Before submitting an application to the Tennessee PATENTS program, you must read all the information contained in the tabs below. Failure to meet any of the required standards will result in non-admission to the program.
Additionally, placement with a volunteer patent agent/attorney is the sole discretion of the program administrator.
Who is the Program open to?
Tennessee PATENTS is open to 3 classes of inventors: 1) Solo Inventors; 2) Non-Profits; and 3) Small Businesses/Inventor Groups. Each class has certain criteria that must be met in order to qualify for the program.
- You must be a resident of the state of Tennessee;
- You must have a total combined household income of less than 300% of the poverty guidelines. Click the following link to check the current year's guidelines; and
- You must not currently be under an obligation to assign (sell or give ownership of) the patent rights to a third party.
- The organization must be either a Tennessee domestic corporations with 501(c)(3) status;
- The organization must have a budget of less than $1 million per year;
- The organization cannot be research institutions or institutions of higher learning; and
- There must be no more than 4 inventors to be listed on the patent application;
- The inventors must assign (sell or give ownership of) the patent rights to the organization;
- The organization must not currently be under any obligation to assign (sell or give ownership of) the patent rights to another entity.
Small businesses/Inventor Groups:
- There must be no more than 4 inventors to be listed on the patent;
- All inventors must individually meet the requirements for solo inventors;
- Under most circumstances, all inventors should must be under an obligation to assign the patent rights to the “business,” though we may consider circumstances on a case-by-case basis;
- For businesses already formed, the business must have had a total gross income of less than $150,000 in the preceding calendar year;
- Businesses must expect a total gross income of less than $150,000 in the current calendar year;
- The business or group must not currently be under any obligation to assign (sell or give ownership of) the patent rights to another entity.
Prior to applying for pro bono services, you must have a good faith belief that your invention constitutes novel and non-obvious patentable subject matter that has been reduced to practice.
What does "novel" mean?
- The inventor was first to invent or discover the invention or improvement.
- The invention or improvement must not be patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date.
What does "non-obvious" mean?
The differences between your invention or improvement and another patented invention must not be obvious to a person of ordinary skill in the relevant field. Essentially, this requirement prevents the issuance of patents for normal development or expansion and rewards those who create and innovate within the field. This is also referred to as "the inventive step.”
Patentable Subject Matter
- Ornamental Designs
- Asexually Reproduced Plants
- Article of Manufacture
- Composition of Matter
- Improvement of one of the above
What does "reduce to practice" mean?
"Conception is the touchstone of inventorship, the completion of the mental part of invention." Hybritech Inc. v. Monoclonal Antibodies, Inc. (quoting Robinson On Patents). Patent protection does not extend to vague concepts or ideas; the concept or invention must be "reduced to practice" before you can apply for a patent. Reduction to practice can occur in 2 ways:
- By creating a working prototype; or
- By describing the invention in sufficient detail such that a person with ordinary skill in the relevant field could create a working prototype.
An idea is definite and permanent when the inventor has a specific, settled idea, a particular solution to the problem at hand, not just a general goal or research plan he hopes to pursue. The conception analysis necessarily turns on the inventor’s ability to describe his invention with particularity. Until he can do so, he cannot prove possession of the complete mental picture of the invention. Burroughs Wellcome Co. v. Barr Laboratories Inc.
Prior to applying for pro bono services, each inventor must participate in an approved patent training seminar or demonstrate he/she has been a named inventor on another patent.
Where can I get the necessary training?
Who must complete training?
ALL inventors who are going to be listed on the patent must either:
- already be listed on another patent or pending application;
- attend an approved training seminar; or
- complete the USPTO online training module.
Experienced patentees are exempt, but everybody else must complete the training.
Prior to attending a pro bono intake, you must conduct your own prior art search and find a reasonable number of close references. You must bring 3 of the closest references to your intake meeting (or send us some references ahead of scheduling the meeting, upon request).
This is a mandatory requirement for this program. Take your prior art search seriously. There is always some prior art out there, and we will ask you how you conducted your search.
What is Prior Art?
“Prior Art” encompasses all existing information, knowledge, and references existing anywhere in the world prior to filing a patent. Of course, not all prior art matters. When patent agents and attorneys talk about “prior art,” they are referring to the following, in relation to your particular invention:
- Prior Patents (U.S. or Foreign);
- Published Articles;
- Public Demonstrations; and
- Other Public Disclosures.
Why are Prior Art references important?
Under the Patent Law, “[o]n taking up an application for examination . . . the examiner shall make a thorough study thereof and shall make a thorough investigation of the available prior art relating to the subject matter of the claimed invention.” Essentially, if your invention is disclosed anywhere in the prior art, it is not patentable.
How do I search for Prior Art?
A great place to start is to look through existing patents. You may do so on the USPTO’s website, the European Patent Office’s website, any one of several paid subscription services, or by using Google Patents. A well-done search should reveal similar inventions, including those inventions upon which your own invention likely relies. More importantly, the prior art search should help educate you, as the inventor, as to the current state of your particular field.
European? Why do I need to search that?
The USPTO considers all prior art globally, not just applications, patents, and other descriptions from the United States. Many companies around the world file patents with the EPO, and many of these are in English, or translated into English. We recommend searching through applications and patents separately.
Is searching really that simple?
Not really. Companies usually have experienced attorneys run prior art searches using sophisticated software. However, your basic search should help inform you if your invention already exists and will aid in helping you determine the bounds of your invention!
How can I get help?
Luckily for us here in Tennessee, the USPTO has a resource center located on Vanderbilt's campus! The Patent and Trademark Resource Center can teach you how to do an effective and efficient patent search. The library website has numerous tutorials.
You may call for information by e-mailing email@example.com.
The Tennessee PATENTS program and GLA are not directly affiliated with the Patent and Trademark Resource Center, so if you are interested in consultation with the center, you must contact the center directly.
Why 3 to 10 references?
If you have found less than 3 references, you likely are not searching effectively. If you find more than 10, you are likely not searching efficiently. Too few references suggest you have not truly explored the prior art. Too many means that you do not necessarily understand the bounds of your invention, or your invention is likely already a part of the prior art.
What about commercial searches?
You may utilize the assistance of a commercial search company, but the results must be less than 3 months old, and we will need to see a copy of the contract with the search company to ensure you have not disclosed the invention or assigned patent rights.
Before starting your application, please make sure you:
- Have completed all of the previous steps.
- Have the name and e-mail address of each inventor.
- Collect financial information about each inventor and (if applicable) your business or non-profit.
- Collect basic information about your invention.
- Have information on previous patents/applications filed by each inventor. (if applicable)
Once you are ready to submit an application, please complete either the Solo Inventor Application or the Small Business/Non-Profit Application.
Which application do I use?
If you are the only inventor to be listed on the patent, click the Solo Inventor Application Button. If there will be 2 or more inventors listed on the application, click the Small Business/Non-Profit Application button.
What happens next?
Once you complete an application form, our staff will review your answers and contact you within a reasonable period of time. If you qualify for our program, we will send follow-up questions. Once you have answered the questions to our satisfaction, we will schedule an intake appointment for you. This appointment must attended in person.
If you do not qualify for our program, we will inform you of the reason and send you resources on filing pro se or acquiring assistance.
What is a reasonable period of time?
We attempt to contact applicants within 1 week. However, there are several periods of time during which you should expect application reviews to take longer:
- Christmas to New Years’
- Mid March
- Late April to Early May
- Early August to Late August
- Late November to Mid December
During these periods, our office is normally undergoing significant staffing changes, coinciding with the end of the law school semesters, or is closed for the holidays. We ask that you exercise patience if you apply directly before or during any of these periods.