6 Steps to Navigating the Patent Process
If you are developing a new product or have a new invention, you may have already considered filing a patent application with the United States Patent and Trademark Office (“USPTO”). If patenting your invention is on your radar, here are 6 steps to help you navigate the process.
Step 1: Finalize your inventionIn order to protect an invention, you first have to have an invention. That does not necessarily mean that you need to have a commercialized prototype, but if your invention is nothing more than an idea, then you do not have anything to protect. Take the time to understand how your invention can be implemented, the strengths of the invention, and how to properly describe the invention. You will need to be able to describe the purpose of your invention, what it does, and how it does it.
Step 2: Determine if your invention is patentableJust because you have not seen anything similar to your invention before, does not necessarily mean that your invention is patentable. To obtain a patent, your invention must be novel (new/unique) and non-obvious (not based on what people already know). Section 101 of the Patent Statute (35 U.S.C. § 101) states that “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof” is eligible for patent protection. Although this has been broadly interpreted as “anything under the sun made by man”, it is important to note that abstract ideas, natural phenomena, and laws of nature are not patentable.
When you conduct a novelty search (i.e. patent search), you get a reasonable understanding of what products and prior inventions are already in the public domain. Novelty searches, however, can be limiting because not all pending patent applications are accessible to the public. When you hire a good patent attorney who has experience with the subject matter of your invention, they will be able to help you understand the unique characteristics of your invention, as well as any elements that may provide challenges to obtaining a patent. Your patent attorney can also walk you through the patent process, step by step, starting with the patent search.
Step 3: Preparing to fileBefore you prepare to file your patent application, you must first determine what application is right for you. The two most common types of patent applications are utility patents and design patents
If you want to protect the useful utility of your invention, then a utility patent is your best option. There are two different utility applications: provisional and non-provisional. A provisional application is valid for one year and serves as a temporary place holder that allows you to claim “patent pending” status. At the end of the one-year period, the USTO requires that you filed a non-provisional application or else risk losing your patent rights. The non-provisional patent application is much more detailed and must adhere to a strict format that includes a detailed disclosure of the invention and at least one claim. Unlike the provisional application, the non-provisional patent and is valid for 20 years from the date of filing. If you want to protect the design elements of your invention, then a design patent application is likely the best application for you.
For more information regarding you may visit the Patent Application Guidelines on the USPTO website for the detailed legal requirements for filling the type of patent application you have determined is right for you.
Step 4: Submitting your initial applicationWhen you are ready to submit your patent application, you are formally entering the patent process with the USPTO. The patent application requires numerus forms, drawings and, most importantly, the patent specification. At the time of filing, you are also required to pay the USPTO filing fees. Be warned: if you fail to submit the proper documentation at the time or filing, or if you fail to pay the proper fees, the USPTO will not allow your application to proceed until you make the corrections or pay the balance owed and you may be required to pay penalty fees.
Step 5: The Patent Examination ProcessThe USPTO does not have a set time period for reviewing and approving a patent application once it has been submitted. There are, however, specific steps the USPTO must follow before the USPTO grants your non-provisional or design patent application.
Once your application has been accepted as complete, it will be assigned for examination. Your examiner will review the specification and drawings, and will conduct a meticulous patent search. If the examiner does not think your invention is novel or if there is an issue with the claims, you will be given an opportunity to make amendments or argue against the examiner's objections. This process is called patent prosecution.
Each application is unique, and each step in the examination process has its own challenges. A patent application with carefully drafted claims may run through the patent examination process with ease, and may not even receive an office action. Conversely, a patent application in a crowded and competitive field may receive a lengthy office action that may be difficult to overcome. Talk with your patent attorney about the best strategies for responding to an office action and how to best defend the scope of your invention.
Step 6: Maintain your patentMaintaining your patent is arguably the most important step of the patent process. Maintenance fees are required to maintain a patent in force and are due in the 4th, 8th, and 12th years after the patent’s issue date. If the maintenance fee and any applicable surcharge are not paid in a timely manner, the patent will expire, and you will not have the same rights you once did before.