Patent Primer – The Process

Last month I explained the different types of patents with an emphasis on utility patents. This month I will walk you through the key steps involved in applying for one.

The first step in getting a utility patent is to file a provisional application. The filing fee is small. The subsequent non-provisional application can either be a U.S. patent application or a PCT (Patent Cooperation Treaty) application. A U.S. patent will give protection in the United States only. A PCT application affords an inventor the ability to apply for the patent in foreign countries. The one-year period gives time to search the patent literature to see if the idea has been made public before, and also to find a patent agent. A good agent could also do the search. I personally liked doing the search. It can be done online using the U.S. Patent and Trademark Office database. It has every patent ever issued in the United States. Bear in mind, something that was first patented in a foreign country and had value was also likely patented in the United States because of the size of the U.S. economy. If you have an idea that you think might be patentable and valuable, doing a search can prevent wasted time.

When a non-provisional application is filed, the USPTO will do a thorough search of previously issued patents.

A non-provisional utility patent has:

1. An abstract. This is a short description of the patent.
2. Background. This is a description of the field of the invention before the subject invention came to be and why the subject invention is an advancement. It helps the patent agent argue for granting a patent.
3. Specification. A detailed explanation of the subject invention.
4. Claims. An explanation of what is legally covered by the patent. There are two types of claims: independent claims and dependent claims. An independent claim explains the core principle that is patented. The job of the applicant is to make this claim as broad as possible to cover as many embodiments of the idea as possible. The job of the examiner is to make this claim narrow. Utility patents often contain multiple independent claims to cover different categories of an invention, such as a service or apparatus claim, a method or process claim, a system claim, or a composition claim. Dependent claims describe narrow applications of the independent claims. A patent can have many dependent claims.
5. Drawings. Any drawing sheets.

The USPTO has specifications for content and format for a non-provisional patent application that you must follow. (See uspto.gov)

A patent may be applied for by the inventor, by a patent agent on behalf of the inventor or by a patent lawyer on behalf of the inventor. A patent agent must have passed the USPTO bar exam and have a bachelor’s degree in science, engineering or technology. A patent lawyer must also have a law degree and be a practicing lawyer. In my case, I filed provisional applications myself and then got a patent agent or lawyer to carry the ball the rest of the way. Finding an agent that has background in the field of the invention is important. A primary job of an agent is to help write claims, and so having good language skills and being versed in the legalese of patents is also important. Only a patent lawyer can represent the patent in infringement cases.

When a non-provisional or PCT application is received by the USPTO, an examiner will be assigned to it by the patent office. The job of the examiner is to determine if a patent is justified. The material must be novel, advance the art, and not have been made public previous to the priority date. The job of the inventor or his representative is to convince the examiner to grant a patent. It is a back and forth negotiation that will usually last about three years.

If a patent is granted, a fee must be paid to the patent office in each country where a patent is sought. After that, periodic annuities must be paid to each granting authority to keep the patent in force. A patent agent will keep track of all this stuff.

If a patent has great value, a third party may challenge the validity of the patent in court, claiming that the patent should not have been issued in the first place. Only a patent lawyer can litigate such a case on behalf of the patent holder.

Is owning a patent worth all this work? It is for me. Coming up with some world beating technology is what still gets this old boy out of bed in the morning.