There are many misconceptions surrounding patent law issues. While it is not the goal of this article to provide a comprehensive discussion on this area of law, it is my hope that this article will help lay to rest some of the common myths and urban legends.

Myth #1: I can patent my idea.
Fact: Patents do not protect mere ideas or concepts. An invention must be reduced to practice. This is accomplished through either actual reduction to practice (showing that the claimed invention works for its intended purpose), or constructive reduction to practice (filing a patent application for the claimed invention).

Myth #2: I want to patent my song, poem, etc.
Fact: Surprisingly, I hear this one a lot from laypersons. It's a common misconception that all intellectual property is somehow lumped together. But the patent system does not protect creations like music and literary works - those are protected by copyright. A patent protects the invention or discovery of "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof." There is a special type of patent - a design patent - that protects only the ornamental design of certain objects, and not the functional or structural characteristics.

Myth #3: I can keep information about my patent a secret.
Fact: In order to obtain a patent, the inventor must disclose how to practice the invention. Thus, there must be sufficient disclosure of the claimed invention such that it would enable one of ordinary skill in the art to make and use the invention, and also disclosure of the best mode of carrying out the invention. The information of the invention must be communicated to the interested public in a meaningful way. The information contained in the application is published by the PTO after 18 months from the earliest filing date, unless the applicant files a statement certifying that the invention has not and will not be filed in an application in another country. In any case, when a patent is issued, the information becomes a public record. Disclosing to the public (by way of your application) how to practice the invention becomes the quid pro quo in exchange for the government granting you exclusive rights in a patent. The inventor must choose between keeping the invention as a trade secret, or disclosing it in order to obtain a patent. The inventor cannot have it both ways.

Myth #4: A patent is a guarantee of an invention's marketability.
Fact: A patent gives the patent owner (patentee) a number of negative, rather than affirmative rights. These include the right to exclude others from making, using, offering for sale or selling or importing the patentee's invention. A patent is no guarantee of any market value of the invention, and the Patent Office assumes no role in the promotion of the invention. Once a patentee receives a patent for an invention, it is the patentee's responsibility to exploit it. There have been many patents that have never produced revenue for their inventors.

Myth #5: A patent attorney must draft and file my patent application.
Fact: The drafting and filing of a patent application can be a complex matter, and it is usually wise to consult a qualified practitioner to help protect your invention. However, there is no legal requirement that an inventor retain a patent attorney or patent agent to perform this function. An inventor can prepare and file his/her application and directly engage in all communications with the Patent and Trademark Office (PTO) pending the patent's issue. This is called a pro se application. Keep in mind that a pro se applicant is subject to the same patent laws and regulations as a patent attorney or agent, and bears the same burden. Contrary to the beliefs of some, the PTO will not give preferential treatment nor will it make any exceptions in the law for the pro se applicant. However, many examiners at the PTO may be able to give some procedural advice to inventors to help them along with the process.

Myth #6: Patent agents are cheaper than patent attorneys.
Fact: Not necessarily. I know of many patent agents whose retainer fees are comparable to the fees charged by attorneys with the same level of expertise. The cost of prosecuting a patent application can vary widely, and the cost to a client usually has little to do with whether the practitioner is an agent or attorney. Both patent agents and patent attorneys have passed the same rigorous examination and the PTO views them both as equally qualified to represent clients in patent prosecution matters. The difference between the two is that patent attorneys have graduated from an accredited law school and are licensed to practice law in some jurisdiction. A patent agent cannot practice law, and as such, cannot conduct patent litigation in the courts or perform various services which the local jurisdiction considers as practicing law, such as drafting contracts.

Myth #7: I can just get a provisional patent and save money.
Fact: There is no such thing as a provisional patent. However, an inventor can file what is called a provisional application, which establishes the inventor's priority (establishment of the earlier filing date) of the invention. These are relatively inexpensive, but have certain limitations. The provisional application enables the inventor to get a "foot in the door" of the patent system. However, the provisional application does not automatically mature into a non-provisional (regular) patent application, nor does it yield a patent by itself. It is necessary for the inventor to file a corresponding non-provisional patent application within 1 year after the filing of the provisional application. Failing to do that, the inventor will lose the earlier priority date from the provisional application. It is important to note that while a provisional application does not require the filing of any claims or disclosure of prior art, it does require a written description and adequate drawings to provide enabling information to one having ordinary skill in the art.

Be forewarned that there are some unscupulous "invention marketing firms" out there that prey on unwary inventors. They often lure inventors with a cheaply-drafted provisional application, then leave the inventor high and dry when it comes time to file the non-provisional application. If it sounds too good to be true, it probably is. Oftentimes, the inventor marketing firm will merely sell a "kit" that tells you how to file an application. In this case, you would be far better off in buying a good how-to manual, such as the superb Pressman book, and learning how to file the application yourself. At the end of the day, you generally get what you pay for. If you truly value your invention, it's money well spent to seek out the advice of a registered patent attorney or agent.

Myth #8: I can enforce my U.S. patent overseas.
Fact: A U.S. patent enables a patentee to exclude others only in the United States. Persons in other nations are free to make use of the invention and the patentee has no power to stop them. However, a valid U.S. patent can be used to prevent the importation into the United States of anything within the scope of the patent. If you want patent protection outside the U.S., you must file patent applications in those nations, in accordance with the patent laws of those nations.

Myth #9: I can start promoting my invention until I develop a market, and apply for a patent later.
Fact: If you wait too long, you could irretrievably lose your patent rights in the United States. Under U.S. patent law, if an inventor publicly uses or places an invention on sale, or describes the invention in a printed publication (anywhere in the world) more than 1 year prior to the date of application, the inventor loses all right to a patent, and the invention becomes public domain. This is sometimes referred to as the 1 year grace period. Thus, the inventor may be able to publicly disclose or exploit the invention, but runs the risk of losing patent protection if more than one year elapses. In most other nations, there is no 1 year grace period - the inventor loses the right to a patent as soon as the invention is disclosed or used (absolute novelty).

Sadly, this is a trap that catches too many unwary inventors. Therefore, it is important for inventors to seek qualified patent counsel to determine the best course of action to ensuring their patent rights as soon as possible.

Myth #10: If I file a patent application and later find some relevant prior art, I can just ignore it and assume that nobody will find it.
Fact: An inventor must be forthcoming in disclosing any prior art that may be relevant to the invention. This duty does not end once the application is filed. If an inventor discovers relevant prior art and "hides the ball," it could open the door to some serious legal problems in the future. Depending on the circumstances, the inventor could have his patent invalidated, be sued for infringement by the owner of the prior art, and even suffer substantial legal penalties by the court for inequitable conduct. Do not assume that any prior art will escape detection by others, even if it appears to be obscure. There are many people whose job it is to ferret out prior art in an effort to invalidate patents or protect a client against possible infringement actions. If your patent has any economic value, you should assume that somebody (i.e., your competitor) may be looking for ways to shoot it down.

Myth #11: I've heard that I can get an extension on the term of my patent when it is about to expire.
Fact: Only under very limited circumstances. The term of a U.S. patent is 20 years from date of application. If the applicant had filed a provisional application and followed that with the filing of a non-provisional application, the combined patent term can be no longer than 21 years from the date of filing the provisional. There are very specific situations in which an patentee may be granted an extension of the patent term. This applies only in the case of certain pharmaceutical and medical device patents, where the patent had issued but the patentee had to wait for pending FDA approval of the pharmaceutical or device. This is called patent term restoration, and it is limited to a maximum 5 years of restoration, and the total patent life with the restoration cannot exceed 14 years. The premise of this extension is to restore some of the lost patent term due to delays in FDA approval.

There is also a patent term guarantee, in that the PTO grants the applicant an amount of patent term extension to compensate for certain administrative delays caused by the PTO during the pendency of the patent. Generally, the PTO will extend the term by one day for every day that the pendency of the patent had exceeded 3 years. The amount of extension is limited to a maximum of 5 years, and extensions are not granted for any delay caused by the applicant. The patent term guarantee does not apply to design patents.

Myth #12: I must retain a patent attorney in my own state.
Fact: Patent law is exclusively under federal jurisdiction. Therefore, you are not required to select an attorney who practices in your state. Thus, for example, a patent attorney practicing in Minnesota can represent a client from Oregon. Of course, in the case of litigation, you will generally need to hire local counsel in the jurisdiction where the lawsuit is sited. But for the filing and prosecution of U.S. patent applications, a registered attorney or agent can represent clients from out of state or even overseas.

Myth #13: If I forego obtaining a patent and choose to keep my invention as a trade secret, I will still have protection.
Fact: Well...sort of. There are federal statutes that criminalize acts of industrial espionage involving the unlawful disclosure of trade secrets. In addition, many states have adopted the Uniform Trade Secrets Act (UTSC), which provides certain civil remedies for the misappropriation of trade secrets. However, there is no legal recourse available to you if another party independently creates and uses a similar technology. Competitors are also generally free to reverse-engineer your goods and sell similar or even identical goods with impunity. That is always the risk of keeping an invention as a trade secret. Those risks can be minimized by requiring employees to sign a non-disclosure agreement (NDA).