How to Patent a Tool

People have been creating new tools to make life easier since the beginning of history. Tools are mechanical inventions that allow us to leverage the laws of physics to modify our environment. A typical tool is a handheld apparatus that a person physically uses, but the term tool can encompass a wide range of inventions.

This article examines how the patent system in the United States applies to an invention for a tool. An inventor who creates a new tool should consider the content in this article before deciding what to do next with the invention.

Can You Patent a Tool?

Yes, an inventor can obtain a patent that protects the invention for a tool.

Why patent? A patent is used to prevent others from copying your invention and making, selling, using, or importing it. An inventor should weigh the costs of obtaining and maintaining a patent against the benefits of having a patent. Consider and discuss the following with your patent attorney when making the decision whether to pursue a patent:

• Cost of obtaining a granted patent.
• Cost of maintenance fees over the life of the patent.
• What aspects of the invention can be protected by a patent.
• Any benefits of controlling the production and sale of the invention.
• Any drawbacks of not obtaining a patent.

When to patent? A patent should be filed before a public disclosure of the invention is made. If you plan to show off your invention at a public exposition, online, or in any public way you should talk to a patent attorney before presenting it to others.

It is important to verify that your tool invention is eligible for a patent before continuing the patenting process. A patent attorney is the best person to provide advice and help determine what aspects of your invention may be eligible for a patent.

You may be able to file a utility patent, a design patent, or both to protect your tool invention.

The eligibility criteria for a tool patent are the same as for other patents. Eligibility criteria for a patent includes subject matter, novelty, nonobvious, and usefulness.

Subject Matter Eligibility

To be eligible for a utility patent an invention for a tool must be either a process, machine, manufacture, or composition of matter. A utility patent protects the functional or structural aspects of an invention.

A design patent must be for the ornamental design of the invention. A design patent protects the aesthetic appearance of the invention.

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. Patent examiners spend a lot of their time searching through databases to find prior art. You may not obtain a patent on anything that exists in the prior art. Prior art includes patents, patent applications, non-patent literature, and anything else that is publicly available.

Nonobvious

The invention must not be obvious. Obvious to whom? The United States Patent and Trademark Office (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 and is subject to some debate. A PHOSITA in the art of a tool related invention would vary based on the invention.

Useful

The invention must be useful. This is a low bar to meet, nearly anything can be considered useful.

How Do You Patent a Tool?

The process for patenting a tool is like patenting other inventions. It starts by inventing something new and ends with a granted patent preventing others from copying your invention.

Step 1: Turn Your Idea into an Invention

Every invention begins as an idea. For this idea to become eligible for a patent it must be transformed into an invention. The idea must be tied to something in the real world.

Transform your idea into an invention by building a prototype. Test out the prototype and make improvements to it. Consider all the different variations of your invention that you can think of.

Step 2: Contact a Patent Attorney

An inventor should contact a patent attorney once they have an invention that they are considering patenting. Although using a patent attorney is not required to file a patent, it is highly advisable to use the service of a patent attorney.

A patent attorney can assist an inventor on every step of the patenting process, and draft strong claims that ensure the invention is adequately protected. A patent attorney will help the inventor to decide whether to file for a utility patent, a design patent, or multiple.

Step 3: 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 from the invention. Performing market research helps the inventor make an informed decision whether paying the cost of a patent application is worth it.

Before starting the patenting process, make sure you understand the market potential of your invention and have a plan for how to make money from having a patent.

Step 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 also 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 $300-$1,000+ for a patentability search depending on the complexity of the invention.

Step 5: Determine Inventorship and 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 to 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 discuss with your patent attorney who conceived what aspects of the invention. Discuss with all inventors how credit for the invention should be allocated.

Step 6: 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.

Step 7: Submit the Patent Application

The typical method of filing a patent application is using the USPTO’s Patent Center. Navigate to the Patent Center website and create a USPTO account. The required documents are uploaded to Patent Center in PDF format and submitted. Fees are also paid through the Patent Center site.

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 8: Wait for 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 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 around 24 months.

Step 9: 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 Patent Center 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.

Step 10: Use Your Patent and Enforce Your Rights

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 speak to a patent attorney. If the patent attorney believes they are infringing, the attorney will likely advise you to send the infringer a cease-and-desist letter. If they do not stop the infringement, 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.

Tool Patent Examples

The following are several examples of patents granted by the USPTO for tools.

• Static cooling electric chain saw: A chain saw with a motor surrounded by a housing which helps to cools it.
• Ratchet screwdriver able to change operating direction: A screwdriver incorporates a mechanical contraption in the handle connected to the operating end via a shaft to alter the orientation of the operating end.
• Snow shovel with reversing element: A snow shovel mounted on wheels with a leveraged handle that allows the user to pick up snow, move it, and dump it.

Each of these patent applications were likely filed because someone invented a tool and wanted to protect the invention.

In the case of the electric chain saw, the applicant is a French company who filed their first application in France, and later filed in multiple different countries. This company probably found a need for a way to cool a chainsaw. Leadership at the company instructed their research and development arm to create one, while their legal and business development arm made the decision of what to patent, and where to file.

Now consider the case of the snow shovel which was filed by an individual inventor using the services of a patent law firm. One can imagine this inventor, tired of shoveling snow, created a contraption that makes the job easier. Upon creating the invention, the inventor decided to get a patent on it. After receiving a valid patent, this inventor failed to pay the required maintenance fees and the patent protections expired. Maybe the inventor struggled to commercialize the snow shovel and decided paying the maintenance fee was not worth it, or maybe the inventor forgot to pay the fee.