The State of New York aka “The Empire State” is home of the most populous city in the United States.
In the 2020 calendar year 10,540 granted patents originated from New York. This accounts for around 5.8% of granted patents that originated in the US. The population in New York that year was about 19.34 million. This means that around 1 patent originating in New York was granted for every 1,835 people living there.
Although New York is the State with the third most granted patents, we at PatentExperts.org believe that New York can receive significant more patents than it currently is. The following article is a resource for inventors in New York to utilize in patenting their idea.
When applying for a patent in New York, it is always recommended to consult with and use the services of a patent attorney located in New York.
How to File a Patent in New York
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 of if you are in New York 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. A granted patent is valid everywhere in the US, but an inventor should still consider separate and individual markets within the US.
Take for example the market in New York. In 2015 by itself, it was the world’s 11th largest economy. It is safe to say that a useful invention likely has a valuable application somewhere in New York.
Before beginning the patenting process, make sure you understand the market potential of your invention in New York and have a plan for how to make money from having a patent. Ask the following questions:
- What specific market(s) in New York 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 New York 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 New York’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 some 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 New York will be governed by New York law.
If you are employed in the state of New York, it is very important to read and understand your employment contract. Consulting a patent attorney in New York 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 New York should use the services of a registered patent attorney in New York 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 New York? 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 New York. 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 New York wants to consult with a patent attorney regarding legal advice beyond the patent application, they should use an attorney registered in New York. A New York 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 Patent Center Website. Navigate to the Patent Center portal and create a USPTO account. The required documents are uploaded to the Patent Center in PDF format and submitted. Fees are also paid through the Patent Center 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 Patent Center portal.
10. Protecting Your Patent from Infringement in New York
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 New York a patent owner should bring a patent infringement lawsuit in one of the following Federal District courts:
- United States District Court for the Eastern District of New York
- United States District Court for the Northern District of New York
- United States District Court for the Southern District of New York
- United States District Court for the Western District of New York
If the outcome of your patent infringement lawsuit in New York is not what you had hoped, you can appeal the judgment to the U.S. Court of Appeals for the 2nd Circuit (located in New York City). An attorney located in New York should be utilized to bring a patent infringement lawsuit in New York.
Petitions and Appeals in New York
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 Patent Center portal and pay the appropriate fees.
There are five PTAB court locations, one of which is in the USPTO headquarters in Alexandria, Virginia. An inventor located in New York who appeals or petitions the USPTO would likely have their case heard at the USPTO headquarters in Virginia.
USPTO Madison Building
600 Dulany Street
Alexandria, VA 22314
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 New York may already have an existing relationship or experience with the PTAB court in Virginia. Ask your patent attorney about their experience level with the PTAB court.
Patent and Trademark Resource Centers (PTRCs) in New York
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 PTRC locations in the state of New York.
- Albany – New York State Library
- Buffalo – Buffalo and Erie County Public Library
- New York City – Thomas Yoseloff Business Center, New York Public Library
- Rochester – Central Library of Rochester and Monroe County
- Smithtown – Smithtown Main Library
Licensing Your Patent in New York
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 New York should consult with an attorney in New York regarding state contract law. While a New York 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 New York should consult a New York attorney to determine what state law will govern the patent license agreement. Items to consider when determining if a patent owner wants New York law to govern the patent license agreement include:
- How does New York law differ from other state law?
- Would you want to litigate a contract dispute in New York?
- Are both parties to the license agreement in New York?
- What advantages or disadvantages would New York law provide?
How to Limit Patent Rights in New York
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 New York, or only in a certain place in New York.
Say for example an inventor receives a patent for a new method of making pizza. The inventor plans to license this patent out to as many pizza shops in the City as possible. In each license agreement, the inventor could geographically limit the rights of the pizza shop to a specific City borough.
The inventor would be able to negotiate and charge a separate license fee to each pizza show for each borough they want to use the patent in. If the inventor did not geographically limit the right to use the patent, one pizza shop could use the patent anywhere in New York. This might make the license less appealing for other pizza shops, 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 New York to consult with an attorney in New York 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, 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
- Mark J. Perry (2016, June 11) Economic Output: If States Were Countries, California Would Be France. Retrieved from https://www.newsweek.com/economic-output-if-states-were-countries-california-would-be-france-467614