The Process of Applying For a Patent in Illinois

Is my idea even patentable?

By Benjy Schirm, J.D. | Last updated on July 29, 2022

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The world of patents can be confusing to traverse, whether you’re a first-time inventor or someone with a few patents under their belt. If your work has made it all the way to a patent attorney, it can even be difficult to know what you expect. “We ask: how things are done or created, how the invention actually works and how it will actually be implemented,” says patent attorney Joaquin Hernandez of Duane Morris law firm. 

Here’s what to know about the patent application process. 

What Can Be Put Under Patent Protection

There are different rules on what is patentable or not. When the United States Patent and Trademark Office has received your application, they will do their own search and investigation. “They need enough details to determine whether what you have is new or not. They have to decide whether you have something that contains patentable subject matter,” says Hernandez, who notes that the office must determine whether or not your invention is new, and is it obvious in light of other invention.

If any of these thresholds or rules are not met, your patent may be denied. Of course, the more detailed information you provide in your patent application, the better your chances are at obtaining a patent on your invention.

If you don’t know exactly what you should bring to your first attorney visit, bring more than you think. A patent attorney will be happy to sift through what you have. “I interview an inventor to get a working knowledge of their invention and then draft and file the patent application,” Hernandez says of the process.

The Application Process

It should take about 16 months from filing date for a response from the U.S. Patent and Trademark Office. A lot of the time, these office actions include one or more reasons why the patent office believes your invention is not patentable.

After this letter, you’ll move into the prosecution part of the application. Generally, you have three months to file a response, and they will respond back either with another rejection or an approval. “This can go on for a while, and can be appealed if necessary,” says Hernandez. “This is really a discussion between you and the patent office as to what is patentable and what’s not.”

The USPTO files applications under various technology centers (TC). “If it’s software, it will go to one, and mechanical will go to another. Then, each TC has multiple examiners, and often your approval percentage may be determined by who is assigned your application,” says Hernandez.

If you can, you may want to avoid various TC centers that have lower approval rates. You can visit the USPTO’s website for specifics. “If it’s a software patent, we may describe the product differently to avoid a specific TC as opposed to another,” adds Hernandez. “Of course, you want to take your chances with the TC that has the higher allowance rate.”

Challenges in Filing a Patent

Because of changes in patent law over the last several years, obtaining a patent from the patent office has been more of a challenge, depending on what your invention is. “For example, they may reject a software invention as an abstract idea.  Patent applications that are lacking in the implementation details of the invention do not have as great a chance in being allowed,” says Hernandez. “As such, a patent application should include the implementation details of how to make and use the invention.”

Legal assistance is not required to file your patent paperwork, but your chances of successfully navigating the USPTO on your own are statistically low. Find a reputable and experienced patent law attorney who can provide legal help ot make your ideas become protectable realities. If you’d like more general information about this area of the law, see our patent law overview.

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