with inventors on patent applications filed with the United States Patent and Trademark Office across a range of technology areas. He spent years drafting patent applications and working through the examination process with the USPTO before transitioning to estate planning and business law. That background informs how the firm approaches patent consultations today.
A utility patent covers how something works or how it is used. A design patent covers how something looks. If you have invented a product with a novel function, a utility patent is typically the relevant filing. If the distinctive value of your product is its appearance or ornamental design rather than its function, a design patent may apply. Some products qualify for both. Design patents are generally less expensive and faster to obtain than utility patents, but they provide a narrower scope of coverage focused specifically on the visual appearance of the article.
