How To Apply for a Patent

U.S. Patent Law gives inventors the exclusive right to make, use, and sell their invention while excluding 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 to expect. 

If you have questions about the patent process, it’s never too early to consult with an experienced patent attorney. Read on to learn more and discover the key questions to ask during your first consultation.

Understanding What a Patent Protects

U.S. Patent Law gives inventors the exclusive right to make, use, and sell their invention while excluding others from making, using, or selling their invention.

“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 the Duane Morris law firm.

“The patent system was created back when the U.S. Constitution was written. The idea behind it was a sort of bargain with the government whereby the inventor discloses to the general public how to make and use their invention so that everyone can benefit and make improvements upon that innovation,” says Boston intellectual property lawyer Rory P. Pheiffer.

“In return, the government grants a ‘limited monopoly’ to the inventor, enabling the inventor to control who is able to use their invention.”

Parties seeking patents include experienced as well as first-time inventors, startup companies, entrepreneurs, and large and small businesses.

“When someone gets a patent, they have the ability to make others get a license or some sort of permission from them in order to practice the invention that they have patented,” says Pheiffer.

“It’s a sort of bargained-for exchange with the government whereby you give the public the benefit of what you have innovated, and in return, you get some control over who gets to use that innovation for a limited period of time – currently 20 years.”

There are different rules governing what is patentable. When the United States Patent and Trademark Office receives your application, it will do its 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 whether it is obvious in light of other inventions.

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 of obtaining a patent on your invention.

A patentable invention must be:

• Useful
• Novel
• Non-obvious

According to the U.S. Patent Office, things like “laws of nature, physical phenomena, and abstract ideas are not patentable subject matter.” Instead, the invention must be something entirely new or an innovation on previous inventions.

“Patents are intended to cover inventions – not quite ideas. It has to be some sort of technological innovation or some novel improvement over what already exists,” says Pheiffer.

Additionally, merely suggesting you have an invention idea is not enough. You must put your ideas into practice through some new machine, process, formula, or material.

The most common type of patent is the utility patent. Utility patents protect an inventor’s rights in new and useful:

• Machines
• Processes
• Methods of manufacture
• Improvements or innovations on existing inventions
• “Compositions of matter,” such as chemical formulas or recipes

Conducting a Thorough Patent Search

In addition to figuring out if your invention qualifies for a patent and what type of patent to file for, there are other things you should do as you prepare to file:

• Do a patent search. The patent examiner who reviews your patent application is going to want to know if any patents already exist that bear on your invention. You must be able to disclose any patents or inventions that you know of. If you do not, your patent application will be denied.
• Keep track of your work. Keep a detailed log of your work on the invention. A record will help bolster your case to the patent examiner that the invention is your original work.

An experienced lawyer can provide expert counsel on these matters and on many other issues that arise in the patent process. There are two types of patent searches that you can have a patent lawyer perform. While anyone can use the Patent Public Search tool on the USPTO website, a lawyer will have greater experience and be better equipped to conduct a thorough search. There are also Patent and Trademark Resource Centers (PTRCs) throughout the country that can assist.

A novelty search is a basic search to determine whether the invention is truly new and not obvious. It’s a generalized search of public records for similar inventions. A freedom-to-operate (FTO) search looks for other issued patents that might overlap with the current invention. This would create legal complications later. This search focuses on pending applications and granted patents in specific countries.

Typically, a novelty search is conducted in the early stages of invention. It establishes whether the idea is worth pursuing. An FTO search is typically done later in the invention process. It establishes potential design and licensing issues. The common analysis is: novelty = “Can I get one?” and FTO = “Can I sell it?”

Provisional vs. Non-Provisional Patent Applications

“There are two approaches you can take” to filing a patent application, says Pheiffer:

1. File a provisional patent application first
2. Go straight to a full patent application

Let’s look at these patent filing options.

Option 1: Provisional Patent Application

A provisional patent application (PPA) “is essentially a way to hold your place in line for the patent,” says Pheiffer. “You disclose to the Patent Office what your invention is, but it doesn’t have to be a full-blown patent application with a detailed description of the invention.”

Once you file a PPA, you enter a “patent pending status” in which “you get a year from the filing date to turn [the PPA] into a full-blown patent application.”

Filing a PPA has several benefits. The more significant benefit is the priority date. The United States is a first-to-file country. By filing early, you secure patent protection that can be crucial later in an intellectual property lawsuit. The filing fees are also lower for PPAs.

Who typically files for a PPA? “More often than not, it’s earlier-stage companies or solo inventors. One main reason is that it’s a cheaper entry point to getting a patent,” Pheiffer explains. “Additionally, the yearlong patent-pending period lets inventors iterate and improve on the invention. More importantly, it lets them figure out what interest there is in the invention and whether it’s worth investing money in filing a full-blown patent application.”

A key question for inventors is whether there is “commercial interest such that it justifies going forward [with the full application]. You can use that year to go around and run the idea by people in the industry and potential licensees and figure out if the invention has legs.”

Option 2: File a Full Patent Application

The other option is to “jump to a full non-provisional patent application,” says Pheiffer. “It’s more often the more experienced inventors who do this – people who have a better sense of whether there will be interest in the invention and more often than not have greater financial backing to jump straight to the non-provisional application.”

Preparing Your Patent Application

It should take about 16 months from the 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 with either another rejection or 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 to your application,” says Hernandez.

If possible, you may want to avoid technology centers with 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.”

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 of being allowed,” says Hernandez. “As such, a patent application should include the implementation details of how to make and use the invention.”

When filing a patent application, it must include a prior art disclosure. Failing to include information about previously filed patent applications can render any granted patent unforeseeable. There is a statutory requirement to give full disclosure.

Patent applications are published 18 months after filing unless the applicant requests otherwise. The specifications, claims, drawings, and prior art are included in the publication.

The Examination Process at the USPTO

Once a patent application is submitted through the electronic filing system, the USPTO will issue a filing receipt confirming the filing date, application number, and assigned examiner. The examiner will do an initial review to ensure the formalities are addressed. They will verify that the forms are completed correctly, that the necessary signatures are present, and that the filing fees are paid. The required drawings should meet the style standards. If anything is missing, a missing parts office action is sent.

Each application is routed to a TC based on technology area:

• Software/business methods
• Mechanical engineering
• Chemical/biotech
• Electrical systems

Applications are assigned to an examiner based on expertise and workload.

The examiner will perform a prior art search. They look for U.S. patents, foreign patents, published applications, and scientific literature. The results help the examiner assess novelty, obviousness, and patent-eligibility. A first office action on the merits will communicate the examiner’s findings. Applicants have three months to respond. The time limit can be extended to six months upon payment of additional fees.

If the examiner believes that the application has outstanding issues after the applicant’s response, they may issue a final office action. It will outline the examiner’s findings and reject the application. Applicants can request continued examination, submit additional amendments, appeal to the Patent Trial and Appeal Board (PTAB), or abandon the application.

Sometimes an examiner interview is required to give better clarity and insight. It could be in person, by phone, or through video conference. They can help address misunderstandings, negotiate acceptable claim language, or narrow the issue.

A notice of allowance is issued when the examiner finds that all requirements have been met. The applicant must pay the issue fee by the deadline. It typically takes several weeks for the patent to issue. The applicant could file continuation applications to pursue broader or additional claims.

Design and Plant Patents

Design patents protect an inventor’s rights in the new ornamentation or external ornamental design of an invention.

Because design patents apply to the external appearance of an invention rather than the underlying function or structure, they are more limited than utility patents. For example, a design patent may not block a competitor from replicating an invention if the competitor can make the invention look different from what the design patent covers.

Another, more niche type of patent is the plant patent. Plant patents are available for inventors who asexually reproduce a new and distinct type of plant.

Responding to Office Actions

An office action is the USPTO’s written communication with applicants. It could include an objection, clarification request, or rejection. Generally, the first office action isn’t a final ruling and can be responded to. There are several common reasons patent applications are rejected in an office action.

• Lack of novelty
• Obviousness
• Indefiniteness or unclear claim language
• Insufficient written description or enablement
• Patent-ineligible subject matter

A patent examiner is the U.S. Patent and Trademark Office official who evaluates the claims in a patent application. It is the examiner’s job to protect the public domain. It is the applicant’s job to establish the validity of their invention.

It’s best to respond to office actions promptly. Directly address the communication. This could include clarifying or amending the patent claims. It could be responding to the examiner’s findings with counter-documentation. The examiner may need additional information and drawings. In certain circumstances, a written response is insufficient, and an examiner interview is required.

If the patent office issues a final office action, the inventor has several options. They may file a Request for Continued Examination (RCE), an appeal, or amendments to the application. They may also elect to abandon the application.

An office action that includes an allowance means the inventor’s application has been approved. They must pay the patent fees, and the invention will be granted and issued a patent number.

Working with a Patent Attorney

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 advice to make your ideas become protectable realities.