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How to Get a Utility Patent

The process of getting a utility patent begins with an idea. The inventor refines that idea into an invention by finding a way to implement the idea into the real world. Research uncovers what has already been done and informs the inventor how their invention is different.

A prototype of the invention is made, and the invention is refined and improved. A patent application with drawings is prepared and submitted to the United States Patent and Trademark Office (USPTO).

The USPTO examines the application and either approves the patent or issues an Office Action addressing problems with the application. The applicant fixes any issues related to the application and resubmits.

If a patent application is approved, a patent is granted once all outstanding utility patent fees have been paid. The issued patent is a legal document that allows the holder to prevent anyone from infringing on their invention. To enforce a patent, the holder must bring an infringement suit in a court of law against the alleged infringer.

The process of obtaining a utility patent can be difficult for first time patent filers and even experienced practitioners. Although not required, it is always highly recommended to consult with a patent attorney before applying for a patent.

Preparing to Get a Utility Patent

An applicant must first have an invention before applying for a patent. An invention starts with an idea that solves a problem. The idea is developed so that it has some application in the real world.

For example, say that you have an idea to make a dog leash that is impossible to chew through. Transforming this idea into an invention would involve determining what material to make the leash with, how to manufacture this material into a dog leash, and how to ensure the leash would be impossible to chew through.

The process of developing an idea into an invention is a cycle of thinking, researching, developing, testing, and refining. This process repeats and continues until the inventor has what they believe is a unique solution to the problem.

During the creation of an invention, the inventor should be conducting their own research to make sure they are not repeating what someone else has done before. Anything that has been done before is called prior-art. An applicant cannot claim any prior-art in their patent application.

Once the inventor believes they have a unique invention, they should contact a patent attorney. A patent attorney can advise the next best steps going forward.

A patent attorney likely will advise an inventor to commission a professional preliminary patentability search before the patent attorney begins preparing the application. A patentability search will (1) help find prior-art and (2) help the patent attorney draft a patent application that works around the prior-art.

Filing a Provisional Patent Prior to a Utility Patent

A standard utility patent application that leads to an issued patent is called a non-provisional patent application. A provisional application can be filed first for the non-provisional.

A provisional application provides the means to establish an early effective filing date in a later filed non-provisional patent application. It also allows the term “patent pending” to be used. You should file a provisional patent if it will take a long time to draft and file a non-provisional application, or if you want to use the term patent-pending earlier.

The purpose of a provisional patent is to provide a lower-cost, first patent filing. A provisional application is not required to have the following:

  • Any formal claims
  • An oath
  • A declaration
  • A prior art statement

Because a provisional application does not require these items, it can be drafted and submitted much quicker than a non-provisional application. The filing date is important because any public disclosure made after this date cannot be used as prior art to prevent patent issuance.

An applicant can utilize the earlier filing date of a provisional application by either:

  • Making a reference to the provisional in a non-provisional application. OR,
  • Converting a provisional application to a non-provisional application.

Both making a reference or converting a provisional application must be done within one year of filing the provisional.

A non-provisional application that is converted, has a patent term that begins at the filing of the provisional. A non-provisional that references a provisional has a patent term beginning when the non-provisional was filed, but an effective filing date for prior art purposes of the provisional.

Therefore, referencing a provisional will afford the patent an earlier effective filing date, but a longer term than if a provisional is converted into a non-provisional.

How to File a Utility Patent

The bulk of the work in the process of receiving a patent is done before filing. Coming up with an invention, determining how to define the invention, and drafting a patent application are time intensive tasks. Once the application is filed it must be monitored and any issues must be corrected according to the USPTO guidance.

Step 1: Turn an Idea into an Invention

An applicant must first have an invention to patent. Identify the problem your idea solves. Determine how your solution can exist and work in the real world. Think through all possible ways of implementing your idea into the real world. Research how others have done this before and find a better solution.

Step 2: Contact a Patent Attorney

You should contact a patent attorney once you think you have a novel invention. A patent attorney can help advise you on many aspects of patenting such as:

  • If your invention qualifies for a utility patent
  • The next best course of action
  • Conducting a patentability search
  • Preparing a patent application

It is smart to contact a patent attorney early in the patenting process. A patent attorney can help tailor the patent application process to the specific needs of your invention. Although the cost of using a patent attorney may be daunting to some inventors, it will likely end up saving you time, money, and help you receive a patent with stronger protections.

Step 3: Perform Market Research

Although not essential, performing market research can inform you whether it is worth filing a patent at all. Determine similar inventions to your invention and how money is made from these inventions. Ask yourself

  • What other similar inventions exist?
  • Who is my competition?
  • How does my competition make money from similar inventions?
  • How will I make money from my invention?
  • How much would it cost to make my invention?
  • How much are people willing to pay for using my invention?
  • Would I license out the use of my invention or make a product myself?
  • Would it be better to keep my invention as a trade secret?

The answers to these questions can be used to determine if it is financially worth it to apply for a patent in the first place. If you can’t make money off a patent, there isn’t much point in proceeding past this step.

Step 4: Verify Patent Eligibility

An invention must be eligible or the USPTO will not grant a patent. This should be discussed with your patent attorney.

The USPTO has four basic requirements for an invention to be considered worthy of a patent. It must be:

  1. Subject matter eligible
  2. Novel
  3. Useful
  4. Non-obvious

The law in the United States only allows the USPTO to grant patents for inventions that fall within listed subject matter categories. A utility patent may only be granted for a (1) process, (2) machine, (3) manufacture, or (4) composition of matter. Understanding subject matter requirements is easier by looking at what the USPTO and courts have decided are not eligible subject matters. These include:

  • Non-functional descriptive material (literary works and compilations of data)
  • Waves and signals
  • Software not tied to a process or machine
  • Abstract ideas
  • Laws of nature
  • Natural phenomena

The invention must be novel, meaning new and never having been done before. You may not obtain a patent on anything that exists in the prior art. Prior art includes patents, patent application, non-patent literature, and anything else that is publicly available. This includes literature published in a different language, only available in print in a library, and even business marketing materials.

The invention must be useful. The purpose of patent law is to promote the development of science. The invention must state a utility or usefulness to ensure that science is in fact being promoted. This is a very low bar to pass, and almost any stated use will be accepted by the USPTO.

An 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 invention and is subject to some debate. A PHOSITA of genetic engineering is a genetic engineering scientist who works in a lab and is familiar with typical methods of genetic engineering. What a PHOSITA of genetic engineering would find obvious may be much different than what a PHOSITA of chopping wood may find. Patent examiners typically reference literature when drawing assumptions of what a PHOSITA might think is obvious.

Step 5: Conduct a Patentability Search

The USPTO requires an invention be novel, so a patent cannot claim anything that already exists. 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.

A good place for an inventor to start conducting their own research is google patents (https://patents.google.com/), google scholar (https://scholar.google.com/), and the USPTO patent database (https://www.uspto.gov/patents/search).

Try using different combinations of Boolean and keyword searches. Google patents has a function that shows related patents at the bottom of the page. The USPTO has a step-by-step tutorial of how to conduct a preliminary patent search (How to conduct a preliminary U.S. patent search: A step-by-step strategy (uspto.gov)).

Although an inventor 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 generally 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 subject matter.

Step 6: Determine Inventorship and Ownership

An inventor is entitled to ownership of a patent for their invention. If one person came up with the invention on their own, they are the sole inventor. If multiple people worked together to create the invention, inventorship might not be as clear cut.

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.

Take for example a case where inventor 1 conceives 99% of the invention and inventor 2 conceives 1%. Here, inventor 2 is entitled to ownership of the entire invention even with only a 1% contribution. In this case it might make the most sense to file two separate patent applications, each with different inventors.

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 during your job, for your job, and file a patent for it, you may be considered the inventor, but the company may own the rights to the patent.

If you are employed, it is very important to read and understand your employment contract. Consulting a patent attorney is highly recommended to interpret the meaning of intellectual property clauses in employment contracts.

Before proceeding with a patent application determine who conceived what aspects of the invention. This information should be logged in your patent journal. Discuss with all inventors how credit for the invention should be allocated.

Step 7: Prepare the Patent Application

Most inventors use the services of a registered patent attorney 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. The patent specification can be drafted from scratch or by using templates found online.

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.

A utility patent application requires the following:

Begin by filling out the application transmittal form. Fill out an application data sheet. Fill out the information disclosure sheet indicating all known prior-art. Prepare drawings of the invention.

Write a patent specification. The specification includes a written description of the invention and claims. The specification should have an abstract, a background of the invention, a brief summary of the invention, a brief description of the drawings, a detailed description of the invention, and claims.

Fill out the declaration or oath form. If you are claiming a gene, you must have a listing of the genetic code. If your invention claims large datasets, they must also be included.

Step 8: Submit the Application

The typical method of filing a patent application is using the USPTOs 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.

Step 9: Wait for Approval

It takes some time for the USPTO to start examining an application due to the large number of applications it receives. The time it takes for the USPTO to begin examining a patent varies by the inventions technological field. The historical time to receive a first office action is 17.6 months.

Very few applications are approved on the first office action. The applicant then fixes the 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 23.4 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.

Step 10: Petitions and Appeals

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. 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.

Patent Maintenance and Usage

If your patent is issued congratulations! You now have the responsibility of maintaining and enforcing your patent.

A utility patent lasts for 20 years and require that maintenance fees are paid to keep the patent valid. These fees are due at 3.5 years, 5.5 years, and 11.5 years.

Just because you have a patent doesn’t mean that people won’t infringe on your invention. It is the responsibility of the patent owner to enforce the rights granted by the patent.

If you think someone is infringing on your patent, you should 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 in a federal court for patent infringement.

You can attempt to stop them from infringing on your patent by asking the court for an injunction. You may also sue for damages in lost profits. In court, your patent is a valid legal document that defines your invention and will be used to prove infringement.

Sheldon Brown

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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