In the 2020 calendar year 50,496 granted patents originated from the state of California. This accounts for more than one quarter (27.6%) of granted patents that originated in the US.
The population in California that year was about 12% of the US population. This means that patents granted per capita coming from the State of California is more than double a typical state.
With so many patent applications filed from California, you can expect a very robust and developed network of patent attorneys there. When applying for a patent in California, it is recommended to use the services of a patent attorney who is located in California.
How to File a Patent in California
Federal law governs patent rights and the process for obtaining a patent. A patent application is filed with the United States Patent and Trademark Office (USPTO). The process and requirements for applying for a patent are the same regardless if you are in California or any other state and look like this:
1. Do You Have an Idea or Invention?
Every invention begins as an idea. For this idea to become eligible for a patent, it must be transformed into an invention. This transformation occurs by creating a real-world application of the idea.
The application of the idea in the real world must be adequately defined, so others understand what the invention is. The best way to transform an idea into an invention is:
- Create a prototype.
- Write out every aspect of the invention in words.
- Make drawings of the invention.
- Build a prototype of the invention.
- Test out the prototype and make improvements to it.
- Consider all the variations of the invention.
An idea becomes an invention once an inventor has fleshed out a real-world application of the idea. An invention is eligible for a patent. An idea on its own, is not.
2. Perform Market Research
A patent provides an economic incentive for people to invent new things. There isn’t much point in applying for a patent if you can’t profit off the invention. Performing market research helps the inventor make an informed decision whether paying the costs to receive a granted patent is worth it.
The market for an invention varies greatly based upon the technological field, the specifics of the invention itself, the geographic location of use, and many more factors.
The market in the state of California is massive. By itself, It is about to move past Germany as the world’s 4th largest economy. A useful invention likely has a valuable application somewhere in California.
Before beginning the patenting process, make sure you understand the market potential of your invention in California and have a plan for how to make money from having a patent. Ask the following questions
- What specific market(s) in California could the invention potentially be useful?
- How large are these markets?
- Who are the major players in these markets?
- How do other companies make money off similar inventions?
- Would it be best to sell a product, license the use of the patent, or provide a service?
Investigate the potential markets in California where the invention could be used. Assess how much money the invention could possibly make in these markets.
What should an inventor do if it doesn’t make financial sense to apply for a patent? It is possible to keep your invention as a trade secret and make money by using it as a trade secret or licensing the use to others.
Review California’s trade secret laws and determine if your invention qualifies as a trade secret. Ask your patent attorney if you might be better off maintaining trade secret protection over your invention rather than filing a patent application.
Some inventions, such as software related inventions, are also protected by copyright law. Consult with your patent attorney if copyright law will adequately protect your invention.
3. Verify Patent Eligibility
The eligibility criteria for a patent includes subject matter, novelty, nonobvious, and usefulness. A patent application must satisfy each of these requirements to become a granted patent.
Subject matter eligibility: The subject matter eligibility for a patent depends on the type of patent.
- Utility – a process, machine, manufacture, or composition of matter.
- Design – an ornamental design.
- Plant – an asexually reproduced plant.
Novelty: The invention must be novel, meaning new and never having been done before. Get familiar with the term “prior art” before you begin the application process. Prior art is any published literature describing any part of your claimed invention. You may not obtain a patent on anything that exists in the “prior art.”
Nonobvious: The invention must not be obvious. Obvious to whom? The USPTO uses a standard called a Person Having Ordinary Skill In The Art (PHOSITA). If a PHOSITA would find the invention obvious, then it is not eligible for a patent. What a PHOSITA would find obvious varies with the art category of the invention and is subject to debate.
Useful: The invention must be useful. This is a very low bar to meet, nearly anything can be considered useful.
4. Conduct a Patent Search
The USPTO requires an invention to be novel so a patent cannot claim anything that already exists. Before beginning the application process, an inventor must explore what has already been done in that field to make sure they can patent their invention.
A patentability search, also known as a prior art search, attempts to discover as many relevant sources as possible that might be used by the USPTO to prevent a patent being granted. An inventor should always do their own preliminary research to understand the technological field.
A good place for an inventor to start conducting their own research is Google patents, Google scholar, and the USPTO patent database. Try using different combinations of Boolean and keyword searches. Google patents has a function that shows related patents at the bottom of the page. Explore as much as you can. The USPTO has a step-by-step tutorial of how to conduct a preliminary patent search.
Although inventors should conduct their own research, it is recommended to use a professional researcher. A patentability search can be conducted by a patent attorney, or a patent research company. Professional research services have subscriptions to databases, giving them access to more sources than an independent inventor would have.
If an inventor is not trained in performing research, they may miss important prior art references. Using a professional researcher provides the highest level of confidence that your invention is unique, and worth taking to the next step in the patent process. A professional research company may charge anywhere from $100-$1,000-plus for a patentability search depending on the complexity of the invention.
5. Determine Inventorship & Ownership
An inventor is entitled to ownership of a patent for their invention. Who the inventor is, might not always be clear.
A person is considered an inventor if they contributed to the conception of the invention. If multiple people contribute to the conception, they are all considered inventors. If a person is a named inventor on a patent, they have rights to the entirety of the patent.
If there are two or more inventors, each can separately, and without permission of the other, use and license the use of the patent. This can be an issue because co-inventors can become direct competitors of each other. To prevent this issue from arising, co-inventors may sign a contract before filing the patent application. They may agree to not compete, or they may form a company that they all own and assign the patent rights to the company.
Many companies include intellectual property clauses in their employment contracts assigning all employees ideas and inventions to the company if made “in the scope of employment.” If you invent something for your job, while doing your job, and file a patent for it, you may be considered the inventor, but the company owns the rights to the patent.
While patent law is set at the federal level, contract law is governed by state law. The interpretation of an employment contract in the state of California will be governed by California law.
If you are employed in the state of California, it is very important to read and understand your employment contract. Consulting a patent attorney in California is highly recommended to interpret the meaning of intellectual property clauses in employment contracts.
Before proceeding with a patent application discuss with your patent attorney who conceived what aspects of the invention. Discuss with all inventors how credit for the invention should be allocated.
6. Choose the Type of Patent
There are three types of patents, each providing a differing type of protection.
- Utility Patent – Utility patents may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof. A utility patent is what one generally thinks of as an invention and must offer some functional benefit or solve a problem. Utility patents have a maximum life of 20 years after the date of application.
- Design Patent – Design patents are granted to anyone who invents a new, original, and ornamental design for an article of manufacture. The protections afforded to a design patent only extend to the appearance of the design and not to any functional aspects of the design. A design patent has a maximum life of 15 years after the date of application.
- Plant Patent – Plant patents may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant. A plant patent can be awarded for any new variety once it is asexually reproduced. Plant patents have a maximum life of 20 years.
7. Prepare the Patent Application
Patent prosecution is the overall legal process of attempting to secure an approved patent. This process includes consulting, drafting, filing, and responding to the USPTO to get an approved patent.
An inventor in California should use the services of a registered patent attorney in California to prepare and file the patent application. Although an inventor may file and obtain their own patent, there is no guarantee that the patent would sufficiently protect the invention.
Each patent application has several forms that must be filled out and submitted. A list of these forms can be found here.
Typical items that must be submitted with each application include
- Utility, Design, or Plant patent application transmittal form
- Application data sheet
- Information disclosure sheet
- Oath or declaration
If you are an individual inventor, you should also fill out the certification of micro entity status form to reduce the amount of fees due. All applications must be submitted to the USPTO in English.
Does it matter if your patent attorney is located in California? A registered patent attorney can draft, prepare, and prosecute a patent application regardless of what state they or their client are in. A patent attorney may not provide out of state legal advice unrelated to the patent prosecution.
For example, say an inventor is located in California. That inventor may use a patent attorney in another state to assist in applying for a patent. However, that out of state patent attorney may not provide advice regarding employment contracts, licensing, or other business considerations related to the patent.
If an inventor in California wants to consult with a patent attorney regarding legal advice beyond the patent application, they should use an attorney registered in California. A California patent attorney can provide other legal services in addition to patent prosecution.
8. Submit the Patent Application
The typical method of filing a patent application is using the USPTO’s Electronic Filing System (EFS-Web). Navigate to the EFS-Web portal and create a USPTO account. The required documents are uploaded to EFS-Web in PDF format and submitted. Fees are also paid through the EFS-Web portal.
Applications can also be filed by mail or delivered in person to the USPTOs main office in Alexandria, VA. Applications should be mailed to “Commissioner for Patents P.O. Box 1450 Alexandria, VA 22313-1450.” Applications filed by mail or in person are charged an additional fee.
9. Wait for the Approval (Notice of Allowance)
It takes some time for the USPTO to start examining an application due to the large number of applications received. The time it takes for the USPTO to begin examining a patent varies by the technological field of the invention. The historical time to receive a first office action is around 18 months. Very few applications are approved on the first office action.
The applicant then fixes any issues the USPTO indicates in the first office action and resubmits for a second examination. If the applicant correctly fixes all the issues, then a notice of allowance is issued. The typical amount of time for a patent application to make it to an allowance or final rejection is around 24 months.
While the application is pending you may view the status using the USPTOs Patent Application Information Retrieval Tool (PAIR). Login using your USPTO account. PAIR shows where your application is in the process and any action items that you need to address. Correcting issues or uploading more documents is done in the EFS-Web portal.
10. Protecting Your Patent from Infringement in California
Just because you have a patent doesn’t mean that people won’t infringe your patent. It is the responsibility of the patent owner to enforce the rights granted by the patent. Patent infringement occurs when someone does the following without the consent of the patent owner makes, uses, offers to sell, or sells any patented invention domestically, or imports a patented invention into the United States during the term of the patent.
If you think someone is infringing your patent send them a cease-and-desist letter. Contact them in writing and explain why you think they are infringing your patent and ask them to stop. If they do not stop, you can initiate a lawsuit and attempt to stop them from infringing your patent and for damages in lost profits.
Federal district courts have jurisdiction over patent infringement claims and other civil cases arising out of patents. In court, your patent is a valid legal document that defines your invention and will be used to prove infringement.
To protect a patent from infringement in the state of California a patent owner should bring a patent infringement lawsuit in one of the following Federal District courts
- US District Court for the Central District of California
- US District Court for the Eastern District of California
- US District Court for the Northern District of California
- US District Court for the Southern District of California
If the outcome of your patent infringement lawsuit in California is not what you had hoped, you can appeal the judgment to the United States Court of Appeals for the Ninth Circuit (headquartered in San Francisco). An attorney located in California should be used to bring a patent infringement lawsuit in California
Petitions and Appeals in California
If your application is rejected a second time you may appeal the decision. Appeals at the USPTO are heard by the Patent and Trademark Appeals Board (PTAB). PTAB judges differ from normal judges because they have significant experience and expertise in patent law.
The judges will review the examiner’s decision, hear arguments from both the applicant and the USPTO, and make a final decision on whether the patent will be granted or not. To appeal a final rejection file a notice of appeal in the EFS-Web portal and pay the appropriate fees.
There are five PTAB court locations, one of which is located in the USPTO West Coast Regional Office in San Jose, California. An inventor located in California who appeals or petitions the USPTO would likely have their case heard at the USPTO office in California.
Silicon Valley USPTO
26 S. Fourth Street
San Jose, CA 95112
Like a normal court of law, an individual can represent themselves in an appeal hearing, but using the services of a patent attorney is highly recommended. A patent attorney located in California may already have an existing relationship or experience with the PTAB court in California. Ask your patent attorney about their experience level with the PTAB court in California.
Patent and Trademark Resource Centers (PTRCs) in California
The term “Patent and Trademark Resource Center” (PTRC) refers to a library which has made commitments to the United States Patent and Trademark Office (USPTO) to provide public accessibility to products and services, offer patent and trademark training, provide reference assistance and outreach to the public, and collect metrics to demonstrate use of the resources.
PTRC’s are free resource centers for inventors to receive information and help regarding patents and trademarks. Although they cannot provide legal advice, PTRC library representatives can:
- Provide access to resources such as Patent Public Search and TESS, Trademark Electronic Search System.
- Direct you to information and explain the application process and fee schedule.
- Demonstrate how to use search tools to conduct a patent or trademark search.
- Show you a directory of local patent attorneys who are licensed to practice before the USPTO.
- Offer classes on intellectual property (varies by location).
- Offer assistance on how to do historical research on patents and trademarks.
- Show you how to track current research by company or nonprofit.
- Help you find assignee information and much more.
There are five PTRC locations in the state of California.
- Los Angeles – Los Angeles Public Library
- Riverside – Orbach Science Library
- Sacramento – California State Library
- San Diego – San Diego Public Library
- San Jose – San Jose Public Library
Licensing Your Patent in California
Once an inventor receives a granted patent protecting their invention, they have the right to prevent others from making, using, or selling the invention in the United States. The owner of the patent may decide to make their invention and sell it themselves or license out the right to use the patent. This license can be structured in many different ways depending on the invention, the market, and the business goals of the patent owner.
While federal law covers patent prosecution, patent license agreements are governed by state contract law. In a patent license agreement, the patent owner grants another the right to use, make, or sell the patented invention without worrying about infringement.
Because patent license agreements are governed by state law, a patent owner in California should consult with an attorney in California regarding state contract law. While a California patent attorney may have the most intimate knowledge and experience regarding patent license agreements, the attorney drafting a license agreement does not need to be a patent attorney.
What Law Should You Use to Govern Your License
As a general rule of thumb, the state law in which the contract was created will act as the governing law to be applied to the patent license agreement. A license can include a choice of law provision that dictates which states laws will govern the contract.
A person located in California should consult a California attorney to determine what state law will govern the patent license agreement. Items to consider when determining if a patent owner wants California law to govern the patent license agreement include
- How does California law differ from other state law?
- Would you want to litigate a contract dispute in California?
- Are both parties to the license agreement in California?
- What advantages or disadvantages would California law provide?
How to Limit Patent Rights in California
A patent license agreement can be structured so that the person acquiring the rights, can only make, use, or sell the invention in a particular geographic area. The owner of a patent can license out the patent so that the license can only be used in California, or only in a certain place in California.
Say for example an inventor receives a patent for a process to quickly test water quality at a central pumping station. The inventor plans to license out the patent to each local water authority in California. In each license agreement, the inventor could geographically limit the rights of the local water authority to only use the patent in their district.
The inventor would be able to negotiate and charge a separate license fee to each California water authority. If the inventor did not geographically limit the right to use the patent, one water authority could use the patent anywhere. This might make the license less appealing, and the inventor may have a harder time securing individual licenses.
The decision of how to structure a license agreement is mainly determined by business considerations to maximize profit from the patent. It is always recommended for an inventor in California to consult with an attorney in California regarding patent license agreements.
Sheldon received his training of the patent system at the United States Patent & Trademark Office. He works with universities and consultants to provide analytics and guidance for technology commercialization from patents.
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- N.A. (2022, November 9) Forms For Patent Applications Filed On Or After September 16, 2012. Retrieved from https://www.uspto.gov/patents/apply/forms
- Michael J. Kasdan (2019) Patent Licenses: Licensing Fundamentals. Retrieved from https://www.wiggin.com/wp-content/uploads/2019/10/MKasdan-Patent-Licenses_Licensing-Fundamentals.pdf
- N.A. (2022, November 25) PATENT COUNTS BY ORIGIN AND TYPE CALENDAR YEAR 2020. Retrieved from https://www.uspto.gov/web/offices/ac/ido/oeip/taf/st_co_20.htm
- N.A. (2022, October 24) ICYMI: California Poised to Become World’s 4th Biggest Economy. Retrieved from https://www.gov.ca.gov/2022/10/24/icymi-california-poised-to-become-worlds-4th-biggest-economy/
- N.A. (2022, November 18) PTRC locations by state. Retrieved from https://www.uspto.gov/learning-and-resources/support-centers/patent-and-trademark-resource-centers-ptrc/ptrc-locations