This step-by-step guide describes the legal process of filing 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:
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.
Steps to Conducting a Patent Search
Some inventors choose to undertake the task or researching existing patents and published applications themselves, often with the aid of patent software programs. The PTO has designated several Patent and Trademark Depository Libraries (PTDLs) around the country to receive and house copies of U.S. patents and patent and trademark materials, to make them freely available to the public, and to provide the public with information about patent and trademark information. The PTLD staff are available to help you with training on U.S. patent searches and research, which include the Cassis DVD-ROM system, the PubWEST database, and the USPTO website.
The PTO recommends the following steps to successfully researching patents:
Be aware that the majority of applicants choose to secure the services of a patent attorney or a professional patent search firm. Patent attorneys typically hire professional researchers to do the actual patent search; the turnaround time with lawyers who specialize in handling such searches is usually fast, but they are also expensive because of the mark-up charge that attorneys impose.
How to File for a Patent: The Types of Patent Applications
Bringing the patent process into the 21st Century, the PTO has established an Electronic Filing System letting you file applications over the Web. You can also still file paper forms and mail them to the Commissioner of Patents. But how you choose to file your patent application is only one of many decisions you need to make during the process.
Here are some other decisions you need to make:
Provisional vs. Non-provisional
There are two types of patent applications that inventors may file. A non-provisional application automatically begins the patent review process and may lead to the awarding of a patent. But starting in 1995, inventors were also allowed to apply for a provisional application, which establishes an official filing date for the invention and allows you to use the term "Patent Pending" in connection with your invention, but it doesn't launch the examination process. The provisional application gives you 12 months to file a corresponding non-provisional application, but the benefits include that the patentability would be judged as if the application were filed on the earlier date and the 20-year patent term would be measured from the later non-provisional application filing date, the PTO says.
Utility vs. Design vs. Plant
There are three types of patents -- utility, design, and plant.
Utility Patent Application Transmittal Form (Form PTO/SB/05) or a transmittal letter should be filed with every patent application to instruct the USPTO as to what actual types of papers are being filed (e.g., specification, claims, drawings, declaration, information disclosure statement). It identifies the name of the applicant, the type of application, the title of the invention, the contents of the application, and any accompanying enclosures. (Form PTO/SB/21 is to be used for all correspondence after initial filing.)
Patent Drawings: Professional vs. D-I-Y
Sometimes patent applicants are required to submit drawings of their invention – particularly when the nature of an application requires a drawing to understand the invention. Patent experts advise inventors to secure the services of an experienced patent draftsman when the time comes to make patent drawings. "The requirements for drawings are strictly enforced," warns Levy. "Professional draftsmen will stand behind their work and guarantee revisions if requested by the PTO due to inconsistencies in the drawings…. Because the design patent is granted for the appearance of the article, the drawing in the design patent is more critical than the drawing in a utility patent. The design drawing is the disclosure of the claimed design, whereas the utility drawing is intended to provide only an exemplary illustration of some aspects of the mechanism described in the specification and claims."
How to File for a Patent: Patents and the PTO
On average, it takes the Patent and Trademark Office 24.6 months to process patent applications and issue approved patents. Examinations of patent applications, which are undertaken in the order in which they are received, are arduous exercises, encompassing inspection of legal compliance and comprehensive searches to ensure the invention's legitimacy.
If an application is approved, then the inventor can proceed with his business plan, whether that involved launching a small business or seeking buyers for the invention. Many applications, however, are rejected when they are first submitted. Even applications for genuinely new products or designs sometimes need changes to meet PTO requirements. In instances in which the application is rejected, the inventor has limited options. The inventor can prepare a response to the examiner's stated grounds for rejection, explaining why he or she believes that the examiner erred; this is a viable step, and one which sometimes convinces examiners to reconsider. The inventor can also offer amendments to the application designed to assuage the examiner's objections.
On many occasions, however, the examiner will remain unpersuaded and will reject the inventor's claims, If this happens, the inventor can lodge appeals with the PTO commissioner and, after that, the Board of Patent Appeals and Interferences. If the application is still deemed unacceptable, and the inventor remains determined to pursue the issue, he or she can then turn to the U.S. court system. The Court of Appeals for the Federal Circuit and the U.S. District Court for the District of Columbia have both heard such cases.
How to File for a Patent: Factoring the Costs
Receivers of patents must pay fees to the PTO for services rendered when a patent is reviewed. In 1982 a law was passed that cut some of these fees (patent application, extension of time, revival, appeal, patent issues, statutory disclaimer, maintenance on patents) for "small entities." Small entities were held to include independent inventors, small businesses, and nonprofit organizations. In addition, all utility patents are subject to the payment of maintenance fees that must be paid to keep the patent going. These payments are made at several different points of the patent's life. Inventors need to heed this payment schedule closely, for nonpayment may result in the premature expiration of the patent (a six-month grace period is typically provided during which the fee can be paid, albeit with a surcharge). Inventors who secure the services of a patent attorney generally do not have to worry about this scenario as much, since a competent attorney will notify them of impending maintenance fee payments.
As of April 2009, new updates to PTO fees were put in place. These fees vary widely for different application forms and services. The range for initial patent application fees is between $220 and $330 – but for qualified small entities, those fees are cut in half. A full list of fees is posted on the PTO Web site located at uspto.gov.
The U.S. Patent and Trademark Office (PTO) maintains a website to allow inventors to search registered patents and published applications and to electronically file a patent application at uspto.gov/ebc/.
The PTO also maintains a website with patent information geared specifically for small businesses at uspto.gov/smallbusiness.
National Inventor Fraud Center is located at inventorfraud.com.
Levy, Richard C. The Inventor's Desktop Companion. Visible Ink Press, 1995.
A report that Thomas Field wrote for the U.S. Small Business Administration, Avoiding Patent, Trademark and Copyright Problems, is available on the website of the Franklin Peirce Law Center, where he is now a professor of law.
The U.S. Small Business Administration's sponsored report on small business patents, An Analysis of Small Business Patents by Industry and Firm Size, issued in November 2008, is available at sba.gov/advo/research.