Wondering how to patent an idea?
It is often said that you cannot patent an idea, but you can patent an invention. This statement confuses many people that wonder: do I have an idea or an invention? The truth is most of the time what you consider an idea actually does qualify as invention.
What does this mean for you? If your idea has structure to it, then it is more than a simple idea and probably qualifies as an invention. In general, if you are able to draw diagrams of your invention, explain how the invention works, or build a prototype of your invention, you are likely well on your way to having a patentable invention.
Truly, most of the time that people approach us to research and then patent their idea, it qualifies as an invention. So from this point on, we will use the words idea and invention interchangeably.
So how do you patent your idea/invention? First you’ll want to consider the criteria your idea must meet to get patented. Then, if your idea meets these criteria, there is a process for getting a patent. We will discuss both in detail.
To have the greatest chance for success, it’s always a good to understand the criteria for patenting and understand the patent process. This way when you do engage a patent attorney to help you get a patent, you will get the most value for your time and money.
Let’s take a closer look at how to patent an idea.
Defining a Patent
What is a patent anyway?
A patent is a type of property right. Specifically, it is an “intellectual property right” over your idea. Intellectual Property is the field of law that deals with the ownership of ideas. Patents are one type of intellectual property. Compared to patents, trademarks, copyrights, and trade secrets are also intellectual property.
A patent gives the patent holder the right to exclude others from making, using, selling, or importing whatever is within the scope of the patent. Patent protection means you will have exclusive control over your big idea, and can shut others out of the market.
The United States Patent and Trademark Office is the government agency that considers requests for a patent, makes determinations of who should be granted a patent, and then actually issues patents to inventors.
Determining If Your Idea Can Be Patented
To be patentable, your idea must be:
- Non obvious; and
This criteria is set out in the applicable patent law, 35 U.S.C section 101, which states:
“Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title.”
First, to patent an idea your idea must be novel. Applicable patent law sets out a definition for novelty. Essentially, for an invention to be novel, it must be different from anything else that has previously been available in the world. This is often not difficult, because novelty simply requires that your idea be different in some way from previous invention.
More specifically, an invention is not novel if:
- It has been previously patented;
- It has been described in a printed publication;
- It has been in public use;
- It was available for sale; or
- It was otherwise available to the public.
This criteria to get a patent is not as strict as they may sound at first blush. The law does not prohibit, for example, a patent on an improvement of an invention that has already been patented. As a simple example, even though there may already be a patent for a car, if you have an invention for a car that has some small difference that allows it to travel faster, that car would likely meet the novelty criteria.
As long as your idea has some element that is different from other ideas it might build upon, your idea may meet this requirement.
Non Obvious Idea
Next, to get a patent your idea must be “non obvious.” To be non obvious, you need to consider what would be obvious to a person of ordinary skill in the field of the invention. If a person in your field could easily perceive your idea based on prior art, it probably won’t meet this requirement.
What’s prior art? The term “prior art” simply means all of the information that is available to the public before the date that you file for your patent. There are databases filled with prior art, which we’ll discuss further on.
Another way to think about whether your invention is non obvious is that your invention cannot be trivial. It must be outside the range of what people in the field would ordinarily think they could do. If your invention is obvious based on all of the information that is available to the public, it cannot be patented. If this non obvious determination sounds highly subjective, that is because it is!
Non Obvious Determination
Employees of the Patent Office, called patent examiners, review patent applications and make a determination on whether an idea is non obvious. These patent examiners are guided by a specific set of rules when making this determination.
Essentially, patent examiners will look at the totality of the circumstances and make a decision based on all of the prior art that is available. However, the reasons behind why a patent examiner makes a non obvious determination are not always cut and dry. They can also be subjective decisions. That is – the opinion of the examiner often enters into their determination. In fact, patent attorneys are often surprised by the decisions made by these examiners.
Even if it is sometimes a matter of opinion, there are certain things that will almost always be considered obvious. If your invention makes only minor changes to a prior invention, then it probably will not be eligible to get a patent. These types of minor changes could include changes to an invention’s size, color, or shape, but without making any changes to how the invention operates.
Because of this, an essential starting point is to have a good understanding of the prior art related to your idea. Knowing the closest ideas to then allow you to best knowhow your idea is different from any previous related inventions.
Finally, to get a patent your idea and invention must be useful. Under traditional patent standards, to be useful, to patent an idea your invention must have:
- Practical utility;
- Operability; and
- Beneficial utility.
While this may sound difficult to fulfill, the definition of usefulness in patent law is relatively broad. Usually, it’s not difficult to meet the usefulness requirement. Typically the things that fail to have utility are things like ‘perpetual motion machines’ – machines that claim to create energy without fuel.
To get a patent your invention just needs to operate to perform an intended purpose in the world. In other words, it cannot have merely a speculative or possible future use.
Identifying Types of Inventions That Can Be Patented
The United States Patent Office grants patents for different types of inventions, including:
Utility patents and design patents provide protection for different types of ideas.
Utility patents protect useful inventions. These useful inventions are split up into four categories:
- Manufacture; and
- Composition of matter.
Note: the United States Patent Office will not patent an invention that is an abstract idea, a natural phenomenon, or a law of nature.
Generally, a “utility patent” protects the way something is used and works. A utility patent prohibits others from making, using, or selling your idea without your authorization.
Utility patents will typically expire 20 years from the patent application filing date. Utility patents also typically require maintenance fees that must be paid multiple times in order to retain the patent for the full term, and will expire early if the fees are not paid.
A utility patent is usually more technically complicated than a design patent. Utility patents can also have multiple claims under the same patent application, while design patents can only have a single claim.
Because they are more complex utility patent application also typically costs more than a design patent application. This is because utility patent applications usually require more time and effort to draft the applicable specification and claims.
In contrast to a utility patent, a design patent does not protect the function of a product, it just protects the way it looks. This includes the shape and configuration of a product, as well as the surface ornamentation that is applied. In some cases, a design patent can protect both the shape and the ornamentation.
A design patent costs much less than a utility patent, and typically is much easier to get than a utility patent. Design patents, unlike utility patents, expire 15 years from the patent issue date. Design patents do not have any maintenance fees or renewal requirements.
Assessing Important Filing Considerations
So, is it worth it to patent an idea?
There are many factors to consider in whether or not to file for a patent and obtain patent protection. The process can be long, it can be time-consuming, and it can be very expensive. You can also go through great effort to get a patent, only to find the patent is essentially worthless.
For example, most patent applications are rejected at least one. That means you may need to submit multiple versions of your single patent application.
The filing costs to get a patent is an important consideration. Filing fees for patents can add up, especially for complicated ideas that require multiple patents to be filed. Attorney’s fees are also a consideration. Depending on an idea’s complexity, the patent examiner assigned to the application, and how much research you do up front, attorney’s fees can amount to a wide range.
If you do everything yourself, at the very least, a patent application will cost several hundred dollars. However, the skillful preparation of a patent application can starts at a few thousand dollars for a design patent and can reach upwards of $40,000 for complex ideas such as computer software.
It’s also important to consider the value of your time. While it may sound like a good idea in theory to complete a lot of the work yourself, many of the steps are very complicated and can greatly benefit from experience. It will take you a long time to accurately draft all of the required documents and to conduct the necessary patent searches. Even then, the reality is that it is nearly impossible for an enforceable patent to be written without previous experience drafting patent applications.
This is not meant to discourage you from patenting your idea. It’s just important to think through how to patent the idea, the effort involved, and the costs associated.
Steps for How to Patent an Idea
You have an idea that can be patented. You have considered the costs and the benefits. You have concluded you want to get a patent.
Now let’s discuss how to file a patent for the idea. The process to get a patent has many steps. This article will walk you through each of them.
Step 1: Complete Prep Work
Before you look into getting a patent with the Patent Office, it is important to complete some background preparatory work to patent an idea. This will go a long way when it comes time to filing your patent application, as you will have already completed a lot of the leg work.
Build a Prototype
While it is not absolutely necessary to build a prototype of your invention in order to get a patent, it can be a very helpful step to complete early on in the process.
There are a few reasons why prototypes are helpful when looking to patent an idea:
- Prototypes force you to develop applicable designs and procedures for your invention;
- Prototypes help determine the functionality of your invention;
- Prototypes bring to light places where your invention could improve;
- Prototypes help make sure your invention will accomplish what it is set out to do.
Does your prototype need to be perfect? Nope. Don’t get too caught up in perfecting every tiny detail within the prototype.
You don’t need to spend a ton of time making sure each aspect of your invention is perfect before you start the patent application process. In fact, it is important to begin the application process sooner rather than later so that you can preserve an early application filing date. Most often the approach taken by successful inventors is to file a patent application at an early stage to establish their rights to the concept, and then improve and perfect their product. When done correctly, the initial patent application will embrace the overall idea of their product – even including the improvements they make later.
Even so, it’s a good idea to make sure you have an idea and an invention that will be able to accomplish what you think it will before you start spending a lot of money pursuing a patent. Prototypes help you to make that determination.
Draft a Business Plan
Similar to building a prototype, it is a good idea to draft a business plan for your idea and invention. The business plan does not need to be complex and does not need to be perfect. It’s more about thinking through your idea and getting processes onto paper.
Drafting a business plan helps you evaluate the pros and cons of seeking a patent. It also forces you to evaluate whether your invention will actually make money. Finally, a business plan helps you evaluate what steps you will need to take to get the idea off the ground.
Look Into Getting an Eligibility Opinion
When considering getting a patent, another thing to consider doing early on is getting an eligibility opinion from a patent attorney. This patent attorney should be licensed and registered with the United States Patent Office.
Your patent attorney and associated law firm will have experience filing patents and will understand the nuances involved within the underlying patent statutes and applicable case law. Because of this, a patent attorney will have a much better understanding of whether your idea can actually be patented or not.
Of course, your patent attorney won’t be able to tell you with 100% certainty whether or not you can get a patent for your idea. The case law in this area is always changing and morphing, and it is hard to predict exactly how a patent examiner will come down on any one idea.
Even still, your patent attorney will be able to point out and guide you through certain pitfalls, complications, and considerations that you may not have thought of on your own.
Determine the Inventors of the Patent
In many cases, it is easy to identify the inventors of your patent. You may have come up with the idea all on your own, and may have spent your own time and effort to develop a prototype.
But oftentimes, the best ideas are thought of and developed in groups. There can often be multiple players involved in the development of an idea. Because of this, it’s important to make determinations up front about who should be classified as an inventor.
Keep in mind an inventor is someone who helped think of and create the idea underlying the claimed invention. An inventor is someone who contributed to the ingenuity of the underlying idea and invention. Just because someone helped build a prototype or provided an expert opinion for you does not mean they are a co-inventor.
It’s important to identify all of the inventors up front because all co-inventors must be included in your patent application. Inventors may jointly apply for a patent even if:
- The inventors did not work together physically or at the same time;
- Each inventor did not make the same type or amount of contribution, or
- Each inventor did not contribute to the subject matter of every claim within the patent application.
The minimum contribution requirement in order to be a co-inventor on a patent application is that they contributed to the subject matter that is embraced by at least one claim in the patent application.
This is an important discussion to have with your patent attorney. You want to make sure that the proper inventors are named in the patent application. Your patent attorney will be able to provide advice based on any particular nuances applicable to your situation.
Note that even though someone might have contributed to the invention and must be named on the patent application, you might not want that person to have ownership rights in the invention. In that case, you will want to have that inventor assign their rights to you or your company. This is often the case when an employee takes part in developing something that is later patented. The employee will be named on the patent application, will sign the patent application, and will also turn over their rights to the employer by signing an “assignment” document.
Determine Owners of the Patent
The next step is to determine the who you would like to be the owner of the patent, and who might have ownership claims should you apply for a patent.
Regarding the first part, who would you like to be the owner, the two main things to think about are:
- Should the patent be owned by a company?
- Should the patent be owned by you individually?
If you simply apply for a patent, it will be owned by the inventors individually. This is often ok, especially if you are the only inventor and if you don’t have any investors. Often, if there are multiple inventors or investors involved, someone will want the invention placed in the name of a company co-owned by the various inventors and investors.
Regarding the second part – would someone else have a claim of ownership over my patent – here are some things to consider:
- Is the invention related to your job?
- Did you come up with the invention during work hours?
- Did you use company resources to develop the invention?
- Were you tasked by your employer with developing this idea?
- Did you spend time working on this outside of work hours?
- Is the invention unrelated to your job?
- Did you regularly discuss the idea with your colleagues or boss?
When your employer can claim that the invention was a part of your employment, they can claim ownership to your patent. Be sure to check any agreements you may have signed with your company, as some employment agreements directly address this question. Make a thoughtful, honest assessment about whether your big idea is intellectual property that actually belongs to the company you work for. It is also a good question to ask your patent attorney.
Assess The Extent of Public Exposure
Another important thing to consider is the extent to which your idea has already been made public. Have you already somehow shared your idea or invention in the public domain?
For example, have you published it in an article or journal, showcased it at a trade show, or established a Kickstarter campaign to drum up funds? If you have, you may not be eligible to patent your invention and receive patent protection.
U.S. patent law still technically provides a one-year grace period, under the right circumstances, when you have exposed your invention to the public. Therefore, be sure to determine the exact date of the first time your invention was revealed to the public. This date may start your one-year clock. But there is no such patent grace period in most of the world. So carefully that before your expose your invention publicly.
Conduct Market Research
As a final note on prep work, it can be a good idea to conduct some market research on your idea before you file your patent application. This helps give you some background information on how the public would react to your idea, and whether it pays to get patent protection.
It also helps you better understand whether your idea could actually make money, and how long it might take to recoup that money.
The truth is, even if you have a great idea, it might not be worth pursuing. It might be too hard to get off the ground or it might require too much leg work from you or money upfront. The public may not understand the value of your product, and marketing it might not be worthwhile.
These are all important factors to at least briefly explore before you file a patent.
Step 2: Conduct a Patent Search Using a Patent Database
Next up is to conduct a patent search for your idea using one of the various patent databases. This will help determine whether or not your invention is truly novel, as we discussed above, because it will let you know if others have already obtained a similar patent.
You can conduct your patent search within the United States Patent and Trademark Office’s various patent databases. Take time to understand the limitations to this search and why it might not be thorough and might not guarantee that your idea does not exist. Conducting this patent search, however, before you submit your application can often save you substantial time and money if you search and discover your idea has already been patented by another.
The United States Patent and Trademark Office has a great video that walks through a step-by-step strategy for conducting a patent search. Here are some of our own tips.
Brainstorm Patent Search Words and Phrases
First, spend some time brainstorming keywords you can use for your patent search. To develop terms, think through some of the following questions:
- What is the purpose of your invention?
- What are simple words you would use to describe your invention?
- Is your invention a process or procedure? If so, what are the steps?
- Is your invention a product?
- What material is your invention made of?
- What does your invention look like?
- What does your invention accomplish?
- How is your invention used?
Compile a list of terms as you think through these questions. Try to describe your idea out loud to others this will help you simplify the concepts and develop keywords.
Here are some additional tips as you draft patent search terms:
- Identify keywords for your invention;
- Identify any technical terms that help describe your invention;
- Avoid overly broad terms;
- Avoid generic terms;
- Think of synonyms for the terms you initially choose.
This will probably be an iterative process. As you conduct searches and review prior art, you will begin to develop a greater understanding of the terms commonly used and the common phrasing for patent applications within your field. Keep in mind that terms very different than what you imagine might have been used when someone else patented an idea similar to yours. So when they patented a “can opener” like yours, they may have called it a “container lid remover”. Since your search for “can opener” won’t find their patent, it is important for you to be flexible with the keywords and to try many different combinations.
Search Within Classes and Subclasses
The next step is to conduct a patent search within classes and subclasses on the United States Patent and Trademark Office website. The Patent Office sorts each patent into various classes. There are about 450 classes in total. Examples of patent classes include Apparel, Cutlery, Metal Working, Sewing, and Woodworking.
Within each of these classes are numerous subclasses. Subclasses drill into patents at a deeper, more granular level. In total, there are hundreds of thousands of class/subclass combinations.
The advantage of searching within classes and subclasses is that you will find important prior art, even if they use different terminology. So finding the correct class/subclass to look in will reveal that “container lid remover” patent that might have escaped your keyword research for can opener.
You will need to search through multiple classes and subclasses to conduct a thorough patent search and make sure you have covered all of your bases. This can take a substantial amount of time, so don’t be discouraged by the process.
Search Issued Patents and Patent Applications
The United States Patent Office has two main patent databases:
- A database for patents that have been issued;
- A database for patent applications that have been published.
While there is some overlap between these two databases, it is important to conduct a patent search within both databases because each database contains unique hits. This is because not all patent applications are published, and not all applications are eventually granted patents. Published patent applications are prior art and can be used against your efforts to get your own patent.
Full Text and PDF Image Databases
The Patent Office has two types of databases for issued patents:
- Full-Text; and
- PDF Image.
The Patent Office has full-text patents for patents that have been issued from 1976 to the present, and PDF images for all patents issued from 1790 to the present.
The PDF image database only allows you to search by patent number or classification code. Therefore, it can be harder to fruitfully search the PDF image database. However, this database goes much further back in time than the full-text database.
So, be sure to still check the PDF Image database as a final check. It is helpful to familiarize yourself with classes and subclasses before you dive into this database, as that’s the primary way you will be able to find any relevant patents.
Third Party Patent Search Databases
There are also some third party patent search databases you can use to facilitate your patent search. These databases have advanced filters. This includes searching by date, author/inventor, and other key features beyond class and subclass.
These databases can also be more intuitive to navigate, as they mimic other platforms you may be familiar with.
Third party patent search databases can offer quicker access to data analytics than the United States Patent Office’s databases. They can also convert non-English text to English quickly and cluster documents within patent families.
Because of this, it’s a good idea to use both the Patent office databases as well as third party databases to make sure your patent search is comprehensive and complete.
Searching with Google Patents
Yes, the world’s largest search engine also has a patent search database! It is found at patents.google.com. The Google patent site is an extremely easy to use patent search database. It has a search window that looks just like the familiar search window. Just type in a query and up pop thousands of patent results.
The important thing to understand about Google Patents is that while it is extremely easy to find results, it is far from thorough. Google Patents is a great way to find a patent if you already know the patent number or if you know the name of the inventor. Also, searching on Google Patents will help you see if lots of people have similar ideas. It can be a good way to quickly, easily, and inexpensively discover that there is something just like your invention. But if you search extensively on Google Patents and still don’t find an invention like this, it is not wise to rely on this to trust that it actually doesn’t exist. In such cases it is way more likely that the Google Patent algorithm simply didn’t lead you to it.
Engage a Patent Attorney for Searching
After you have spent some time on your own searching the patent databases, it’s a good idea to engage a patent attorney to conduct a search on your idea and invention. Patent attorneys, and the patent searchers they employ, are much more experienced with looking for and finding the best prior art that will help you to understand how different your invention really is from the prior art.
Attorneys will often find things you might have been unable to on your own. They can also provide you pointers for further searching on your own.
Keep Detailed Search Notes
It can be helpful to keep detailed records of your patent search efforts. Take notes on the search terms you used, the databases you reviewed, and the various parameters you may have applied.
This will help you eliminate some duplicate efforts, as you will likely conduct your patent searches across days if not weeks. Be sure to note any patents you have questions about to consult with a patent attorney later on.
In addition, when you apply for a patent, you have a duty of candor to the Patent Office. This means will need to tell the Patent Office about the prior art that you know of that is relevant to the patentability of your invention.
Step 3: Prepare the Patent Application
You have the makings of a patentable idea, and your patent searches show that no one else has filed a patent on your idea. You may be ready to start your patent application.
The next step is to decide what type of patent application you should file. Set out below are the main types of applications to file, and key considerations as you make this determination.
Provisional Patent Application
A provisional patent application is an informal patent application. It allows you to file an application with an informal (but detailed and complete) description of your invention and without any type of formal oath or declaration. It will not be reviewed by the Patent Office, but most importantly, it reserves your filing date.
Why is your filing date so important?
The date on which you file can be very important for future patent disputes. This is because the United States operates under a “first-to-file” rule. It also establishes what prior art can be used against you when your patent application is reviewed by the Patent Office. Having an earlier priority date (filing date) can be extremely helpful in getting your patent application approved.
The first-to-file rule is the principle that the first inventor to file for a patent has priority for that patent.
This is a change to the historic rule in the United States that the inventor who first created an invention received priority– even if someone else managed to file their patent application first. In 2013, the American Invents Act was passed, which changed this long standing rule. This change brought the United States in line with other foreign patent laws that had been operating on a first-to-file basis.
The first-to-file rule is simpler and easier for the government to enforce than a first-to-invent rule, which may be one reason why the United States recently made this change. However, the rule can also potentially hurt inventors who have an idea and create an invention, but take their time perfecting it before actually filing their patent application.
The risk is that they may be ‘beaten to the punch’ by someone who later invents but files quickly.
This is why it’s important for you to file your patent application as soon as practical so to make sure you preserve your priority under the first-to-file system. Once you file your patent application, you’ll be able to state that your idea is patent pending. Being able to state that your idea is patent pending helps communicate to the public you have started the application process and have established your rights, even if you have yet to actually get your patent.
Benefits of a Provisional Patent
Filing a provisional patent application will establish your priority in your invention for the sake of a future filing of a nonprovisional (utility) patent application. A provisional patent application is not examined by the Patent Office and therefore avoids many of the costs typically involved with nonprovisional patent prosecution. A nonprovisional patent application must be filed within one year from the provisional patent application to maintain priority.
So, a provisional patent essentially gives you a year to conduct market research and further refine your invention before investing the more substantial money, time, and effort into a nonprovisional patent application and the patent prosecution process.
Another benefit is that provisional patent applications are kept confidential at the Patent Office. This means there will be no public disclosure of your invention.
Important Consideration for Provisional Patent Applications
You’ll want to make sure you describe the invention adequately in the provisional patent application. This is because if the invention is not adequately described in the provisional, you might not be able to rely on the provisional patent application date as your filing date once you file your nonprovisional.
Overall, provisional patent applications can be a good way for start-ups and small businesses or inventors with smaller budgets to get their ‘foot in the door’ at the Patent Office. It allows them to receive some patent protection before they fully invest in the more extensive patent prosecution steps.
Provisional Patent Application Details
Here are a few details that must be included in your provisional patent application:
- Cover sheet;
- Written description;
- Drawings (if necessary);
The written description of the invention must meet the requirements identified in 35 U.S.C. 112. This statute requires a clear and concise description of the invention and the manner and process of making and using it.
Essentially, the written description should provide enough details that someone with ordinary skill in the field would be able to make and use the invention. The written description also needs enough detail so that a person of ordinary skill in the field would be able to recognize the invention in the nonprovisional application that would be filed later on.
Nonprovisional Patent Application
A nonprovisional patent application – also known as a utility patent application – is the formal patent application submitted to the United States Patent and Trademark Office to start the patent process. Remember – if you filed a provisional first – this application must be filed within one year after filing your provisional patent application. Filing this application will give your idea patent pending status.
Nonprovisional patent applications start the process toward obtaining utility patents. Design patents have a separate application process, which is outlined below.
In general, it is helpful to engage an attorney when filing your nonprovisional patent application. A patent attorney will be able to provide you advice on the appropriate language to use in the application as well as guide the extensive processes and procedures that happen after filing.
For further insight, check out the United States Patent Office’s comprehensive filing guide.
Ways to File
There are three ways to file your nonprovisional patent application:
- Using the Patent Office’s electronic filing system called EFC-Web;
- Using the United States mail; or
- Hand delivering your application to the Patent Office in Alexandria, Virginia.
Be sure to note that if you choose to file non-electronically, you will be charged an additional $400 non-electronic filing fee.
Details to Include
A nonprovisional patent application must include the following:
- Application Transmittal Form or Letter;
- Specification, including a description and a claim or claims;
- Drawings, when necessary;
- Oath or declaration; and
- Required filing, search, and examination fees.
Application Transmittal Form or Letter
The Application Transmittal Form or Letter outlines the entire contents of the patent application. You can find a template form on the Patent Office’s website.
The Specification is the written description of the invention, including the manner and process for making and using the invention. Like the provisional patent application, the Specification must be written in clear, concise, and exact terms that allow a person with ordinary skill in the field to make and use the invention. Unlike the provisional patent application, there are numerous formal requirements for how the specification is written. Violating any of these rules will result in an objection or rejection of the specification.
The claims in a patent application are the part that define the scope of the invention. That is, they define the territory that others cannot trespass without infringing the patent. The claims are a series of carefully written sentences that define a core combination of parts of elements that another cannot copy. Drafting the claims is critical, as often just a few words can make the difference of whether others will infringe the patent. Skillfully written claims mark the difference between a valuable patent that competitors cannot get around from a patent that is easily ‘broken’ as has little value.
Oath or Declaration
The oath or declaration should address the following:
- The application was made or authorized to be made by the person executing the declaration;
- The individual believes himself or herself to be the original inventor or an original joint inventor of a claimed invention in the application, and
- An acknowledgment of penalties clause referring to fine or imprisonment of not more than five years, or both.
For ease of reference, the Patent Office has a template declaration on its website.
As a general note, the nonprovisional patent application may establish priority and serve as the basis for further follow-on applications that you may submit in the future. Such future applications can be submitted during the pendency of this nonprovisional. That means they can be submitted at any point before the patent issues or is abandoned.
Divisional Patent Application
A divisional patent application can follow a nonprovisional patent application. It is used to pursue an independent or distinct invention that is carved out of an application that is already patent pending. This type of application is typically filed after you receive a restriction requirement office action from a patent examiner. That is, if the Patent Office examiner believes there is more than one invention present in a patent application, he or she may issue a restriction – requiring you to choose one. The divisional patent application may be filed later to pursue the invention you didn’t initially choose.
Patent Examiner Involvement
A patent examiner will sometimes evaluate an application and conclude there are multiple inventions within a single patent application. This may be because different versions of the invention are presented. Or, because there are different aspects to an invention that are being pursued in different groups of claims.
If this is the case, the patent examiner will issue a restriction requirement to you as the applicant. Once you receive a restriction, you must file an election to pick one version/group. You can submit a divisional patent application to pursue the non-elected version/group.
A continuation application is a patent application that is filed after your original patent application that has the same specification and drawings as the original, but contains new or different claims than the original. The continuation application maintains a strong claim of priority from the original because of the fact that the invention shown in the drawings and described in the specification have not changed.
A continuation-in-part(CIP) application is used when you make improvements or come up with add-ons to your original invention while it is patent pending. Since many inventors continue to work on their inventions even after a patent application has been filed, a continuation-in-part is a way to seek additional patents for these improvements, while maintaining priority from the original patent application.
If this is you, and you have developed some improvements, use a continuation application. As long as your original invention serves as the base for your improvements, then the continuation-in-part application is your best way to maintain priority for that base established in your original patent application.
Design Patent Application
Design patent applications are distinct from utility patent applications. Design patent applications seek to patent solely the shape or “ornamental appearance” of an invention, or both. This would include any two-dimensional or three-dimensional shapes and other design aspects of the product, device, or item you are looking to patent.
Your idea might have both utility and design aspects that are worthy of protection. If this is the case, may seek both a utility patent and a design patent.
It’s important to keep the different scope of protection of design vs. utility patents as you apply for your patents. Together they can be utilized to protect all aspects of your idea from future infringers.
International Patent Applications
Up to this point we have been talking about patent applications that are submitted to the United States Patent and Trademark Office. Such applications are only suitable for seeking patent protection within the United States. As patents are territorial in nature, U.S. patents do not protect an invention or idea in foreign countries. These patents do not cover any rights you might have internationally for your idea.
With this in mind, it is important to consider where you want/need patent protection. Do you want to protect your rights only in the United States? Or do you want protection on an international stage?
One important factor to consider here is where the best market for your invention will be. Will it be only the United States? Or will it extend to other countries? Do you need to obtain patent protection in non-U.S. countries?
If you want to protect your idea internationally, you will need to get a patent in any country where you would like to get protection. Because it can be very expensive to do so, you’ll want to look into filing an international application first.
A common international patent application to start the international patenting process is the Patent Cooperation Treaty Application (PCT Application). The PCT provides a unified procedure for filing patent applications internationally, and effectively can start the process toward providing you protection in all of the states that are part of the treaty. Eventually, to complete the process you would need to file “national” patent applications in the countries where you want protection. The advantage of the PCT application is that it gives you up to 30 months from your first patent application to file those national patent applications. For many inventors, this buys them valuable time to bring their product to market while they decide whether to invest in those national applications.
Step 4: Patent Prosecution
You have done your prep work, conducted your searches, and submitted your patent application to the Patent Office to patent an idea. What happens next with your application?
Your application will run through multiple individuals who assess its specification and diagrams to determine the particular “art unit” within the Patent Office to send your application. These art units are arranged by technology that correlate with the various classes you encountered when searching the patent databases.
Once your patent application lands in an art unit, it will be assigned to a patent examiner. Unfortunately, once your patent examiner is assigned, it cannot be changed.
As an initial note, office actions are official communications sent to you from the Patent Office as it evaluates your application. Most of these communications come from your patent examiner to notify you of the results and status of their evaluation.
Office actions may communicate legal problems with your patent, from small typos to larger issues with your application. Whatever issues are raised in an office action, each must be responded in order to provide a complete response. Also any objection and rejections must be overcome for your patent application to be approved.
When they start reviewing a patent application, patent examiners will first review your patent application to determine if a single invention is present. If multiple inventions are present, the examiner may issue a restriction. The most common type of restriction is when an examiner contends that the applicant has claimed inventions that are distinct or independent. When issuing a restriction, the examiner is contending that the applicant is seeking a patent for an invention that should actually be split up into multiple, distinct patents.
If this is the case, the patent examiner will ask you to pick which invention you want to patent with the current application. As we discussed above, you can still seek application coverage for the other inventions by filing a divisional patent application.
After determining whether a restriction is required, patent examiners will move on to their substantive examination of your patent application.
Patent examiners conduct thorough searches of prior art to make a reasoned determination of whether or not your invention is distinct enough from other patents. This is why it’s so important that you review and analyze all of the prior art available before you submit your application.
Examiners review all sources of prior art that are available to them, not just patents. This can include industry publications or other scholarly publications.
Examiners also make sure your application satisfies the applicable statutory requirements. This includes ensuring that your application contains a sufficient description of your invention, and that it meets all of the formal rules for patent application content and structure.
First Office Action on the Merits
Once your patent examiner has reviewed all applicable prior art, the examiner will submit to you the First Office Action. This has two functions:
- It informs the applicants which parts of the application are allowable; and
- It identifies all deficiencies in the applications that need to be addressed by the applicant.
If you receive a First Office Action that contains a rejection, don’t panic. A first rejection is normal and can be a necessary part of the process. You can submit a response to the examiner to address any identified defects.
You can also have an interview with your patent examiner to discuss any issues that have been identified. This will be helpful in addressing the examiner’s specific concerns and in making sure your response is adequate.
You are typically given a time period of three months to respond to the First Official Action. You may also be able to obtain extensions through payment of extension fees. Any response filed must address each and every issue identified by your examiner.
You can change or rearrange your specifications, claims, and drawings within your application as part of the response. However, you won’t be able to add any new material that was not included in the original application. This is one reason it’s a good idea to be over-inclusive in your initial application.
The examiner will then review your applicant response and make a couple of potential determinations:
- Notice of Allowance:
- This is issued if the examiner believes the response sufficiently addresses the identified issues, which allows your patent application to proceed forward;
- Final Official Action:
- This is issued if the examiner is not satisfied that your response resolves all the issues within the First Office Action.
A Notice of Allowance essentially approves your patent application. In response, once issuance fees are paid, your patent will be granted. At that point, your idea is no longer patent pending and you can enforce your patent against others.
A Final Office Action, also called a Final Rejection, may be issued when the examiner is able to make the same rejections it made previously for a second time. They can also issue a final rejection when they make new rejections, by the examining claiming that these new rejections were made necessary by the changes you made in your response.
If you receive a Final Office Action, you have a few options:
- You can continue to amend the application and try to convince the examiner to grant the application (with more limited options);
- You can appeal the examiner’s decision;
- You can file an RCE (Request for Continued Examination) along with the government fee to buy at least one additional ‘round’ of argument with the Examiner;
- You can file a continuation or continuation-in-part patent application; or
- You can abandon the application.
Step 5: Appeals and Petition Process
Sometimes it is not possible to convince an examiner that their rejection of your patent application is incorrect. If this happens, you may want to consider filing some type of appeal.
You can file a Notice of Appeal and appeal the examiner’s final determination of patentability. That is – after a final office action is issued. Appeals are heard by the Patent Trial and Appeals Board (PTAB).
This Board is comprised of experienced senior patent examiners and will hear arguments regarding your patent application and consider all applicable documents. The Board will then make a determination about whether or not to reverse the examiners rejections and grant your patent application over the examiner’s decision.
An appeal may be a good option if your examiner substantively disagrees with the novelty, utility, or non obviousness of your invention. The Board is well versed in the legal arguments surrounding these key legal issues and can sometimes make a different determination than that made by the patent examiner.
If you have an issue with something related to the patent application process, you may want to file a petition. Petitions, unlike appeals, are submitted to and determined by the Office of Petitions at the Patent office. In general, petitions address issues within the process. For example, if you want to seek certain exceptions to the patent prosecution process timeline or requirements, petitions are used. Petitions are also used to revive a patent application that were abandoned when the inventor unintentionally fails to respond to an office action or pay a fee on time.
So how do you patent an idea? It is important to complete some diligence up front to make sure your idea meets the requirements for a patent. It’s also important to conduct a thorough search to determine there is no prior art directly on point, i.e., that your idea hasn’t already been patented.
Once you are comfortable that your invention is eligible for a patent, it’s time to start the application process. It can be helpful to have an experienced patent attorney working with you to navigate this process.
Don’t let the complexity of the process keep you from pursuing a patent for your idea. Filing a patent application can be complicated, but when done properly and for the right invention it can greatly help and protect you or your business.