Navigating the Patent Application Process
What is a patent?
According to the United States Patent and Trademark Office (USPTO), a patent is “the grant of a property right to the inventor, issued by the United States Patent and Trademark Office.” In general, patents last for terms of fourteen to twenty years from the date of filing. The patent right excludes “others from making, using, offering for sale, or selling the invention in the United States or importing the invention into the United States.” Patents are issued by the USPTO but it is up to the person who own the patent to protect it from infringement by others. Further, patent rights granted by the USPTO refer only to rights within the United States. It is advisable to also acquire foreign patent rights. Only the inventor(s) or someone operating on behalf of the inventor(s) may apply for a patent.
A patent is not a trademark nor is it a copyright. Trademarks are things such as logos which identify the source of a product. Copyrights exist to guard intellectual property such as a manuscript or music.
There are three types of patents:
1. Utility
Granted to the inventor/designer of the functional aspect of an invention and/or design or any new or useful improvement to
said invention and/or design. This patent lasts for twenty years.
2. Design.
Granted to protect a unique decorative appearance. This patent lasts for fourteen years.
3. Plant.
Granted to the person who first invents and/or discovers a distinctive plant or plant characteristic and reproduces the plant or plant characteristic asexually.
What can be patented?
A patent cannot be extended simply for an idea or suggestion. In order to quality for a patent, an invention must be new and non-obvious. Additionally, it must be described in such a way that an ordinary person with skill in the field could make and use it. An improvement to an existing item or process may also be entitled to patent protection.
Caution should be the watchword of the inventor prior to applying for a patent.
In the months prior to applying for a patent, an inventor should avoid publicizing his/her invention even for the purpose of raising awareness or soliciting funds. Exposing an idea or invention may harm its chances for receiving a patent. Offering the item for public sale or use may also damage the ability to have it patented.
The USPTO website provides a vast resource for information concerning patents and the patent application process.
Applying for a patent requires many specific, documented steps followed in a specific order. Filing a provisional application establishes a filing date but does not begin the actual patent process and will not lead to receiving a patent. Choosing to file a non-provisional application starts the actual examination process and may lead to the granting of a patent.
It must also be decided what type of patent is needed: Utility, design or plant. The invention must then be classified withing its category. After that a search of all previous related patents must be undertaken. Tools for making these classifications and searches are available on the USPTO website and through the mail. All the necessary forms for the application process are also available online and through the mail. However, when the decision has been made to seek a patent, it is highly advisable to hire a patent attorney.
The USPTO itself recommends the use of a patent attorney when applying for a patent. Many of the reputable companies which assist inventors in bringing their products to market also suggest using a patent attorney to steer the procedure. Please note: Before discussing your invention or process with any company seeking to develop it for the marketplace have a signed confidentiality agreement in place. Failure to have such an agreement could lead to theft and/or forfeiture of patent rights.
A list of registered patent attorneys is available on the USPTO website. While the USPTO cannot recommend a patent attorney a person’s private attorney may assist in selecting a patent attorney. Many state bar associations also provide referral services which will assist in choosing a patent attorney.
What happens after a patent attorney has been chosen?
A wise first step would be to file a Disclosure Document. This does not have to be done through your patent attorney. There is a disclosure form available from the USPTO. The Disclosure Document does not initiate the patent application nor does it provide the inventor with any patent protections; it merely documents the invention’s date of conception. The USPTO will provide you with a receipt for the disclosure which can be used to as evidence of the date the invention was first devised.
After the Disclosure Document has been filed, the next step would be a search of existing patents. This search must be exhaustive, even a thorough computer search cannot suffice as a patent search. Again, the best source for such a search is the USPTO itself. A registered patent attorney will have associates specifically trained to examine the USPTO’s voluminous patent files. Once the search has been completed the patent attorney can advise the inventor whether or not a patent should be pursued.
If it is decided that applying for a patent is worthwhile the process will begin. Once the application has been placed, the invention will be designated as “patent pending”. Although the “patent pending” appellation does not offer the safety of an actual patent, at this point an inventor can generally begin to market his/her product if desired.
The application will then begin the months long process of being investigated by a Patent Examiner. Additional fees will be required during the review and during the possible issuance and publication of the patent. The inventor(s) should remember that even with the assistance of a registered patent attorney, there is no guarantee that a patent will be given.
Applying for a patent is a complex, time consuming and expensive procedure.
Anyone considering applying for a patent should be aware of these facts before starting the process. It is also highly recommended that an inventor pursue a patent through a registered patent attorney. Whether an inventor chooses to engage a patent attorney or not, a Disclosure Document should be filed with the USPTO to document the conception date of the invention. Further, if the inventor uses a company to help develop the invention, a confidentiality agreement should be signed with the company to protect the interests of the inventor.
Finally, remember the commercial success rate of most inventions is very low. If the object of pursuing a patent is solely for the intent of making money, be wary of companies and people who promise you there are millions to be made simply by having a patent.
