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How to Get a Patent

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

Expert tip: Keep a detailed and dated patent journal throughout the whole inventing process. This journal should include any ideas, improvements, refinements, and co-inventors related to the invention and be kept in a secured, non-public location.

These notes may be crucial when writing the patent application and determining who invented what.

If you run into any issues or simply have some questions, an experienced patent attorney can help. They can explain how patents work and assist with any part of the process, from obtaining specific and general advice to handling the entire patenting process.

The Patent Process

The patent process begins when an inventor has an idea which solves a problem. The inventor conducts preliminary research to determine what others have already done to solve this and similar problems. Patent attorneys or research companies can be used to obtain a comprehensive list of all related inventions.

A prototype is developed to implement the idea in the real world. This prototype is tested, refined, and improved many times over to develop the best version of the invention. The inventor is now ready to apply for a patent.

A patent application is drafted with a description of the background technology, the invention, claims, and patent drawings. The appropriate forms are filled out and a patent application is filed with the United States Patent and Trademark Office (USPTO). The USPTO assigns this application to a patent examiner who is skilled in and understands the technological field of the invention. The examiner reviews the application and issues an office action either approving or rejecting the application.

After the first rejection, the applicant has the option to correct all the issues and resubmit the application. A second rejection is final and can only be overturned by an appeal to the Patent and Trademark Appeals Board (PTAB).

If the application is approved, a notice of allowance is issued, and a patent will be granted once all the fees are paid. Once granted, the owner of the patent can use it to prevent anyone else from making or using their invention.

Key Players in the Patent Process

The process for acquiring a patent has many layers, and thus, many players. You should know what is required at each layer and how each player can assist you in a successful application.

  • Inventor – creates an invention from his/her own idea.
  • Patent attorney – provides advice and helps the inventor get a patent.
  • Prior art researcher – researches and finds related inventions.
  • Paralegal – assists patent attorney with paperwork.
  • Patent drawing drafter – drafts the drawings required for a patent.
  • United States Patent and Trademark Office (USPTO) – the government agency that reviews and grants patents.
  • Examiner – reviews patent applications and determines if a patent will be granted.
  • Supervisory patent examiner – senior examiner who reviews examiner’s work.
  • PTAB judge – oversees appealed patent rejection cases.

How to File a Patent

Filing a patent is a multi-step process and an applicant may choose to abandon pursuing a patent at any step. Skipping steps or proceeding out of order may ultimately cause irreparable harm. If you file a patent without conducting the necessary research, you may be attempting to patent something that already exists.

This step-by-step guide shows a general roadmap for filing a patent, but each invention is unique, and the process may vary slightly.

1. Do You Have an Idea or Invention?

The basic starting place for a patent is the conception of an idea to solve a problem. Before the idea can be patented it must be developed into an invention. An idea becomes an invention when it is fundamentally tied to something in the real world. Expand the idea into something that can be implemented into the real world. Think through all aspects of how the idea could be part of real life.

Ask yourself:

  • How would my idea look or work in the real world?
  • How do I make my idea exist in the real world?
  • What other ways have people solved a similar problem?
  • How is my idea different than others?
  • How is my idea better or worse than others?

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 make money off it. Performing market research helps the inventor make an informed decision whether paying the cost of a patent application is worth it.

Consider the following:

  • What market(s) could the invention potentially exist in?
  • How large are these markets?
  • Who are the major players in these markets?
  • How do other companies make money off similar inventions?
  • Would you sell a product, license the use of the patent, or provide a service?

Before beginning the patenting process, make sure you understand the market potential of your invention and have a plan for how to make money from a patent. In certain instances, you may be better off not filing for a patent and protecting your invention as a trade secret.

For example, imagine you invent and file a patent for a new water proofing compound and a new process for applying water proofing compounds to a roof. When the compound enters the market competitors can buy it, test it, determine what the compound is, and make it on their own. If a competitor makes and sells this compound you could buy it, test it, and easily prove they are infringing your patent.

On the other hand, if a competitor steals your new way of applying water proofing compounds to a roof it would be difficult to know and prove they are doing this. You can’t monitor every construction site in the country to make sure that no one is using your new method.

In this example, it might make sense to file a patent for the compound but keep the new application method as a trade secret.

Performing market research helps an inventor understand if their invention is worth the investment of a patent. Inventors can use market research to determine the best way to make money on their invention. This decision can help determine if you are better off protecting the idea through trade secret, copyright, or trademark law.

3. Verify Patent Eligibility

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

Subject Matter Eligible

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.

A design patent must be for an ornamental design.

A plant patent must be for an asexually reproduced plant.

Understanding subject matter requirements is easier by looking at what the USPTO and courts have decided are not eligible subject matters.

Subject matter not eligible for patent protection include:

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

Novel

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. Patent examiners spend a lot of their time searching through data bases to find prior art. 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.

Just because there is some prior art for your invention does not mean you cannot patent other aspect of your invention. For example, you invent a device that can convert CO2 and SO2 into O2 and file a patent on it. The patent examiner finds prior art that describes this same device converting CO2 into O2 but not converting SO2 into O2. Your patent for the device would cover converting SO2 into O2, but not cover the device converting CO2 into O2.

Useful

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.

Non-obvious

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.

4. Conduct a Patentability 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 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 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 for a patentability search depending on the subject matter.

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.

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.

Most 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 owns 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.

6. Choose the Type of Patent

An applicant must choose which type of patent to apply for based on the subject matter of what the patent will cover. There are three different types of patents an inventor can apply for. Each type has different filing requirements and affords differing protections to the claimed invention.

  • Utility Patent – granted for a process, machine, article of manufacture, or composition of matter. A utility patent protects the way an article is used.
  • Design Patent – granted for an ornamental design for an article of manufacture. A design patent protects the way an article looks.
  • Plant Patent – granted for a distinct and new variety of plant

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.

Applying for a Utility Patent

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.

Applying for a Provisional Patent

A provisional patent application requires the following:

A provisional patent application is a bare-boned utility patent application that is used to get an earlier filing date. A provisional patent application does not require an information disclosure (prior art) statement, an oath, or claims.

Applying for a Design Patent

A design patent application requires the following:

A design patent requires a design application transmittal form, an application data sheet, and an information disclosure sheet to be filled out. The drawing disclosure shows the actual ornamental design claimed by the patent. The specification includes a description of the drawings, and a single claim.

Applying for a Plant Patent

A plant patent has the same general requirements as a utility patent.

A plant patent application has similar requirements as a utility patent with some adjustments. The specification must include the Latin name of the genus and species of the plant, the drawings must show the most distinguishing features of the plant, and the application only includes a single claim.

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 (File Online | USPTO) 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 invention’s 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.

10. Patent Usage & Maintenance

How long a patent lasts depends on the type of patent. Utility and plant patents last for 20 years while design patents last for 15 years. Utility patents 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.

» Read more:  What Happens When a Patent Expires

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. If you think someone is infringing 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 and attempt to stop them from infringing your patent and 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.

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.

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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Sources:

  1. USPTO (2021, December) Patents Pendency Data December 2021. Retrieved from https://www.uspto.gov/dashboard/patents/pendency.html