A patent protects an inventor against unauthorized use or commercialization of the patent-protected product or process. After an inventor’s genius idea is realized and turned into an invention, he may apply to a patent office, for instance, the United States Patent and Trademark Office (USPTO), to seek a patent for his unique and practical creation by filing a patent application at the USPTO. However, several steps precede said filing, the first of which is determining which type of intellectual property protection (of which patent is but a type) is best suited for your creation and inventive idea.
Determine if a Patent is Appropriate
Several types of intellectual property protection need to be considered and assessed against acquiring a patent, given the creator’s end goals and commercialization targets, including trademarks, copyrights, industrial designs, and trade secrets. The considerations and assessments that need to be made are based on factors that include the subject matter of the creation or invention; the period of protection sought (limited or unlimited); willingness for public disclosure of the details of the creation or invention; the market (including considerations on geographical, nature of the good/product/process/service, consumer markets, etc.) being targeted; the availability of resources (both monetary and otherwise) that go into registration, prosecution, and subsequent maintenance of a particular intellectual property, such as a patent; possibility and risks of reverse engineering of the disclosed creation or invention; legal and non-legal measures already in place by the creator or inventor such as non-disclosure agreements, etc. It is pertinent that one makes the right choice of the intellectual property that best suits the creation or invention being disclosed along with the requirements to be fulfilled for acquiring any intellectual property to protect one’s creation or invention and the available resources.
Evaluate Patentability
Once the assessment has been made and the chosen intellectual property is a patent, the next step is to evaluate whether your invention fulfils the patentability requirements since not all creative or inventive ideas can be patented. The chosen patent office of the country targeted to get the patent requires the fulfilment of certain patentability requirements per the country’s domestic patent law and practice since patents have a territorial nature and need to be obtained in a particular country where protection is being sought. (a) At the USPTO, the subject matter of an invention must be considered patentable. (b) The invention must have a practical purpose and solve a problem either known or felt in a field of research or practice, in other words, it is a practical solution to a technical problem. It can pertain to any field of technology without any discrimination. (c) The invention should not be a mere discovery of what already exists in nature and must be considered an invention. (d) The invention must not defy the laws of nature or go against what is known to be a fact, should not be abstract, and must protect public order and morality. (e) The invention must be useful and can work based on the disclosure provided in the patent application. A prototype may be good to show that the invention is useful and works, but it is not mandatory. (f) The invention must not be in use anywhere in the world, or be anticipated by anyone, or by any prior publication known to the global public. To this end, it is useful and pertinent to conduct a patent search as well as a non-patent literature search. It is done by searching the internet, scholarly websites publishing non-patent literature, and various patent office-provided and even paid dedicated search engines for previous patents. Such a search is done to check that the invention of your patent application is not anticipated, known in any way, or made obvious, and to assure that no one else has used, thought of, or published that invention first. Such a search will prevent you from wasting your valuable resources and time so you do not try to protect something that cannot be patented. It may be useful in this regard and throughout the patenting process to have proper representation from a registered patent agent or attorney who can hold your hand and guide you throughout the patenting process.
Determine Appropriate Type of Patent Application
Next, it is important to identify the nature of your invention and evaluate whether your invention fits for filing under (i) a utility patent application (when an invention concerns a process, a machine, something that can be manufactured, a composition of matter, or it is an improvement to an existing invention within the afore-described categories, which is considered innovative), (ii) a plant patent application (for plants that are asexually reproduced), (iii) a design patent application (covering the ornamental or aesthetic design of an object or what is applied to it), or (iv) a combination of the above, at the USPTO. The type of application differs among the patent offices globally, and it is important to consider it when you are filing a patent application outside of the USPTO. When filing either a utility or a plant patent application, it should be determined in consultation with your patent attorney or patent agent whether to go for a provisional patent application (filed to secure an early effective filing date or priority date, especially when you are still in the process of shaping your invention and conducting experiments or making working prototypes to demonstrate the working of your invention) or a non-provisional patent application (filed 12 months after the provisional application from which it derives its priority date and must be a complete disclosure at this stage including working examples to demonstrate possession and fulfil the disclosure requirement) at the USPTO.
Prepare Patent Application
Based on your discretion or the advice from your patent attorney or patent agent, you prepare an application for a patent at the USPTO that fulfils the requirements as per practices at the USPTO. For instance, a provisional patent application comprises a title of the invention, a description including a field of invention, a background, and a statement of invention, it may have drawings with a brief description, followed by an abstract, and it is filed with the appropriate filing fee and a cover sheet that provides contact information. A non-provisional patent application is more extensive and in addition to the above information, it may provide a cross-reference to any related applications, a statement of federally sponsored research or development, a reference to a sequence listing, if any, along with its disclosure in the appropriate format as required by the USPTO, a summary of the invention, a brief description of drawings along with drawings, if any, a detailed description, at least one patent claim, and an abstract of the disclosure. Once your application is filed at the USPTO, it will undergo a few rounds of examination and prosecution, as discussed in another post, before being allowed and granted a patent which needs to be maintained as active at the USPTO, as discussed in another post.
Conclusion
Considering the above, it may be useful to make a formative plan of action before applying for a patent, in terms of, who may buy or use this invention, what they may use it for, how much they would buy it for, and accordingly, be willing to pay for it, to get an estimate on the resources required by you and profit to be made, and how much time you may have. To that end, it may be wise to develop an application strategy considering the costs, available resources, and the requirement for professional help from patent attorneys and patent agents who may give you the proper guidance throughout the application process as described above, and beyond during the examination and prosecution of your patent application, its maintenance post-grant, dealing with oppositions and other litigations, and with market entry and longevity, when you think of commercialization, whether by yourself or by licensing or by selling your patent as an intellectual property asset.
