6 Steps to Navigating the Patent Process
If you are developing a new product or have a new invention, you may have already considered filing a patent application with the United States Patent and Trademark Office (“USPTO”). You may have also realized that the patent process is lengthy and, at first glance, may appear confusing for those who are not familiar with it. The patent process starts with understanding what you need to protect and what you need to do to protect it. If patenting your invention is on your radar, here are 6 steps to help you navigate the process.
Step 1: Finalize your invention
To protect an invention, you first have to have an invention. That does not necessarily mean that you need to have a commercialized prototype, but if your invention is nothing more than an idea, you do not have anything to protect. Take the time to understand the implementation of your invention, the invention’s strengths, and how to describe the invention properly. You will need to define the purpose of your invention, what it does, and how it does it.
Step 2: Determine if your invention is patentable
Just because you have not seen anything similar to your invention does not necessarily mean that your invention is patentable. Your invention must be novel (new/unique) and non-obvious (not based on what people already know) to obtain a patent. Section 101 of the Patent Statute (35 U.S.C. § 101) states that “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof” is eligible for patent protection. Although interpreted as “anything under the sun made by man,” it is important to note that abstract ideas, natural phenomena, and laws of nature are not patentable.
When you conduct a novelty search (i.e. patent search), you get a reasonable understanding of what products and prior inventions are already in the public domain. However, novelty searches may have a limited extent because not all pending patent applications are accessible to the public. When you hire a good patent attorney, who has experience with the subject matter of your invention, they will be able to help you understand the unique characteristics of your invention, as well as any elements that may provide challenges to obtaining a patent. Your patent attorney can also walk you through the patent process, step by step, starting with the patent search.
Step 3: Preparing to file
Before you prepare to file your patent application, you must first determine what application is right for you. The two most common types of patent applications are utility patents and design patents.
To protect the useful utility of an invention, a utility patent is the best option. There are two different types of utility applications: provisional and non-provisional. A provisional application is valid for one year and serves as a temporary placeholder that allows you to claim “patent pending” status. At the end of one year, the USPTO requires that you file a non-provisional application or risk losing your patent rights. A non-provisional patent application is much more detailed and must adhere to a strict format that includes a detailed disclosure of the invention and at least one claim. Unlike a provisional application, a non-provisional patent is valid 20 years from the date of filing. To protect the design elements of an invention, a design patent application may be the best option.
For more information regarding you may visit the Patent Application Guidelines on the USPTO website for detailed legal requirements for filing the type of patent application best suited for you.
Step 4: Submitting your initial application
Once you submit your patent application, you are formally entering the USPTO patent process. The patent application requires numerous forms, drawings, and, most importantly, the patent specification. At the time of filing, you must pay the USPTO filing fees. It is crucial to note that if you fail to submit the proper documentation at the time of filing or fail to pay the appropriate fees, the USPTO will not allow your application to proceed until you make the necessary corrections or pay the balance owed. Moreover, you may also be required to pay penalty fees.
Step 5: The Patent Examination Process
The USPTO does not have a set period for reviewing and approving a patent application once submitted. However, there are specific steps the USPTO must follow before the USPTO grants your non-provisional or design patent application.
- File Patent Application
- USPTO Issues Filing Receipt
- Patent Examiner Assigned
- Office Action Issued
- Respond to Office Action
- Patent Granted
- Appeal Patent Examiner’s Decision if Patent is not Granted
Once accepted as complete, the USPTO will assign your application for examination. Your examiner will review the specification and drawings and will conduct a thorough patent search. Suppose the examiner does not think your invention is novel or there is an issue with your claims. In that case, you will have an opportunity to make amendments or argue against the examiner’s objections. This process is called patent prosecution.
Each application is unique, and each step in the examination process has its own challenges. A patent application with carefully drafted claims may run through the patent examination process with ease and may not even receive an office action. Conversely, a patent application in a crowded and competitive field may receive a lengthy office action that may be difficult to overcome. For the best strategies for responding to an office action and defending the scope of your invention, talk with your patent attorney.
Step 6: Maintain your patent
Maintaining your patent is arguably the most important step of the patent process. Maintenance fees are required to maintain a patent in force and are due on the 4th, 8th, and 12th years after the patent’s issue date. If the maintenance fee and any applicable surcharge are not satisfied, the patent will expire, and you will not have the same right you once did.
At IPS Legal Group, P.A., our goal is to make sure that you understand the patent process and do not waste time or money as you navigate through it. Contact us today if you want to learn more about the patent process and how we work hand in hand with our patent clients.
Disclaimer: This blog is not intended to be a substitute for legal advice or instruction. Every legal question calls for a different legal answer, and the above might not be applicable to your situation. Contact IPS Legal Group, P.A. today to discuss your intellectual property needs.