An inventor or company who desires to protect their invention may apply for a patent with the United States Patent and Trademark Office (USPTO) and/or a counterpart office in a foreign jurisdiction. There are a number of routes to a patent and your particular approach will depend on a number of factors, such as, but not limited to, whether foreign protection is needed, whether a provisional patent application would be useful, or whether a patent search is required. The illustration below depicts a “typical” approach to the patent process and should not be interpreted as the optimal path for your circumstances. You should discuss your particular needs with a patent attorney.
Invention: In determining whether an invention is suitable for patent protection an inventor must consider whether their invention is patent eligible (meaning the government allows patents for the particular type of invention) and patentable (meaning the invention is novel and non-obvious). Our patent attorneys can perform a patent search to gauge whether an invention is patentable. An inventor can protect their invention with a utility patent, a design patent or a plant patent.
Prepare Disclosure and Drawings: Once an inventor decides to move forward with a patent application, it is important for them to spend time developing the subject matter around their invention. This process includes developing a written description of their invention, which contemplates all of the variations of the invention. In concert with the development of the written description, an inventor should provide drawings and/or pictures of the invention. The inventor should provide as much detail as possible when writing the description and providing drawings as this content will form the basis of the patent application.
File Provisional Patent Application: In many cases, an inventor initiates the patent process by filing what is known as a provisional patent application. Provisional patent applications are particularly useful in cases where financial resources are limited and/or development of the technology is ongoing. The formal requirements for a provisional patent application are relaxed relative to the non-provisional, or “regular,” patent application. As a result, a provisional patent application can generally be prepared for a fraction of the cost of a non-provisional patent application. A provisional patent application is used to establish a priority date for an invention and serves as a one-year placeholder prior to the filing of the non-provisional patent application. Once a provisional patent application is filed an inventor may label their products/services as “patent pending.” An inventor may file multiple provisional patent applications and incorporate them into a single non-provisional patent application.
File Non-Provisional Patent Application: Within a year of filing the first provisional patent application, the inventor must file a non-provisional patent application. The non-provisional patent application will include a formalized written description, drawings and claims. The claims of the non-provisional patent application define the scope of the protection sought by the inventor and are the primary focus of examination by the USPTO.
File Foreign Patent Application(s): Within a year of filing the first provisional patent application, the inventor must also file one or more foreign patent applications if foreign protection is desired. Foreign protection may be sought via the Patent Cooperation Treaty (PCT) or the Paris Convention Treaty (Paris Convention). If foreign protection is desired an application should be filed under one or both of these treaties.
Prosecute Patent Application(s): Once a patent application is filed with the USPTO, the patent application undergoes substantive prosecution. During prosecution, an examiner from the USPTO examines the patent application to determine patent eligibility and patentability. In the case of patentability, the examiner determines whether the claims in the given patent application recite subject matter that is novel and non-obvious by comparing the claims to the universe of available published reference material available to the examiner. In the case where foreign applications have been filed, each country independently examines the respective patent application. As a result, if foreign protection has been sought, it is common for an inventor to prosecute multiple applications across multiple jurisdictions.
Patent Issues: Once a non-provisional patent application has successfully traversed the prosecution process, the patent application will issue as a patent. In the United States, the lifetime of a patent is nominally 20 years from the filing date of the patent application (subject to some adjustment in the case of delay in examination by the USPTO).
If you have any questions about the patent process please feel free to contact our office and speak with one of our attorneys.