How to File a Patent

You don't have to be Thomas Edison to come up with a valuable invention. But you do have to be savvy enough to protect that invention if you want to make the money you deserve from it. In other words, you need a patent, which is essentially a right granted by a government to sue anyone else (an infringer) who tries to make money from your idea. In the United States, only the inventor of the idea can patent it (though the inventor can transfer those rights to another individual or company).

Filing a U.S. patent application is a fairly complicated ordeal, however, and it can be rejected, which is why most experts recommend inventors hire an attorney to help them draft and file the patent application. As an inventor, you'll want to act fast in order to secure your rights -- in case someone later claims they came up with the idea first. Consider keeping an inventor's notebook and filing a provisional patent application to show you acted diligently in pursuing a patent.

Before you file, use the search function at the U.S. Patent and Trademark Office (USPTO) Web site to see if your idea has already been patented. Next, determine what kind of patent it is so that you file the right application.

The USPTO recognizes three kinds of patents. Utility patents, the most common type, refer to inventions that have a particular function. This is in contrast to design patents, which cover non-functional parts of articles, like the unique, ornamental shape or surface of an item. Lastly, a plant patent protects inventions of asexually reproducible plants. Don't confuse a patent with a trademark, a copyright or a trade secret, which are all different matters, and each is governed by its own laws.

You can file a patent application electronically through the USPTO Web site, by mail, or by fax (but not by e-mail). Don't expect a speedy process, though. Depending on the kind of application and the technology involved in your invention, it could take one to three years to get your patent granted.

A patent could also be rejected for many reasons, like failing the novelty and unobviousness requirements. Novelty means it's different from the prior art (previous patents or something known to the public). Unobviousness means that the invention is different enough from prior art that someone skilled in the area of technology wouldn't consider your idea obvious.

So, what do you need to file a patent? Keep reading to find out.

What is needed to file for a patent?

And you thought developing your new invention was hard work. The patent process can get overwhelming, especially considering all the different elements that go into an application. A formal (non-provisional) application has a few required sections. In addition to drawings of the invention, you'll include the specification, which essentially teaches someone how to make or use the invention. The specification contains the following:

Abstract: a short, at-a-glance summary of the rest of the specification
Background: describes the need for your invention and problems that your invention solves
Summary: a short explanation of the invention
Detailed description: includes a description of the ideal embodiment, as well as additional embodiments of the invention and how they work
Conclusion, ramification and scope: briefly states the advantages of the invention and the additional embodiments again, as well as how the legal scope shouldn't be limited to forms shown

The specification should also include such things as the title of the invention, cross references to related applications, and a list of the figures in the drawings.

Most importantly, your application will include claims, which are listed after the specification. Claims actually define the legal scope of your patent and describe the boundaries of your invention (should the patent be granted). In addition to independent claims, which stand alone, you can also list dependent claims, which are narrower and incorporate a previous claim [source: Pressman]. Try to be broad at first, so that you can cover the most legal ground for your invention. But you'll probably have to narrow your claims later if the examiner considers them too vague.

You should include several other things along with your application, such as payment of filing fees, a self-addressed receipt postcard, a Patent Application Declaration (PAD) form and an Information Disclosure Statement (IDS). The PAD states that you are the true inventor; in the IDS, you disclose anything else that you're aware of that's relevant to your application (such as another application that's similar to yours).

Unfortunately, the process is far from over when you file your patent, which is another reason to get professional help. An attorney will help you navigate the prosecution process as you fight to get your patent granted by the USPTO.

To Publish or Not to Publish

Your application will be published within 18 months of filing unless you file a Non-Publication Request form with the application, which delays publication until the patent is granted. This may be a good idea if you don't like the idea of competition seeing your invention before it's officially patented. However, if your application is published and a patent is later granted, you can sue someone for infringing on your patent since the date of publication.

The U.S. Patent and Trademark Office

Governments give out time-limited patents to help encourage inventors to continue driving innovation and the advancement of science. Without such protection, the threat of someone stealing an idea could discourage inventors from creating new things. The founding fathers of the United States knew this when they gave Congress power to grant patents in the Constitution (Article 1, Section 8).

Due to advancing technology and growing awareness of the value of patents, the past decade or so has seen an explosion in the number of patent applications. In 2008, the USPTO took in 485,312 patent applications and granted 185,224 patents [source: USPTO].

You'll work with one patent examiner throughout the process. Examiners of utility patents must have an engineering or scientific background.

It's very rare for an examiner to grant an allowance to a patent on the first try. More than likely, the examiner will give you a non-final rejection which allows you to amend your claims (make them narrower), respond (argue) or both. Next, the examiner might give you a final rejection. However, you can still send in an after-final amendment or argument. You can also file a continuation application, which means starting over with new claims, resubmitting the specification and other paperwork, and getting a new serial number and filing date (while still keeping the priority of the earlier filing date). Or, if you file a Request for Continuing Examination (RCE), you can send in another amendment without resubmitting the specification or getting a new filing date. Another option is to appeal to the Board of Appeals and Patent Interferences (BAPI).

Of course, for this process to be worth it, you need to be convinced your invention is valuable. While prosecution is going on, and regardless of if you're granted a patent, you can still make money off your invention or even license it to someone else. The licensing agreement applies whether or not you're granted a patent.

As you can probably guess, the drafting and prosecution of an application can get extremely complicated. An attorney who specializes in the process can help you navigate the system. However, the more the inventor knows about the process, the better, so you can work together to gain the most legal ground.

Lots More Information

Sources

Charmasson, Henri. "Patents, Copyrights & Trademarks for Dummies." Wiley Publishing, Inc., 2004.
Pressman, David. "Patent It Yourself." Nolo, 2009. 14th Ed.
U.S. Patent and Trademark Office. Personal Correspondence. Jan. 21, 2011.
U.S. Patent and Trademark Office. "U.S. Patent Statistics Chart, Calendar Years 1963-2009." Last updated April 20, 2010. (Jan. 25, 2011)http://www.uspto.gov/web/offices/ac/ido/oeip/taf/us_stat.htm