Patent Process — Donald J. Ersler, S.C.
Patent Process
The patent process is challenging, but answers to questions listed below will provide the inventor with the needed guidance.
- What is a patent?
- Who needs a patent?
- Do I need an attorney?
- How much does this all cost?
- Steps to obtaining a patent
- Your Duties When Filing a Patent
- Patent Search Engines
What is a patent?
It generally includes a "specification" containing a description of the invention, a set of drawings which illustrates the invention, and one or more "claims" which define the legal rights of the inventor.
Who needs a patent?
Anyone who has an invention that is worthwhile to sell and is likely to be copied by a competitor can benefit from a patent. The patent gives the holder a legal monopoly to make, use, and sell the invention for a period of about 17 years. Of course, the sales of the invention should be enough to justify the expense of the patent process.
Do I need an attorney?
Unfortunately, you do. Even with such books on the market as "Patent It Yourself," it is nearly impossible for even the brightest individual to write a patent. It takes a vast amount of knowledge of the patent process and skill at writing patent applications to be effective. To demonstrate the difficulty of writing a patent, consider that the Patent Office requires all attorneys and agents who do business with it to take a very difficult exam. Many people who have studied hard take the exam two and three times before they can pass it.
How much does this all cost?
The cost of the entire process of obtaining a patent for a simple invention including fees payable to the Patent Office and to the attorney will be at least $7,000, assuming that your patent is allowed on a first examination. If the claims are not accepted on the first examination, the cost will increase. The complexity of the invention will increase the cost of writing the patent. Maintenance fees are also required after 3.5 years. Details about fees are found in Patent cost.
What are the steps in obtaining a patent?
The first step in obtaining patent protection is the patent search. The patent search is performed to determine if there are any prior art patents or published patent applications that anticipate your invention. This is an important step because you may waste a lot of money if your invention already exists in someone else's patent or patent application. You may perform a search yourself on the internet using Google Patents or Free Patents Online. If you feel that someone with more experience should do the patent search, you can have a patent attorney do the patent search.
After a search has been performed, the attorney will review the prior art patents or published patent applications in light of your invention to see if your invention merits the filing of a patent application. Existing devices and articles, which are not patented are also relevant for determining the merit of filing a patent application.
The second step is writing and filing a patent application on behalf of your invention. You must also pay a filing fee to the Patent Office. After the patent application has been received by the Patent Office, an examiner will be assigned to review the application. The examiner will perform their own patent search, and then review the invention in light of the patents, published patent applications and non-patent literature found during the search. The examiner will issue the results of his review in an "office action," 6–36 months after filing. The inventor may also obtain expedited or accelerated examination by filing a request to expedite examination with a fee, or a petition for age if the inventor is 65 years of age or older without a fee.
The office action will include a decision on the validity of the claims. The claims will be accepted, objected to, or rejected. If all the claims are accepted (this happens in about 1 in 10 applications) then the patent will be ready for issue. If even one claim is rejected or objected to then the attorney must file an amendment with the Patent Office. The amendment will usually include revision of the claims and sometimes an argument defending the breadth of the claims as stated.
When the examiner receives the amendment (this can be 2–6 months after mailing), he will review the revised claims and arguments. If he agrees, he will issue a "notice of allowance"; if not, he will issue a second office action. At this point you may consider letting the attorney change the claims to circumvent the examiner's grounds for rejection. If the examiner continues to reject all claims on the basis of obviousness, or if you think the examiner's interpretation of the claims is too narrow, then the attorney will file an appeal. The appeal is brought before three "examiners-in-chief" who will read briefs and render a decision on allowability of the claims. There is a real chance to get an allowance on appeal; the examiners-in-chief do not "rubber-stamp" the examiners' grounds for rejection.
Filing of a Patent Application Creates Duties on Your Part
All relevant prior art must be disclosed to the Patent Office.
The Patent Office needs to know if you have any information which may be relevant to the examination of your patent application. This can include newspaper or magazine articles you have read, patents or other publications you may be aware of, and so on. This information can also include descriptions of products you've seen on the market. Disclosing relevant information is your duty; failure to do so could result in fraud charges against you. You must inform the attorney of all prior art that you have knowledge of before he files an "Information Disclosure Statement."
Filing must occur within 1 year of offer for sale or publication.
Under the patent laws, you are barred from obtaining a patent if you have offered your invention for sale, or if you published, or publicly disclosed the invention more than one year before the date of filing. You are also barred if you are not the actual inventor.
You must disclose the best mode for executing the invention.
The Patent Office requires you to disclose the invention with the best structural and functional disclosure that you can think of at the time the application is filed. This includes both the drawings and the written description. The disclosure must allow a person of ordinary skill in the art to make a copy of the invention without undue experimentation.
You must "foreign-file" within one year of the U.S. filing date.
Many foreign countries have a rule that the invention must never have been publicly described or sold before filing there. However, under the Patent Cooperation Treaty, there is a one-year grace period to file patent applications in most major foreign countries, measured from the date of the U.S. filing. Canada has a one-year grace period for acts of the inventor. Design patents must be foreign-filed within six months, not one year.
Special Note: GATT agreement and provisional applications.
The term of patents filed after June 7, 1995 is 20 years from the date of filing. A "provisional" application may be filed without claims but includes all the disclosure of a regular application. The filing fee for a provisional application is only $65 (with micro entity status) as opposed to $430 for a regular application. A provisional application is a good choice if you want the right to mark your invention "patent pending" but are unsure about commercial success. A regular application must be filed within one year of the provisional application to preserve your rights.
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