If you have an innovative idea or a new invention, securing a patent is a crucial step to protect your intellectual property. A patent grants you exclusive rights to your invention, allowing you to prevent and exclude others from making, using, selling, or importing it without your permission. In the United States, patents are administered by the United States Patent and Trademark Office (USPTO), a government agency responsible for ensuring that inventions meet certain requirements before a patent is issued. This post discusses and provides a delineated guide with step-wise procedure on how and where to apply for obtaining a patent to protect your invention towards your commercialization goals. The process of obtaining a patent is intricate and requires careful planning and documentation and an overview of the major steps has been discussed below.
Determine If Your Invention is Patentable
The first thing you need to establish is whether your invention qualifies for a patent before you decide to apply to a patent office such as the USPTO with a patent application. A patent cannot be granted if the invention is not new or novel, useful or has utility, and non-obvious or with inventiveness, along with disclosure and submission requirements, which are or will all be discussed in detail in various other blogs on this site.
Novelty: The invention must be new or novel and not already disclosed by prior public disclosure including use, publication, oral disclosure, or patents. If someone else has already invented or published the idea, you cannot patent it. However, there are some measures and exceptions including measures when the invention has been obtained by another by theft and exceptions such as a grace period in some jurisdictions.
Utility: The invention must be useful and operable as perceived from industrial applicability and practical use or purpose standpoint and in some form or the other. For instance, a machine that does not work as intended or a medical procedure dependent on a particular surgeon’s expertise or practice would not be considered industrially applicable or useful and, therefore, will be considered ineligible for a patent.
Non-obviousness: Even if your invention is different from something that has already been patented, it must not be an obvious modification or a mere incremental improvement of existing inventions as seen from the perspective of someone skilled in the field. For example, if your invention is just a slight modification of an existing product that does not bring a significant improvement, it may not be patentable.
Additionally, inventions that have been publicly disclosed or sold more than one year before filing may not be patentable. However, if your invention meets these criteria, along with disclosure requirements then it may be eligible for a patent.
Conduct a Prior Art Search
Before applying for a patent, it is highly recommended that you conduct a prior art search to check whether similar inventions already exist. To ensure your invention is novel as well as non-obvious, you should conduct a prior art search. A search of the USPTO’s patent databases will help you identify potential issues with patentability. This involves reviewing existing patents, publications, and other publicly available information to verify that your invention has not already been disclosed. While this search is not required by the USPTO, it is highly recommended as it can save you time and money by identifying any potential conflicts early in the process.
This can be a challenging process for beginners, but the USPTO offers resources like the Patent and Trademark Resource Centers (PTRCs) to assist inventors with searching. You can use the USPTO’s Public Search Facility or consult with patent search experts, such as patent attorneys or agents, to assist you. Patent and Trademark Depository Libraries (PTDLs) can also be a useful resource.
If you are unsure about performing a patent search on your own, hiring a registered patent attorney or agent may be a wise choice. They can conduct a more thorough search and provide guidance on whether your invention is patentable or not so you may not waste your time and resources in a futile manner.
Choose the Right Type of Patent
There are three primary types of patents available at the USPTO as identified below and you need to determine which type of patent best suits your invention before proceeding, which can be greatly aided by a discussion with a patent or IP professional such as a patent attorney knowledgeable of the law and practices in your jurisdiction and any other jurisdiction that you may be interested in:
Utility Patents: These patents cover new inventions or discoveries of a useful process, machine, or composition of matter such as chemical compositions and they form the most common form of an application to the USPTO. These types of applications and patents are also common in other jurisdictions.
Design Patents: These patents protect the ornamental design of an object or item, such as a new shape or unique aesthetic appearance of a product. These are not the most common type of patents and often designs are categorized and protected by a distinct intellectual property right in jurisdictions other than the U.S.
Plant Patents: These patents are granted for the discovery of new varieties of plants that can be asexually reproduced. These patents are one of the options provided under the Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement under Article 27.3 (b), where it is mandated that some form of protection shall be provided for the protection of plant varieties either by patents or by an effective sui generis system or by any combination thereof. And, the U.S. has chosen patents as one form of such protection for some of its plant varieties.
Prepare Your Patent Application
Filing a patent application involves preparing a detailed and legally sound description of your invention. A patent application is a detailed legal document that requires specific information which must include the following:
Specification: A thorough written description of your invention, explaining how it works, how to make it, and its intended purpose is to be provided whether it is a provisional or a non-provisional application.
Claims: This section defines the legal scope of protection provided and secured under your patent and what aspects of the invention you wish to protect. Each claim outlines a unique aspect of your invention. This aspect needs to be included at the stage of non-provisional utility application filing at the USPTO.
Drawings: If necessary and applicable, drawings such as drawings and flow charts are used to illustrate visual representations of the invention to help explain how it works. The USPTO has strict rules for patent drawings, so be sure to follow these guidelines carefully.
Abstract: An abstract provides a brief summary of your invention and it is usually no more than 150 words at the USPTO.
Oath or Declaration: A signed statement from all the inventors affirming that they believe themselves to be the original inventor of the subject matter of the invention disclosed in the specification of a patent application filed at the USPTO.
If you are not experienced in drafting patent applications, it is highly advisable to hire a patent attorney or agent to ensure everything is properly prepared. These patent attorneys and agents need to be registered with the USPTO to help with the filing of your application and you may further recruit help from patent engineers and patent illustrators who are techno-legal professionals often with strong backgrounds and expertise in both technical and legal fields relevant to your patent application.
File Your Patent Application with the USPTO
Once your application is ready, you must file it with the USPTO either on your own or preferably with the help and under the guidance of a patent professional legally representing you as assigned with a power of attorney at the USPTO. There are two primary ways to file your patent application:
Non-provisional application: This is the formal application that begins the examination process and it is considered the full or complete application which includes all required documents including, the specification, claims, drawings, etc. It is the official request for a patent and is accompanied by the requisite aforementioned documents, any other legal forms, and the filing fee as determined by the schedules at the USPTO.
Provisional application: This is a less formal option that allows you to establish an early filing date or priority at the USPTO that is useful to establish novelty aspects of your invention. It does not require claims, an oath, or detailed descriptions, but establishes a ‘patent pending’ status for you to claim when discussing your invention particularly when trying to gain funding for your innovation commercialization and further development. However, you must file a non-provisional application within 12 months to claim the benefit of the provisional filing date or priority date and to continue the process further to the examination stages of the patent prosecution at the USPTO.
Many inventors opt for the non-provisional application, as it is the path to securing an actual patent. The USPTO charges various fees based on the type of application you file, and these fees can vary depending on whether you qualify for reduced fees as a “small entity” or “micro entity.” It is beneficial to check whether you qualify for said status legally and as per the practices at the USPTO to avail the associated benefits of reduced fees, etc.
Work with Your Patent Examiner
After filing your application, the USPTO assigns a patent examiner to review it. The examiner will review your application first to see if it meets the formality and form requirements as practiced at the USPTO and after that, the examiner will assess whether your invention meets the legal requirements for patentability. If your application is not complete or if the examiner believes there are issues, they will send an office action outlining the objections and detailing any problems and rejections while clearly citing under which law and/or regulation or rule your application fails to be considered for patentability and allowance at the USPTO.
You will need to respond to each of these objections and rejections as the case may be, either by amending your claims or arguing your case. You may need to revise your application or provide additional information. This process may take several rounds of communication with the examiner. In some cases, the examiner may reject your application, but you have the opportunity to amend your submission or appeal their decision. Timely and clear responses are crucial in this step. It is essential to stay within the deadlines provided by the USPTO to avoid having your application abandoned.
Receive Your Patent
If your application passes and is considered approved when the examination and all objections are resolved, the USPTO will issue a Notice of Allowance, meaning your patent is ready to be granted once you pay the necessary issue fee. You will thus need to pay the required issue fee before your patent is officially granted. Upon payment, your patent will be granted, and you will have the exclusive right to your invention.
Once granted, you will receive your patent, which gives you the right to exclude others from making, using, selling, or importing your invention for up to 20 years for utility patents, subject to maintenance fees timely payment.
Maintain Your Patent
After obtaining your patent, you must pay maintenance fees to keep it in force, it is completely your responsibility and the USPTO is not responsible for any lapse in payment on your end. These maintenance fees are due at 3.5, 7.5, and 11.5 years after the grant date to keep the patent active. Any failure to pay the maintenance fees will lead to the expiration of the patent, and your exclusive rights will be lost.
Considerations for International Patents
If you want to protect your invention outside the U.S., you can file for patents in other countries. The Patent Cooperation Treaty (PCT) allows you to file a single international application that can be pursued in multiple countries. However, you’ll still need to follow the national procedures for each country where you seek patent protection before the PCT expires.
Where Can You Apply for a Patent?
You can file a patent application directly with the United States Patent and Trademark Office (USPTO) for the grant of a patent in the territorial jurisdiction of the U.S. If you wish to procure a patent legally enforceable outside the U.S. territory, you will have to apply either directly to the country or regional jurisdiction you are interested in applying to or do it via international agreements either via the Paris Convention in its member States or via the Patent Cooperation Treaty (PCT) in its member States, all of which are discussed separately in other blog posts. For the USPTO, the following provides a brief introduction to the various ways to apply:
Online: Visit the USPTO website at www.uspto.gov to submit your application electronically through their Patent Center or EFS-Web system.
By Phone: Contact the USPTO’s Contact Center at 800-PTO-9199 or 571-272-1000 to ask questions or get guidance.
Patent and Trademark Resource Centers (PTRC): Visit these centers, located in public libraries across the country, for help with patent searches and guidance on applying.
Provisional Application: You can file a provisional application, which sets an early filing date and allows you to use the term “patent pending” for 12 months while you prepare a full application.
Conclusion
Securing a patent for your invention is a complex but rewarding process, and while obtaining a patent may seem like a daunting process, it is a valuable step in protecting your intellectual property and securing your rights to your invention. Understanding the steps involved and seeking the right legal help can greatly increase your chances of success. Whether you file independently or with the assistance of a registered patent attorney, following the correct procedures will give you the peace of mind that comes with knowing your invention is legally protected.
By ensuring that your invention meets patentability requirements, performing a thorough prior art search, and following the USPTO’s application procedures, you can protect your intellectual property and secure exclusive rights to your innovation. It is recommended that you research your options, prepare a solid application, and maintain your patent, so you can ensure that your invention receives the protection it deserves and you can properly commercialize and protect your innovation and product in the market while establishing yourself as the leader amongst competitors. Although it can be challenging, seeking professional help from a registered patent attorney or agent can streamline the process and help you navigate the intricacies of patent law. Additionally, if you are unsure where to start, the USPTO provides various resources, like PTRCs and registered professionals to help guide you through the process along with independently hired patent professionals, who can expedite the overall process and increase the probability of successfully procuring a granted patent for your invention.
