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
Most inventors are hesitant to describe in detail how their
invention works- this might cause you to lose your patent
rights. However, when filing a patent application, you must
describe each feature in detail. Your patent will only cover
what you disclose. So, contrary to common sense, an inventor
must disclose everything about their invention to the USPTO.
Patent applications are kept confidential until 18 months
from the earliest filing date. Anything not disclosed in your
patent application 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. Do not 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.
The USPTO offers a Discloure Document Program or (DDP) under
which it will accept invention disclosures and holds them
for two years. Inventors can use this service to prove the
date of conception and reduction to practice, and inventorship
of their invention. The USPTO charges a small fee ($10) for
filing the DDP. Because of the fee, the PTO paperwork involved,
and the fact that DDPs are not admissible in trial (witness
testimony
is) it
is
generally
not recommend to file one. Another disadvantage of a DDP
is that it starts a 2 year clock for filing
your patent application. After this period the DDP is destroyed.
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.
Filing a patent application
Meet with a patent professional, such as a 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 utility 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 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.
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)
A United States patents will only allow you to exclude
others in the United States from making, using selling and
offering to sell your invention. If you want exclusive protection
in countries and regions outside the United States you can
claim priority back to your originally filed United States
patent. For example, 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. The priority date
can help exclude prior art that was published after filing
your U.S. application and before filing your international
patent application. 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.")
Our patent law firm has experience responding to a variety
of patent office actions for diverse technologies, 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 patent attorney with
our law firm, 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 (filing a response 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.
Please visit our patent resources page to view a list of useful websites: Patent
Information
