How to File for a Patent
This step-by-step guide describes the legal process of filing for a patent.
Now that you've determined that you have an invention that's potentially marketable, you'll want to protect that invention -- and your business -- by filing a patent application with the U.S. Patent and Trademark Office (PTO). The PTO is the domestic government agency responsible for examining patent applications and awarding patents. A patent gives the holder the right, for a certain amount of time, to keep others from profiting off of manufacturing, using, selling, or importing into the United States something similar to what you've invented.
Sounds like a no-brainer, right? Well, the bad news is that filing a patent application is a complex legal process, one that costs money and takes time. That process involves searching patents that have already been awarded, filling out a written application with detailed descriptions and possibly drawings of your invention, and an average of two years of back-and-forth with the patent examiner before your application is awarded -- or denied.
The pages ahead will provide guidance to help you determine whether you need help in filing your patent application, how to conduct a search of already issued patents, and understanding the fee structure.
How to File for a Patent: Deciding to D-I-Y or Get Help
The advent of the Internet has put a variety of government patent resources at every inventor's fingertips. That's the good news. The bad news is that the patent system is still quite complex and you need to understand this before deciding to file a do-it-yourself patent application. Just consider this tidbit: Patents are arranged according to a massive classification system encompassing more than 450 subject classes and 150,000 subject subclasses. The Index to the U.S. Patent Classification System, an alphabetical subject listing of these various classes and subclasses, is produced by the PTO to aid searchers of the system. "The Classifications," writes Richard C. Levy in his Inventor's Desktop Companion, "are to searching a patent what the card catalog is to looking for a library book. It is the only way to discover what exists in the field of prior art [prior patents]. The Classifications are a star to steer by, without which no meaningful patent search can be completed." The Index is fortunately now available online on the PTO's website.
Even given the wealth of online resources now available, most experts still counsel inventors to retain help when filing patent applications and searching the databases of existing patents and published applications. Utility patent applications -- the most common of the three types of patent applications -- are complex documents with myriad requirements, and as Levy indicates, "smart inventors use experienced patent counsel to assure that they obtain the strongest patent protection available on their inventions. There is too much at stake. Smart inventors do not rely on patent-it-yourself books." Design patent applications, however, are far less complicated so many inventors take care of those documents themselves.
The following are some of the categories of professionals who might be able to help you research and file your patent application:
- Patent Attorneys. Before making an arrangement with a patent attorney, savvy inventors take steps to ensure that they have found competent, responsible legal counsel. The first step is to make sure that the lawyer is registered with the PTO. Attorneys listed with the PTO are required to have minimum academic and professional qualifications, and must pass a PTO examination. Inventors should also make certain that their legal counsel is familiar with the field or industry in which the invention would be used. In addition, they should do their best to insure that their attorney has all relevant information needed to make the best possible patent application. Finally, experts counsel inventors to shop around to find the best combination of price and value, and they encourage them to secure written agreements on attorney fees.
- Inventor Associations. Groups such as Invent Now, a non-profit organization affiliated with the National Inventors Hall of Fame, or United Inventors Association, another non-profit, have online resources that can help answer your questions about filing a patent application. Most states, and some cities, also have local inventor associations that may be able to help you with resources.
- University Intellectual Property Departments. Sometimes universities, particularly law schools, have staff that can either help inventors research patent information or be retained to conduct the research for a fee.
- Patent Search Firms. Patent search companies can be found in local yellow pages, but inventors need to be careful in making agreements with such firms. Some are perfectly legitimate, but others prey on unsuspecting inventors, saddling them with service contracts or other bad business arrangements. Given this reality, inventors should ask for references, evidence that the search firm has prior experience in the field in which their inventions are classified, and a signed letter of non-disclosure before agreeing to any arrangement with a search firm.
Dig Deeper: How to Find a Good Patent Lawyer
How to File for a Patent: Conduting a Patent Search
Inventors, lawyers, and patent experts all advise inventors armed with a possible new product or design to undertake a comprehensive patent search before taking any other steps toward filing a patent application. If you don't do the search, the PTO examiner sure will and if the examiner rejects your application based on "prior art" (patents that have already been issues), you'll lose out on the application cost, in addition to the energy and time you put into the process.
