Applying for a Patent

In order to obtain a patent on an invention, you will have to file an application with the United States Patent and Trademark Office (USPTO). The process by which you obtain the patent is known as patent prosecution. Your application will include a specification, a summary of the invention with drawings when appropriate, one or more claims listed at the end of the specification, an inventor’s declaration that he or she was the first to invent the subject matter in the specification, and filing fees. Two aspects of patent prosecution to keep in mind are provisional patent applications and patentability requirements.

The patent prosecution process can be expensive, so it is important to determine whether you are likely to be able to get a patent. Part of this determination is reviewing any prior art and the body of knowledge related to your invention, including any prior similar inventions.

Before filling out a patent application, you will need to conduct a preliminary patent search and probably retain an attorney or agent to conduct a more comprehensive patent search. The patent application itself must be accurate and very well-written, so that you can receive the best possible protection for your invention.

Types of Patent Applications

There are two types of patent applications:  provisional and non-provisional. Provisional applications give United States applicants 12 extra months to put them on equal footing with foreign applicants who file their patent applications in a foreign country first, before filing in the United States. Provisional patents are cheaper than non-provisional patents, allow “patent pending” status, and do not require you to write your claim.

A non-provisional utility patent application is very difficult to fill out without the help of an attorney. If there is more than one inventor, all the inventors must be listed. For a utility patent, the application has to include a written document with a specification including a description and claims, an oath by the inventor, drawings if drawings are necessary, and a filing fee.

What is the Most Important Part of the Application?

The description and claims are a crucial aspect of your application. They must show the patent examiner that your invention has a patentable subject matter and is novel, socially and beneficially useful, nonobvious, and reduced to practice. Your claim will have to show that your invention has value in the real world and that it is more than an idea or starting point for further research. Your claim will either explain the purpose of the invention or show how it can be used. Somebody with ordinary skill in the art from which your patent arises should be able to understand why your claim is useful. You written description should explain the significant of different features of the invention and explain how it relates to the prior art.

Your claims will also need to define the property rights that you want for your patent.  The claims must set limitations that restrict and define the scope of the protection, including the scope of the subject matter. If the invention is a process, the claim limitations will define the steps to be performed for the process. If the invention is a product, such as a machine, manufactured item, or composition, the claim limitations will define physical structures or materials.

Once you have completed the patent application, you will need to submit it to the USPTO and pay a fee. After obtaining an understanding of what the applicant invented, the examiner will conduct a search of the prior art and determine whether the invention as claimed is in compliance with the statutory requirements. It can take up to three years for a patent application to be granted. It is not uncommon for the examiner to ask an applicant to amend the claims, or for an applicant to have to appeal a rejection.

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