How to Get a Patent
In the United States, a patent is issued by the United States Patent Office. To get a patent, they will need to register your patent and to register your patent, you will need to file an application. However, before we get too far ahead of ourselves, we need to take a few steps back.
To get a patent registration, an application must be submitted to the US patent office which describes the invention. In addition, the invention m
ust be patentable.
HOW TO GET A PATENT – FIRST STEP
So the first step for How to Get a Patent is to Determine if the Invention is Patentable.
To be patentable, the invention must be new, non-obvious, useful and of proper subject matter.
To be new means that the invention cannot be known, used, patented or described before the filing date of the patent application. In addition, the invention cannot be published, sold or public for more than one year prior to the application filing date. In addition to being the first filed application covering the invention (new or novel), the invention must be non-obvious. This means that the invention must be significantly different from other similar inventions which are already known. A patent may be refused if the differences between what is already known and what is invented would be considered obvious. For example, the substitution of one color for another, or changes in size, are ordinarily obvious improvements and not patentable.
In addition to being novel and non-obvious, the invention must be useful and patentable subject matter. Useful means that the invention has a useful purpose. Most inventions are useful. Patentable subject matter is defined by the patent law but generally most inventions are fine, like mechanical, chemical and electronic inventions. Software, business methods and biotech inventions have a little more difficulty but in some cases are still be patentable. An invention that is not a machine, an article of manufacture, a composition or a process (or an improvement on one of these) is generally unpatented. Abstract ideas and natural phenomona are generally not covered.
The United States Patent and Trademark Office (USPTO) strongly recommends that all prospective applicants retain the services of a registered patent attorney or patent agent to prepare and prosecute their applications. The preparation of an application for patent and the conducting of the proceedings in the United States Patent and Trademark Office to obtain the patent is an undertaking requiring the knowledge of patent law and rules and USPTO practice and procedures, as well as knowledge of the scientific or technical matters involved in the particular invention.
HOW TO GET A PATENT – SECOND STEP
The second step is to conduct some form of patent search. Generally, a patent search can help you determine if your invention is new and if it is significantly new to be patentable. See Patent Search. A search of all prior patents and previously published patent applications can be helpful to determine if the patent is patentable. In addition, a patent search may help determine the proper scope for the patent application, prior to filing. While a patent search is not required, it is good practice to do so.
Conducting a thorough patent search may not be easy for a new inventor. Therefore, a registered patent attorney is often helpful in preforming a patentability search. However, after an application is filed, the USPTO will conduct its own search as part of the official examination process and in some cases, some inventors believe this is good enough.
HOW TO GET A PATENT – THIRD STEP
Once you conducted a patent search and feel confident that the invention is new and non-obvious, the next step is to begin preparing a patent application for filing. For a US patent, the patent application must be filed with the US Patent Office. Typically, the application process begins with preparing formal patent drawings. Once the drawings are complete and approved, the application drafting process typically begins.
The patent application is a formal legal document which is typically prepared by a patent attorney. A patent application includes:
- A written description of the invention which teaches others how to make and use the invention;
- The specification shall be written in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains to make and use the same;
- It shall also set forth the best mode of carrying out the invention; and
- It shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as their invention.
- Drawings should be included, where necessary, for an understanding of the subject matter sought to be patented.
A patent attorney is licensed to prepare patents by the United States Patent Office. To get a license, they have to undergo an examination and testing process which only a small percentage of attorneys are qualified to take. Because they are licensed by the US Patent Office, most patent attorneys understand how to write a patent application and what needs to be disclosed. In addition to knowing how to write a patent application, a good patent attorney will also develop a strategy to drafting a strong patent. While the US Patent Office decides on whether to issue a patent, the patent attorney provides a lot of assistance in making this happen.
Generally, there are two types of utility patent applications:
Provisional Patent Application. A non-provisional patent application is sometimes (confusingly) referred to as a “Patent Pending” application. In reality any patent is pending once an application has been filed. A provisional application is not examined by the US Patent Office but merely acts as a place holder for a later filed non-provisional application. A provisional application automatically expires 12 months after filing. The only way to keep it alive is to file a non-provisional application claiming priority to the provisional application. Because the provisional application is never reviewed it can be less formal and less complete. The claimed invention in the later filed non-provisional application is only entitled to the priority benefit of the provisional application filing date if the later claimed invention is adequately described in the provisional application. Provisional applications may not be filed for design inventions. The filing date of a provisional application is the date on which a written description of the invention, any drawings and filing fee are received by the US Patent Office.
Non-Provisional Patent Application. A non-provisional application is a complete Utility Patent and includes a written document which adequately describes the invention, provides a set of claims (which define the scope of the patent), drawings (if required) and an abstract (a type of summary of the invention). In addition, an oath and typically a power of attorney is filed along with the necessary filing fees.
HOW TO GET A PATENT – FOURTH STEP
After you file the patent application, the next step is to respond to the Patent Office questions and objections to the application, if any. The rejections from the Patent Office are typically referred to as an Office Action. Most of the time they are different for every patent application. Some are easy to respond to and some are difficult.
Assuming everything was filed correctly, it may take 3-5 years before the US Patent Office gets around to reviewing the application. Once they review the application, the may reject the application, they may accept the application or they may ask for additional clarification about something in the application. Typically their response is in the form of an Office Action or an Advisory Action. Either way, to keep your application alive you will need to respond.
It’s very rare for the US Patent Office to allow a patent at first. Typically, the patent office will issue a non-final rejection which is a rejection of the patent but will allow the inventor to make changes to the application. This step in the process is typically referred to as the Prosecution Phase. During the Prosecution Phase, typically the patent examiner, on behalf of the US Patent Office, negotiates over the scope of the patent with the inventor’s patent attorney. The Prosecution Phase may take months or years to resolve. Sometimes the inventor gets tired of the negotiations and simply gives up. However, if the inventor want to continue, there are many different strategic choices a patent attorney can make to help persuade the patent examiner to allow the application. Some of these choices include filing amendments, after-final amendments, conducting examiner interviews, filing continuation applications, continuation-in-part applications, new applications or even filing an appeal.
HOW TO GET A PATENT – FIFTH STEP
If an agreement is reached with the patent examiner, then the Patent Office will issue a Notice of Allowance. This means the patent office has allowed the patent. In response, the inventor filed paperwork related to the Allowance and pays an additional governmental fee for the allowance. Additional time may also be added to the term of the patent. While a notice of allowance means that the patent is in condition for allowance, without the fee and the paperwork being filed, the patent will not issue. After receipt of the necessary fee and proper paperwork, the patent will typically issue within a few months.
After the patent has issued, to keep the patent alive the inventor must pay maintenance fees. In addition, some inventors find it beneficial to filing additional patent applications prior to filing the issue fee paperwork. This is helpful if priority to the original application filing date is available and desired. A flow chart of the entire process (in 13 steps) created by the US Patent Office is attached here.