If you are looking to patent your invention, you’ll need to navigate the complicated patent application process. Here are the key tips to consider when applying for a patent application.
Describe How Your Invention Works
A key requirement for obtaining a patent is that you must describe your invention in detail so that someone can understand how the invention works and even be able to make and use your invention. This is called the “written description requirement” in US patent law which states:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
35 USC §112(a)
So, you must describe your invention in enough detail so that another person can make and use your invention just from reading your patent application. Your patent attorney or agent helping you draft the patent application will help you prepare the patent application description. However, they are not mind readers. You need to explain your invention to your patent attorney or agent fully so that they can write exactly how your invention works in the patent application. Start by writing down how your invention works from your point of view, in layman terms. You’ll send this to your patent attorney or agent as a starting point for them to prepare the patent application.
File a Patent Application before any Public Disclosure or Sale
If you show or sell your invention to the public without first filing a patent application, you permanently give up the right to apply for a patent in many countries. The European Patent Organization, which covers most countries within the European Union and also the United Kingdom, has a rule known as “absolute novelty”. This rule says if you show your invention to the public before filing a patent application, you have given up the right to apply for a patent before the European Patent Organization. This is a big pitfall! For example, you create an invention and forget to file a patent application. You put it on Kickstarter to see how well people like it t and whether it takes off. The moment you put it on Kickstarter, you have given up the right to file a patent application before the European Patent Organization due to their rule on absolute novelty. So the key is, file a patent application before you show your invention to the public!
The United States is a bit more forgiving than the European Patent Organization. The US says if you haven’t applied for a patent before you show your invention to the public, you can still file a patent application within 12 months. So, if you have shown your invention to the public without filing a patent application yet, make sure to file a patent application at least in the US within 12 months. You’ll also want to talk to your patent attorney or agent to review the rules in other countries you may want a patent in, to see if those other countries rules still allow you to apply.
Determine Whether to Apply for a Utility Patent, Design Patent, or Both
Utility patent protects how the invention works. Design protects how the invention looks. These two types of patents go hand in hand, meaning you may want one or possibly both. Apple has utility patents to cover how their iPhone works and they also have design patents to cover how their iPhone looks. Apple wants to protect both how their iPhone works and looks. Do you want to stop others from making an invention that works the same way as yours? If so, you need a utility patent. Do you want to stop others from making an invention that looks the same way as yours? If so, you need a design patent. If you want to stop someone from doing both, then you need to apply for both types of patents.
Conduct a Patent Search
A patent search helps you determine the chances of patentability and it can also increase your chances of patentability. First, by seeing what inventions already exist, you can decide whether it is worthwhile to go down the road of pursuing a patent. Applying for a patent takes time and money, it is not a guaranteed process. Before you spend time and money applying, you should determine your chances and decide if it is worthwhile for you to try and apply for a patent. Second, by seeing existing inventions, you have an opportunity to potentially improve your invention and make your invention more novel when compared to the existing inventions. By seeing what other inventions exist, you may be able to add to your invention and maximize its novelty before you apply for a patent application. Once a patent application is filed, you cannot add to it anymore, so you should make all the additions and improvements before you apply for the patent.
Budget Legal Fees
Applying for a patent is a process that will cost money even after the patent application is filed. Many inventors make the mistake of thinking that once you pay for a patent application, you simply wait for a patent to arrive and there will be no more costs down the road. The patent process is a process, with multiple steps in that process, with each step requiring legal fees.
It will cost a few thousand dollars to apply for a non-provisional patent application. Once you apply for a patent, you can expect the Patent Office to come back to you with questions and objections. It is the Patent Office’s job to filter novel inventions that deserve a patent from existing inventions that do not deserve a patent. The Patent Office therefore will almost always give you push back, it is their job. They will show you similar inventions and ask you why you deserve a patent, and you need to respond with your arguments. This is part of the process. Very few patent applications receive approval with no push back from the Patent Office. Each time you need to go back and forth with the Patent Office, expect to pay a thousand dollars or more in legal fees depending on the complexity of your invention and the complexity of what the Patent Office is asking of you. You may need to go back and forth with the Patent Office multiple times. If the patent application is ultimately approved, you have costs in issuing the patent which means to ask the Patent Office to make the patent official. Budget a thousand dollars or more for patent issuance. Finally, you have costs in keeping the patent active through what are called maintenance fees. Expect to pay a thousand dollars or more for each required patent maintenance fee, depending on how old your patent is and your income. Patent maintenance fees are more expensive as your patent gets older and patent maintenance fees are reduced if you are below an income threshold that changes frequently.
Retain a Patent Attorney or Agent
The patent process is complicated in that it has many rules. Failure to follow the rules may result in an improperly filed patent application which is often more difficult or costly to fix than if it was done properly to begin with. Our patent firm frequently receives requests for us to fix patent applications that an inventor with no patent application experience has self-filed. It usually takes us more time to fix the issue than if we had been hired to file the patent application to begin with. Further, we usually cannot just throw away a poorly filed patent application and start a new one from scratch. Patent rules usually require us to fix the poorly filed patent application because filing a new patent application could be rejected by the poorly filed one. The Patent Office generally does not allow re-dos. Due to the complexity of the patent process, it is recommended to work with a patent attorney or agent to make sure the application is filed properly.
