Demystifying The Patent Process: A Comprehensive Guide for Inventors

So, you’ve come up with an idea and want to protect it. A patent is a document that grants you the right to exclude others from making, using, or selling a claimed invention in the US. That sounds good, but you don’t know where to start. Read on for a step-by-step guide through the patenting process.

Develop the idea

Your goal is to come up with an idea that is novel, non-obvious, and useful. Ask yourself if the idea is ready to market or needs more research and development. The US Patent and Trademark Office (USPTO) requires patent applicants to describe the invention in “clear, concise, and exact terms” that allow others to “make and use” the invention. 35 U.S.C. § 112. This “enablement requirement” represents your tradeoff with the Patent office. In exchange for exclusive rights, inventors must teach the public the best mode for making and using the idea. So, the first step is to develop the idea to a place that it can be clearly described to a person of average skill in your field.

Determine if a Patent is Appropriate

Several types of intellectual property protection vehicles must be considered and assessed against acquiring a patent, given the creator’s end goals and commercialization targets, including trademarks, copyrights, industrial designs, and trade secrets. The considerations and assessments that need to be made are based on factors that include the subject matter of the creation or invention; the period of protection sought (limited or unlimited); willingness for public disclosure of the details of the creation or invention; the market (including considerations on geographical, nature of the good/product/process/service, consumer markets, etc.) being targeted; the availability of resources (both monetary and otherwise) that go into registration, prosecution, and subsequent maintenance of a particular intellectual property, such as a patent; possibility and risks of reverse engineering of the disclosed creation or invention; legal and non-legal measures already in place by the creator or inventor such as non-disclosure agreements, etc. It is pertinent that one makes the right choice of the intellectual property that best suits the creation or invention being disclosed, along with the requirements to be fulfilled for acquiring any intellectual property to protect one’s creation or invention and the available resources.

Determine the appropriate type of patent application

Now that you’ve developed the idea and decided to pursue patent protection, it’s time to determine the correct type of patent to protect your idea.

A utility patent application is appropriate when an invention is a process, a machine, something that can be manufactured, a composition of matter, or if the invention is an improvement to an existing invention. Non-provisional utility patent applications are active for 20 years once granted, while provisional utility patents become abandoned if not converted to non-provisional applications within 12 months.  

A design patent covers an object's ornamental or aesthetic design or what is applied to it. Design patents are active for 12 years once granted. 

A plant patent application covers plants that are asexually reproduced and is active for 20 years if granted. See the USPTO's pages for details about applying for a plant patent.

It might make sense to file multiple types of patent applications at once. Additionally, filing for international patent protection might maximize your portfolio’s value. It's advised to speak with a patent agent or attorney to walk through the complexities and determine an IP strategy.

Prior art search

Patent prosecution is not quick, and it's not cheap. So, doing your due diligence by performing a patent search early in the process is important. A patent search should help you assess whether your invention meets the USPTO’s novelty and non-obvious requirements for patentability. Further, a patent search can help you structure your patent application to avoid infringing on existing inventions.

Draft the patent application.

Regardless of your patent type, you’ll eventually need to draft the application. The application should have three primary components: a detailed description, drawings, and claims. These sections enable the inventor to disclose the relevant features of the invention and highlight what makes the idea unique. To receive a patent, the application must disclose the best mode contemplated by the inventor of carrying out the invention.

When writing a detailed description, a good approach is to consider the problem your invention solves and then describe how the invention solves it. A patent application will include details highlighting your invention's unique and salable aspects. A well-written patent will also describe several alternatives for how your invention could be made. Describing possible alternatives broadens the scope of the patent's protection and can help you when negotiating with the patent office or arguing during litigation.

A utility patent is the only patent application that doesn’t require drawings or images. However, drawings and flowcharts can significantly aid in understanding the invention, so it is a good idea to include them in your utility patent application if possible.

The final component of a patent application is the claims. Claims are what will be examined by the USPTO when granting or rejecting a patent. Once granted, the claims will be used to determine patent infringement. Provisional patents are not examined and are the only patents that do not require a claim. However, in some circumstances, including at least one claim is the best option when you need to secure the earliest possible date from which to calculate damages for infringement. When drafting a patent application, thinking about how you want to leverage your intellectual property to maximize return on investment is essential.

File the application

Filing the application can be done electronically or by mail. The USPTO provides detailed guidance to walk you through the electronic filing process.

Plant and non-provisional utility patents generally have the same filing requirements. A complete non-provisional utility patent application should contain the elements listed below:

• Utility Patent Application Transmittal Form or Transmittal Letter

• Appropriate Fees

• Application Data Sheet

• Specification (including the description, at least one claim, and an abstract)

• Drawings (when necessary)

• Executed Oath or Declaration

• Nucleotide and Amino Acid Sequence Listing (when necessary)

• Large Tables or Computer Listings (when necessary)

The elements of a design patent application should include the following:

• Design application transmittal form 

• Fee transmittal form

• Application data sheet

• Specification

• Drawings or photographs

• The inventor's oath or declaration

Patent prosecution

It may take 12-18 months for the USPTO to respond to your patent application with an office action. Generally, their response will be a rejection of your patent application. This is not the end. A patent examiner may issue multiple final rejections before your application is granted. A helpful approach is to see patent prosecution as a negotiation with the examiner on the exact boundaries of your intellectual property. Two primary aspects of patent prosecution cannot be overlooked. First, you must respond to each office action within a set timeframe, or the patent application will be abandoned. Second, each response to an office action must address all of the concerns raised by the examiner in the office action. Suppose the inventor cannot convince the examiner that the invention deserves a patent. In that case, the inventor has the option to take it out of the examiner’s hands by appealing the decision to the Patent Trial & Appeal Board.

Patent grant

The examiner will issue a notice of allowance if your application demonstrates, or has been amended to demonstrate, that your invention is a patent-eligible subject matter that is novel, non-obvious, and useful. The notice of allowance will prompt the inventor to pay an issuance fee before their patent is formally granted. This is great to hear because all you need to do is pay the issuance fee to close prosecution and receive patent protection. Before paying the fee, consider whether the idea can be expanded, improved, or subdivided into distinct patentable components. A continuing application could help grow your patent protection if any of these are true. It is crucial to perform this analysis before paying the issue fee because continuations can only be filed while the original “parent” application is still pending, and the parent is no longer pending once the inventor closes prosecution by paying the issuance fee.

Once your patent is granted, you can enforce your exclusive rights to prevent others from making, using, selling, or importing your invention without your permission.

Maintaining your patent

The USPTO requires maintenance fees to keep utility patents active; design and plant patents do not. Maintenance fees are due 3.5 years, 7.5 years, and 11.5 years from the date the patent was granted. Failure to pay these fees will result in the expiration of your patent and the loss of your exclusive rights to your invention.

Conclusion

Patenting your idea is a multi-step process that could take years. Therefore, it is highly recommended to seek the aid of an experienced patent agent or attorney. At Bright-Line IP, we specialize in developing strategies to protect our clients' intellectual property and maximize their return on investment.