Patent Process

Protecting an invention with a patent is an important investment. Free and low cost patent services may jeopardize your invention. The motto "You get what you pay for" is true, especially when protecting a potentially valuable invention. To fully protect your invention, it is important that several important areas are adequately addressed. While an inventor can prepare, file, and prosecute their invention before the USPTO, it is recommended to seek the assistance of a patent professional, such as a registered patent agent or a patent attorney. They can better assist you with the important steps of the patent process. These include:

• Documenting your invention
• Conducting a patent search
• Preparing and filing a patent application in the United States
• International patent application- the Patent Cooperation Treaty (PCT)
• Patent prosecution (Review by the USPTO and responding to Office Actions)
• Allowance and issue
• Maintenance

Documenting your invention

Contrary to common sense, an inventor must disclose everything about their invention to the USPTO. Anything kept secret from the USPTO will not be included in a granted patent. It is thus vitally important to fully disclose all information about your invention, including its background, its features, its improvements, and other aspects.

One good way to do this is the keep an invention notebook. Write all of your ideas in a notebook, making sure to sign and date each page. A good invention notebook has consecutively numbered pages and does not allow the removal or insertion of pages. Be sure to write about each and every modification of your invention that you can think of.

Be sure to include drawings of your invention- a picture is worth a thousand words, and you will eventually need to include drawings of your invention with your patent application. Include brief descriptions referring specifically to your invention.

While it is important to keep the features of your invention secret before filing a patent application, it is a good idea to have a witness, such as a trusted co-worker, a family member, or a close friend, sign and date your invention notebook. The witness should have an understanding of what your invention discloses. Don't show others your inventions. Public display of your invention, before filing a patent application, can later be used against the validity of your invention.

Once you believe you have a new invention, prepare an invention disclosure report. An invention disclosure report summarizes the findings in your invention notebook. Outline each aspect of your invention explaining how to make and use your invention. This invention disclosure report will be used to write a first draft of your patent application.

Conducting a patent search

To obtain a patent, your invention needs to be novel (a new idea). The best way to determine if your invention is novel is to conduct a patent search. A free patent search, of issued patents and published patent applications, can be conducted through the USPTO's website. Additionally, patent professionals, such as registered patent agents and patent attorneys, can conduct wider patent searches through patent databases. These patent searches will include patents from around the world. An average low cost law firm charges $1000-$1500 to perform a patent search.

Filing a patent application

Meet with a patent professional, such as a registered patent agent or patent attorney, to discuss the right type of patent application for you. There are four types of patent applications available in the U.S.- provisional patent application, utility patent application, design patent application, and plant patent application. A patent professional can discuss the pros and cons of the four patent applications, and decide which type is best for you.

A provisional patent application allows the inventor to file a document describing all aspects of their invention. A provisional patent application does not require claims and does not require a strict form, as is required for a utility patent application. The USPTO filing fees are significantly lower for a provisional patent application than other patent applications. A provisional patent application may be preferred when the inventor requires extra time for experimentation, or money to invest in the invention. If you file a provisional patent application, you must file a regular utility patent application within one (1) year to claim the benefit of filing date of the provisional patent application filing date. A solid low cost law firm charges $1500 (plus USPTO $80 filing filing fee for a small entity) for preparation of a basic provisional patent application (which should include review and consultation with a patent attorney.)

A regular patent application, also called a utility patent application, is appropriate when the invention performs a function. The invention must be new, useful and nonobvious. A utility patent application has a required formal format and contains claims which define the extent of your invention. It is recommended to utilize a patent professional when preparing and filing a utility patent application. A decent cost from a low cost law firm is around $3500 (plus USPTO filing fee of $385 for a small entity) for the preparation of a basic utility patent application, including drafting claims. This includes consultation with a patent attorney that will review and file your utility patent application. More complicated inventions will require additional preparation.

A design patent application is used to protect the ornamentation of a device. Choosing a design patent application may be the best way to protect how an item looks. You can get a design patent application prepared by a law firm for around $800 (plus $170 USPTO filing fee for a small entity) for the preparation and filing of a basic design patent application. This fee should include a discussion with a patent attorney who will review and file your patent application- and discuss the aspects of preparing your design patent application.

A plant patent application is for asexually reproducible plants.

Once a patent application has been filed, it is recommended to mark your invention as "patent pending."

International patent application- The Patent Cooperation Treaty (PCT)

There is no such thing as an international patent application. However, it is possible to file a Paris Convention priority application in other countries within 1 year from the filing date in the U.S. Additionally, a patent application can be filed under the Patent Cooperation Treaty (PCT) within 1 year from the filing date in the U.S. Both a Paris Convention priority application and a PCT patent application can claim the benefit of the filing date in the U.S. This is called a "priority date," and if your foreign patent is later granted, the earlier filing date in the U.S. will be used to determine when your exclusive patent rights begin. A Paris Convention priority patent application is filed directly in foreign countries, and is immediately examined by the national patent office. A PCT patent application is delayed for some time in an international examination process. You can later enter into many countries for a lower price. Most law firms charge an hourly rate for preparing a PCT application (plus a variable USPTO filing fee) from a complete utility patent application- the price depends upon the length and complexity of the original application. The cost of filing a PCT patent application from a provisional application will vary depending upon the extent of the provisional patent application.

Patent prosecution (review by the USPTO & responding to patent office actions)

The USPTO rarely grants a patent solely upon the filed patent application. Instead, your patent application will likely be rejected for one or more reasons. These are provided in communication from the USPTO called an Office Action. There are many reasons why a patent application is rejected, such as improper disclosure of the invention, improper figures, or issues with existing patents (called "prior art."). A patent professional has experience responding to a variety of patent office actions, and can often assist you in overcoming USPTO rejections.

It is important to note that any document submitted to the USPTO becomes part of the record for your patent application. The USPTO may use your response against you. Working closely with a patent professional, such as a registered patent agent or a registered patent attorney will often be beneficial. The rates for responding to patent office actions should vary depending on the invention, the rejections raised by the USPTO, and the time allowed before responding to the office action (earlier is less expensive).

Allowance and issue

Once you have satisfactorily overcome all of the objections raised by the USPTO, your patent application is allowed. Upon payment of the proper fees, your patent will be issued. It will be published, and you will receive an official ribbon-sealed copy.

Maintenance

An issued utility or plant patent in the U.S. is valid for 20 years from the earliest filing date, and a design patent is valid for 14 years. Maintenance fees are due to keep the patent valid and in force. Lack of payment of these fees will cause the patent to lapse.

InventionPatent.Net- An intellectual property information resource for patents, trademarks, and copyrights, written and edited by Owen Smigelski, Esq.

As in-house counsel, I cannot provide legal advice or information to individual clients.
I recommend consulting with:
Raymond Wagenknecht
Biotech Beach Law Group PC
Toll Free: 886-875-9562
Tel: 619-238-1179
www.biotechbeachlaw.com