A Beginner's Guide to Filing for Patent Protection

It's time to start thinking of resolutions for the new year. Perhaps you've made the decision to turn that million-dollar idea into a business. Now, how to protect it?

Filing a patent can be a complex but rewarding process, granting inventors exclusive rights to their innovations. This guide aims to simplify the patent filing journey, breaking down the steps involved and offering valuable insights for aspiring patent holders.

1. Understanding the Basics of Patents

Think of a patent like a fence. It can keep others out while at the same time marking the boundaries of your property so that the public is well aware of where they can and cannot go. Patents provide for disclosure of important information so that society can advance as a whole. At the same time, patents incentivize said disclosure so that the inventor can be properly compensated for the hard work expended in coming up with the idea.

In the United States, there are three types of patents: utility, design, and plant patents.

• Utility patents cover functional aspects of an invention and protect new and useful processes, machines, manufactured articles, compositions of matter, or improvements thereof. Utility patents are enforceable for a period of 20 years from the date of filing.

• Design patents protect the ornamental or aesthetic appearance of a functional item. They cover the unique visual characteristics, configurations, or surface ornamentation of a product. Design patents are enforceable for a period of 14 years from the date of filing.

• Plant patents protect new and distinct asexually reproduced plant varieties, such as newly cultivated hybrid plants, mutants, or genetically modified plants that can be reproduced by means other than seeds. These are extremely rare and have a 20-year protection period.

Not just anything is patent-eligible. Utility patents must be novel (i.e. nothing in the past with every single part), useful (an easy hurdle), and non-obvious (i.e. nothing in the past where multiple disclosures in the same area disclose everything you disclose). There are many nuances to these determinations that a patent attorney can help you figure out.

Design patents must be novel (similar to utility patents), original to the creator, primarily ornamental in nature (i.e. lacking in functionality), non-obvious (again, similar to utility patents), repeatable, and inseparable from the object (like a painting on a lamp base, which is copyrightable).

Plant patents must be novel and distinctive (aka non-obvious), capable of asexual reproduction, and either invented or discovered by a human being. Again, plant patents are exceedingly rare. For as long as plant patents have been around (1930), only 34,350 plant patents have been issued. In comparison, over 11.8 million utility patents have been granted since the founding of the United States.

Fun side story: U.S. Patent No. 1 was granted on July 31, 1790 and was signed by George Washington. It was directed to a method of making an ingredient for fertilizer.

So, how do you determine whether your invention has gotten over these hurdles? That takes us to step two.

2. Conducting a Patent Search

Performing a patent search is a crucial step for anyone considering applying for a patent. Several reasons underscore the importance of conducting a thorough patent search before filing a patent application:

1. Assessing Novelty and Patentability - A patent search helps determine whether your invention is novel and non-obvious, which are fundamental requirements for patentability. By examining existing patents and published applications, you can identify prior art (existing inventions) that might affect the novelty of your invention. This process helps you gauge the likelihood of successfully obtaining a patent for your innovation.

2. Avoiding Duplication and Wasting Resources - Conducting a patent search can prevent unnecessary efforts and expenses. If a similar invention already exists or has been patented, pursuing a patent for the same or similar idea could result in rejection or wasted resources. Identifying existing patents allows you to assess the differences between your invention and prior art, potentially guiding modifications to enhance its uniqueness.

3. Strengthening Patent Claims - A thorough patent search can assist in crafting stronger and more detailed patent claims. By understanding existing patents in your field, you can better define the specific features and elements of your invention that differentiate it from prior inventions. This precision in defining claims can increase the chances of a successful patent application.

4. Reducing Legal Risks and Potential Litigation - Failing to conduct a patent search could lead to unintentional infringement of existing patents. If you proceed with an invention without knowledge of similar patented technologies, you may face legal challenges and infringement claims from patent holders, resulting in costly litigation or the need to cease production and sales.

5. Guiding Business Strategies - A patent search offers valuable insights into the competitive landscape and market trends. Understanding existing patents related to your invention can help shape business strategies, such as identifying potential licensing opportunities, assessing market demand, or adjusting product development plans based on existing technologies.

6. Preparing a Stronger Patent Application - Insights gained from a patent search can assist in preparing a more robust and comprehensive patent application. By acknowledging prior art, you can address potential challenges preemptively, presenting a more compelling case for the uniqueness and inventiveness of your invention to patent examiners.

In essence, a patent search is a proactive measure that helps inventors make informed decisions about the patentability and commercial viability of their inventions. While conducting a patent search can be time-consuming, its benefits in guiding patent strategy and potentially avoiding legal conflicts far outweigh the costs and effort involved. Consulting a patent attorney or professional during this process can further enhance its effectiveness and accuracy.

3. Preparing Your Patent Application

You've finished up the patent search and decided to file an application. What are the various components that are required?

• Title - A short descriptive phrase describing the invention;

• Abstract - A paragraph limited to 150 words consisting of a summary of the disclosure;

• Drawings - Varying views that are described in the detailed description, sometimes unnecessary depending on the invention;

• Detailed Description - A write-up of the various components or features or steps required for the invention to function and how they each interact with one another; and

• Claims - The most important aspect of a utility patent, sets the metes and bounds of what is protectable and what is examined by the USPTO.

The two most important parts of a patent application are the detailed description and the claims. A good detailed description allows for future arguments about patentability and infringement. A bad detailed description can scuttle an application outright. Similarly, poorly worded claims will result in a patent application being rejected or make a finding of infringement difficult or impossible. These are additional reasons as to why hiring a patent attorney is important.

4. Filing the Patent Application

When first filing your application, you will have two options: provisional or non-provisional. A provisional application will not be examined but will grant you a one-year period in which to begin marketing and developing your product. This is important because any public disclosure of your invention can invalidate it prior to filing (which is a blog post unto itself). After the one year is up, you will have to make the decision whether to convert the application into a non-provisional utility application which will then be examined by a patent examiner at the United States Patent and Trademark Office.

A separate consideration is where else you might be seeking protection. If, during the year after you file a provisional or within a year of filing a utility (if you forego a provisional), your product seems like it will strike it big with an international audience then filing a Patent Cooperation Treaty (PCT) application will allow you to file in other countries while maintaining your original priority. PCT applications are very complex and deserving of their own post. It is strongly recommended you consult with a registered patent attorney before filing one.

5. Prosecuting the Patent Application

Getting a patent takes a long time. From the time of filing a utility application to when you first hear back from an examiner with the USPTO could be as short as a year and as long as 2.5-3 three years, depending on the art unit. Even then, the examiner may come back with a "non-final rejection" citing to other patents or printed publications or may provide a different reason why your application is not sufficient. These reasons may be:

• Anticipation - also called a 102 rejection, this is a situation where a single reference contains every element of a claim

• Obviousness - also called a 103 rejection, this is a situation where no single reference contains every element of a claim but multiple references in the same field do such that one of "ordinary skill in the art" would combine them to reach all elements of a claim

• Subject Matter - also called a 101 rejection, this is a situation where the claims refer to subject matter that is either outside the bounds of patent law or what has been judicially determined to be unpatentable (e.g. business methods, mathematical formulas, naturally occurring matter)

• Indefiniteness - less common but essentially occurs when portions of a claim are unclear and are generally easily overcome

• Double Patenting - this occurs when your claims overlap with another patent you own and is statutory when all elements match or obvious when the claim elements contain minor distinctions, easily overcome by a terminal disclaimer (a statement you file that says that the term of the application, if granted, will end at the same time as the referenced patent)

Upon issuance of a non-final rejection, you will have three months to respond with the ability to pay for an additional three months (one month at a time) if needed. A registered patent attorney is suggested to respond to one of these rejections.

If the arguments made in a response are not persuasive enough, the examiner may then issue a "final rejection" with the same response time as a non-final rejection. You have four options after getting a final rejection:

• Responding in such a way so as to make the claims in condition for allowance (generally when there are minor indefiniteness issues)

• Appealing to the Patent Trial and Appeal Board

• Filing a Request for Continued Examination which allows for additional substantive amendments and arguments

• Abandoning the application entirely

Assuming you have navigated all rejections, the USPTO will then issue a Notice of Allowance at which point another choice will need to be made: pay the fee and get your patent issued or file a "related" application first. These are called continuation or continuation-in-part applications depending on how the application is handled. Trust your patent attorney to get the naming right.

Filing a related application is generally suggested because it allows for you to see how the market responds to your product and patent thereby preventing workarounds. Filing a related patent can only be done before the patent issues and is important to maintain the chain of priority. Otherwise, your own patent can be used against you as prior art!

6. Maintaining and Enforcing Your Patent

After issuance, you will be required to pay maintenance fees in order to keep your patent in force. These maintenance fees come due at 3.5, 7.5, and 11.5 years after grant. The amount due varies based on the type of patent holder (such as individual, small entity, or large entity). Small entities, which include independent inventors, small businesses, and nonprofit organizations, typically receive a reduced fee compared to large entities.

If the maintenance fees are not paid by their respective due dates, the patent will expire, and the invention will enter the public domain, allowing others to use, make, or sell the patented invention without the patent holder's permission.

It's essential for patent holders to keep track of these deadlines and make the necessary payments to maintain their patents and preserve their exclusive rights to the invention. The USPTO typically sends reminders regarding upcoming maintenance fees, but the responsibility ultimately lies with the patent holder to ensure timely payments.

Additionally, there is a grace period for paying the maintenance fees with a surcharge within six months following the due date. However, after that grace period, if the fees remain unpaid, the patent will expire.

It's advisable for patent holders to stay organized, maintain accurate records, and mark the calendar for these maintenance fee deadlines to protect their intellectual property rights.

In addition, patent holders need to keep an eye out for infringers. Success breeds copycats. If you spot an infringer, please consult with a registered patent attorney so that they can do a proper analysis and provide you with all of your options related to potential litigation.

7. Conclusion

Filing a patent is a crucial step for inventors looking to protect their innovations. While the process may seem daunting, this guide aims to simplify it, empowering readers with the knowledge and steps necessary to navigate the patent filing journey successfully.

Disclaimer: It's important to note that this guide serves as an informational resource and does not constitute legal advice. Consultation with a qualified patent attorney or professional is recommended for specific legal guidance related to patent filing.