Step 1: Initiating the Patent Application
1a. Understanding the Patent Process
Before diving into the patent application, it’s crucial to grasp the potential risks and rewards involved. Ask yourself essential questions such as the cost, timeline, and pros and cons of acquiring a patent. Familiarize yourself with the core concepts by reading the insightful book “Navigating the Patent Process” or check out my article “What Every Inventor Should Know Before Starting the Patent Process.”
1b. Choosing the Right Type of Patent
Ensure you select the correct type of patent for your invention to avoid future disappointment. The three main categories of patents under US patent laws are:
- Utility Patents: These protect the functional aspects of an invention, focusing on how it improves or enhances existing products or processes.
- Design Patents: Design patents safeguard the ornamental features of a product, especially its unique visual appeal.
- Plant Patents: If you’ve created a novel plant variety, seek advice from a specialized patent attorney who focuses on plant patents.
Remember, don’t base your decision solely on cost. Although design patents are generally cheaper, they serve different purposes compared to utility patents. Opt for the one that best aligns with your invention’s unique selling points.
1c. Conducting a Novelty Search
It’s wise to conduct a novelty search to determine if your idea already exists. Start by performing a preliminary search yourself on www.freepatentsonline.com, following the USPTO’s Seven Step Search Strategy. This initial search can save you money before considering professional assistance. Keep in mind that while the novelty search provides valuable insights, it doesn’t guarantee a successful patent application. It merely indicates the likelihood of obtaining a patent.
1d. Seeking Professional Help for the Novelty Search
If you didn’t find any relevant prior art through your preliminary search, you may want to retain a patent attorney. They can conduct a more thorough novelty search to ensure no crucial references were overlooked. However, remember that it’s crucial to correctly identify the point of novelty to make the search effective.
1e. Preparing the Patent Application
The patent application consists of various elements, including forms, fees, and a written description with drawings. You can find the necessary USPTO forms at www.uspto.gov. Depending on whether you’re filing a provisional or nonprovisional patent application, these forms differ slightly. The written description is divided into sections, such as the title, related applications, background of the invention, brief summary, detailed description, claims, and abstract. For detailed guidance on each section, refer to Chapter 600 of the Manual of Patent Examining Procedure.
Remember, the purpose of the specification and drawings is to teach others how to make and utilize your invention. The patent system is built on sharing knowledge in exchange for exclusive rights. You can choose to prepare the application yourself or hire a patent attorney. To obtain a valuable patent, I highly recommend seeking professional assistance. Regardless, understanding the process and its various options will help you make an informed decision.
Step 2: Examination of the Patent Application
2a. Timing of Examination
After filing your patent application with the USPTO, the examination process can take anywhere from 4 to 6 months up to 3 to 5 years. By default, nonprovisional patent applications are reviewed on a first-come, first-served basis, accounting for the Patent Office’s current backlog. However, you can expedite the process by filing a request for expedited examination, also known as a Track 1 request, when submitting your application.
2b. Office Actions
The Office of Initial Patent Examination will initially review your application for formalities. If any formalities need correction, you’ll be required to address them before the substantive examination commences. Following this, the examiner will evaluate your application based on its merits and may issue an office action explaining reasons for possible rejection. If your application is rejected, you can file a response to persuade the examiner of your invention’s merits.
Keep in mind that you usually have around 3 months to respond to office actions without incurring additional charges. However, if needed, you can file a response within 3 months after the initial deadline, subject to higher surcharges.
2c. Duty to Disclose
As the pendency of your application progresses, it is your responsibility to disclose any information that could affect your patent’s likelihood of approval. While you are not obliged to search for such information, you must share anything relevant that you already know. In case you conducted a novelty search and obtained results, make sure to disclose them. Otherwise, there’s no need to actively search for additional information.
2d. Substantive Examination
During the substantive examination, the examiner assesses whether your patent application meets the statutory requirements. These include:
- Patent Eligible Subject Matter: The invention must fall into a category eligible for patent protection, excluding natural phenomena, abstract ideas, or laws of nature.
- Novelty: Your invention must be new and not previously disclosed to the public. Existing prior art renders the grant of a patent unnecessary.
- Nonobviousness: The invention must offer a nonobvious improvement over existing technology. Obvious variations do not qualify for patent protection.
- Written Description and Enablement: To be granted a patent, you must provide a detailed description enabling others to make and use your invention. The patent serves as a teaching document for technology transfer to the public.
If your claimed invention satisfies these requirements, the examiner will grant you a patent.
Step 3: Responding to Rejections and Objections
It’s common for the first office action to involve rejecting your patent application. Don’t be disheartened by this initial rejection; it’s merely the examiner’s opinion. Responding to the office action gives you an opportunity to demonstrate why your invention meets the statutory requirements outlined earlier.
When responding, focus on the merit of the rejection rather than feeling discouraged. Evaluate whether the cited art and the examiner’s reasoning align with your invention. Consider requesting a telephonic interview, which can expedite the process, reduce costs, and provide a better opportunity for effective communication.
Step 4: Patent Grant and Maintenance
Once your patent application is deemed allowable, you must pay an issue fee. Approximately four weeks after payment, your patent grant should be published. For utility patents, you’ll need to pay maintenance fees at 3.5, 7.5, and 11.5 years after the patent’s issuance to maintain your exclusive rights.
Remember, achieving a patent involves persistence and understanding the patent process. While not every patent application succeeds, around 50% are granted. Stay optimistic, acknowledge the examiner’s feedback, and make well-informed decisions throughout this journey.
For more information on patent processes and the benefits of professional support, read my article “Patent Attorneys, Agents, and the USPTO Can Help With the Patent Process.”
Now that you’re equipped with the basics, it’s time to take the next step towards protecting your valuable invention. For detailed guidance and support, visit Garrity Traina, where we specialize in patent law.