Introduction to Patent Filing

An inventor who wishes to acquire an intellectual property right in the United States must prepare a supporting disclosure of the invention for patent filing. The disclosure is crucial in all 20-year-long intellectual property rights.

What does all this mean? This means that your idea must have a structure. You are most likely on your way to a patentable invention if you can draw diagrams of your new product or process and explain how it works.

The simple bargain in the patent issuance is that the government allows the inventor to have the exclusive rights of its invention. This is in exchange for understanding the invention to practice and benefit from it.

As patent lawyer with strong views on the patent filing process, I would emphasize the importance of careful preparation and attention to detail throughout the patenting process. Here are a few key points I would make regarding the patent filing process:

Conduct a thorough patent search: Conducting a thorough search of existing patents and published patent applications should be done before filing a patent application. This can help ensure that the invention is new and non-obvious, which is a requirement for a patent to be granted.
Write a detailed description of the invention: The patent application must include a highly detailed description of the invention, including drawings or diagrams if necessary. The description should be written in clear, concise language and should fully explain how the invention works and its advantages over existing technologies, and for software inventions, how the software improves computer performance.
Draft clear and concise claims: I stress the importance of drafting clear and concise claims that define the scope of the invention. Claims should be written in a way that is specific and easily understood by someone skilled in the relevant field.
Respond to office actions: The applicant should be prepared to respond to office actions, which are letters from the patent office outlining issues with the application. It’s important to address the office actions and make any necessary revisions to the application in order to have it granted.
Hire a professional: While this may be viewed as self-serving, it’s a good idea to hire a patent attorney or agent to help with the patent filing process. They have the knowledge and experience to ensure that the application meets all necessary legal requirements and increases the chances of grant. Further, the attorney should have technology domain expertise to save you the cost of learning about the tech before drafting the patent application.

Overall, as a patent lawyer I would likely emphasize the importance of conducting a thorough patent search, writing a detailed description of the invention, drafting clear and concise claims, responding to office actions and hiring a patent lawyer to help throughout the process. Next, we discuss in more depth how to prepare and file the patent application.

Overview of the Patent Filing process

The basics of patent filing involve several steps that must be taken in order to secure a patent for an invention. Here are the basic steps involved in the patent filing process:

Conduct a patent search: Before filing a patent application, it is important to conduct a search of existing patents and published patent applications to ensure that your invention is new and non-obvious.
Prepare a patent application: A patent application includes a written description of the invention, including drawings or diagrams if necessary, and one or more claims defining the scope of the invention.
File the patent application: The patent application must be filed with the appropriate government agency, such as the United States Patent and Trademark Office (USPTO) or the European Patent Office (EPO).
Review and examination: Once the patent application is filed, it will be reviewed and examined by a patent examiner to determine if it meets the legal requirements for a patent.
Respond to office actions: If the patent examiner finds issues with the application, they will issue an office action, which is a letter outlining the issues. The applicant will need to respond to the office actions and may need to make revisions to the application before it can be granted.
Allowance and payment of issue fee: If the patent office is satisfied with the application, they will issue a notice of allowance, and the applicant will be required to pay an issue fee to have the patent granted.
Grant of patent: Once the issue fee is paid, the patent office will grant the patent, and it will be published in the official gazette.

Embrace Early Preparation

The journey to securing a patent begins long before the actual filing. As a startup founder, your first step should be a comprehensive analysis of your invention. This isn’t just about ensuring your invention is new; it’s about understanding its potential market impact, its scalability, and its ability to be defended in the marketplace.

Early preparation involves detailed documentation of your invention’s development process, which can provide crucial evidence in supporting your claim to originality and novelty during the patent examination phase.

Understand the Market and Competitor Patents

Before diving into the patent application, it’s essential to have a clear understanding of the existing market landscape. This means conducting a robust patent search not only to avoid infringing on existing patents but also to understand where your invention fits within the industry.

Analyzing competitor patents can reveal gaps in the market, allowing you to position your invention more strategically. For startups, this step is not just about avoiding legal hurdles; it’s about carving a niche in a competitive environment.

Detailed Documentation: More Than Just a Requirement

When preparing your patent application, the importance of detailed documentation cannot be overstressed. A well-drafted description serves as the foundation of your patent application. It should cover every aspect of your invention, including its functionality, configuration, and potential applications.

For software inventions, it’s crucial to highlight how the software improves on existing solutions. This documentation is not just a formality; it’s a strategic tool that defines the boundaries of your patent’s protection.

Proactive Engagement with Patent Examiners

The interaction with patent examiners is a critical phase where many applications face challenges. Responses to office actions should be seen as opportunities for clarification and strengthening your application, rather than mere hurdles to overcome.

Engaging proactively with examiners can help clarify the unique aspects of your invention, ensuring that the final patent closely aligns with your strategic objectives.

Leverage Professional Expertise

While it may be tempting to navigate the patent process independently to cut costs, the complexities involved often require professional expertise. A patent attorney who understands your industry can add significant value, ensuring that your application is robust, compliant, and strategically aligned with your business goals.

Additionally, their expertise in claim drafting can be crucial in maximizing the protection your patent offers and minimizing the risks of infringement claims.

Continuous Learning and Adaptation

Patent filing is not a set-and-forget process. The landscape of intellectual property is continuously evolving, as are technologies and market dynamics. Stay informed about changes in patent law and related industry trends. Attending seminars, workshops, and following relevant publications can provide insights that enable you to adapt your strategies effectively.

Cultivating an Innovation-First Culture

Lastly, for startups, cultivating a culture that prioritizes innovation and respects intellectual property is vital. Encourage your team to think beyond the immediate application of their ideas and consider broader implications and potential innovations. This culture not only supports patent initiatives but also drives ongoing innovation and business growth.

What inventions are patentable?

A patentable invention is defined by the United States Patent Law as a machine or appliance, a process or method that makes something, an article of manufacture or composition of the material, which creates new materials from other materials, or a machine.

Patents grant the patent applicant the intellectual property rights to an invention. Intellectual property rights include trade secrets like special ingredients, trademarks, used to identify products for words or symbols, and copyrights that establish authorship of software, art, and architecture.

Innovations that Solve Real Problems

At the heart of every patentable invention is the requirement that it solves a specific problem in a novel and non-obvious way. For startups, this means your invention should not only be a new idea but should also offer a practical solution that is not immediately apparent to others with good knowledge in the field.

This is where your innovation’s unique value proposition shines—by addressing a need in a way that hasn’t been thought of before, you create a strong case for patentability.

Enhancing Functionality

A key aspect of patentable inventions is their ability to enhance functionality. This means that your invention should provide a new and improved way of doing something. For software startups, this could mean developing algorithms that optimize processes in ways that offer measurable improvements, such as speed enhancements, cost reductions, or user experience improvements.

Demonstrating this enhanced functionality is not just about proving your invention works but showing that it works better than existing solutions.

Interdisciplinary Innovations

The modern startup ecosystem is highly interdisciplinary, often blending technology, science, and design. Inventions that cross these boundaries are particularly ripe for patents.

For example, a new material that makes devices more durable could be patentable, or a new method of data analysis that provides insights faster could also be protected. Startups should think about how their products or processes integrate different fields to solve problems in innovative ways.

Environmentally-Friendly Solutions

As global emphasis on sustainability grows, inventions that offer environmentally-friendly solutions have become increasingly significant. If your startup is working on technology that reduces waste, minimizes energy consumption, or decreases pollution, these innovations can be patentable.

This not only helps protect your ideas but also aligns your business with broader global goals, enhancing your brand’s appeal to eco-conscious consumers and investors.

Software and Digital Innovations

In the digital age, software inventions are particularly important. However, patenting software can be tricky as it involves demonstrating that the software offers a ‘technical solution’ to a ‘technical problem’.

Startups need to focus on how their software improves the functioning of the hardware it runs on or how it fundamentally improves the execution of a process. This could include innovations in artificial intelligence, machine learning, or blockchain, where the software significantly transforms the capabilities of technology.

Practical and Industrial Applications

Lastly, the practicality of your invention is paramount. This means your invention must not only work in theory but should also have practical applications in an industry. It must be something that can be made or used in some type of industry, not just a concept or an abstract idea.

This is crucial for startups, as it ties directly into the commercial viability of your invention. Demonstrating the practical applications of your invention can significantly bolster your patent application.

What are the criteria for a patent filing?

To determine whether an invention is patentable, inventors must meet several criteria. The following four criteria are the most important:

Your invention must be original: This means that your invention or one of its elements has to be completely new. These inventions are called prior art. To ensure your invention is original, you can search for patents through the United States Patent and Trademark Office USPTO or online.
Your invention must not be obvious: This is the most important criterion for patentability. Your invention must include (or be able to include) elements that are not easily discovered by a person who isn’t an expert in the field. It may be difficult to patent a machine to mix paint colors, as people in this industry are familiar with the process.
Patentable inventions: These inventions can include machines, processes, and articles of manufacture. The non-patentable subject matter is theories and methods, natural processes such as plants growing from sunlight or soil, and anything that can be done by a person using their body, such as running, stretching, or jumping.
Your invention must be practical: This means it has to be useful in an industrial setting. it must be possible to actually manufacture the new invention. In other words, you can apply for a patent on a new kind of playing card that is easier to hold than existing cards. But you can’t obtain a patent for an idea for a new card game.

Innovation Must Be Novel

The novelty requirement is foundational in patent law, meaning your invention must be completely new. What does this mean for you as a startup founder? It means that before even beginning the patent application process, you must thoroughly research existing products and patents in your field.

This isn’t just about ensuring your product is new—it’s also about understanding the landscape of your industry, identifying your competitors, and positioning your innovation to fill an unmet need.

Non-Obviousness: A Higher Bar for Innovation

Non-obviousness is perhaps one of the most critical and challenging criteria to meet. An invention is considered non-obvious if someone skilled in the same field would not see it as an obvious step. For startups, this criterion is particularly important because it emphasizes the need for a unique selling proposition (USP).

Your invention should not only solve a problem but do so in a way that isn’t straightforward to others in your industry. This often requires thinking outside the box and can be a significant driver of your startup’s innovative culture.

Industrial Applicability: Making It Practical

For a patent to be granted, the invention must be applicable in a specific industry; it must do something useful. In practice, this means that your invention should have a clear application that can be implemented in the real world.

For startups, this translates to having a minimum viable product (MVP) or a prototype that demonstrates how the invention works and its practical benefits. This not only aids in securing a patent but also serves as a critical piece in pitching to investors and early adopters.

Documented and Detailed Descriptions

The requirement for a detailed description ensures that the patent application fully discloses how to make and use the invention. This criterion is crucial for protecting the integrity of your intellectual property and ensuring that your innovation can be reproduced consistently.

For a startup, this means investing time into comprehensive record-keeping and documentation throughout the development process. This documentation should be clear enough that someone else skilled in the art could replicate your invention without additional input from you.

Legal and Regulatory Compliance

Understanding and adhering to the legal and regulatory frameworks governing patents is crucial. This includes everything from patentable subject matter to the specifics of patent claims drafting.

For startups, this often means working with a patent attorney who can navigate these waters efficiently. The attorney’s expertise not only helps in drafting a compliant and robust patent application but also in strategizing the patent to align with your business goals and industry standards.

How to Get Patent filing in 5 Steps

You have an idea that you think can be patentable. You’ve weighed the benefits and costs. You’ve decided that you want a patent.

Let’s now discuss how to get a patent on the idea. This article will guide you through each of the key steps involved.

Know How Your Invention Compares to Others

First, you need to understand your invention. What is the unique factor that’s making your invention useful and new?

It is after identifying these elements that you consider the scope of your invention or design. Is your invention possible in another manner? You can use a hinge to replace the slide. What happens if you change the length of a slide that closes your mug? Understanding the different ways that another person can use your invention if theirs fail, is paramount.

As an inventor, it is important to consider the use of your invention in a wider context. For instance, can you use your new mug closure for another purpose? Can you use it to close larger devices, such as an alcohol distillery, on a larger scale? Are there any further modifications that would be necessary? This allows you to understand your invention and know how best you can design it for ease of protection and search.

Perform a Patent Search using a Patent Database

Next, conduct an Internet patent search on your idea by using one of the many patent databases. This will enable you to determine if your invention is truly new, as discussed above. Moreover, you are in a position to know whether other patents exist for similar inventions.

You can search for patents within the United States Patent and Trademark Offices with many patent databases. It is important to take the time to learn about the limitations of this search. This search might not be exhaustive and may not prove that your idea exists. The existence of a similar patent saves you time and money before submitting your application.

Select the Type of Protection for Your Invention

If you want to get a patent on file but leave some room to tinker, you may consider filing for a provisional patent application.

The provisional application proves that you are the inventor at the time you file the patent. You have up to a year before you file the actual patent application. What most people refer to as a patent is actually a utility patent. You can then test and refine the prototype you have built. However, you cannot add anything new. To get the benefits of super sensitive pressure sensors in your new prototype, you must file a new patent request.

The non-provisional application, also known as a Utility Patent Application, is the formal application. One needs to submit it to the United States Patent and Trademark Office in order to begin the patent process. A provisional application which comes first must be filed within a year. This application will grant your idea patent-pending status.

Draft and File Your Patent Application

Drafting a patent application can be a complex process that requires a thorough understanding of patent laws and regulations. Here are a few tips for drafting a patent application that will increase the chances of it being granted:

Conduct a thorough patent search: Before drafting the patent application, conduct a thorough search of existing patents and published patent applications to ensure that your invention is new and non-obvious.
Write a detailed description of the invention: The patent application should include a detailed description of the invention, including drawings or diagrams if necessary. The description should clearly and concisely explain how the invention works and its advantages over existing technologies.
Draft clear and concise claims: The claims are the most important part of the patent application as they define the scope of the invention. Claims should be clear, concise, and specific, and should avoid using overly broad or vague language.
Use appropriate terminology: Use appropriate technical terminology and avoid using colloquial terms. Be sure to use accurate and consistent terminology throughout the application.
Include drawings and diagrams: Drawings and diagrams can be very helpful in illustrating the invention and should be included in the application if they help clarify the invention.
Use a professional: Consider hiring a patent attorney or agent to help you draft the application. They have the knowledge and experience to ensure that the application meets all the necessary legal requirements.
Proofread and review: Review the application carefully and proofread it for errors, inconsistencies, and omissions.

Overall, drafting a patent application requires conducting a thorough patent search, writing a detailed description of the invention, drafting clear and concise claims, using appropriate terminology, including drawings and diagrams, hiring a patent lawyer, and proofreading and reviewing the application before you send the application to the patent attorney to add her strategic thinkings and broaden the scope of the patent application.

You may want to use computer-aided patent software tools for controlling costs and increasing patent quality when building an IP portfolio. Here are a few ways that computer-aided patent software tools can help:

Patent searching: Patent searching software can help you conduct a thorough search of existing patents and trademarks before filing a new application. This can help you avoid costly legal disputes and ensure that your patents are not already taken.
Prior art analysis: Computer-aided patent software tools can also assist with prior art analysis, which can help you identify and evaluate prior art that may be relevant to your patent application.
Claim drafting: Some computer-aided patent software tools can assist with claim drafting, which can help you draft claims that are clear, concise, and more likely to be granted by the patent office.
Portfolio management: Computer-aided patent software tools can also assist with portfolio management, which can help you organize, track and monitor your patent portfolio.
Cost-effective: By using computer-aided patent software tools, you can save time and money, as they are often less expensive than hiring a patent attorney, and can help you complete tasks more efficiently and effectively.
Quality: Computer-aided patent software tools can also help increase the quality of the patent application and increase the chances of grant by the patent office.

Overall, computer-aided patent software tools can be useful in controlling costs and increasing patent quality when building an IP portfolio. They can help with patent searching, prior art analysis, claim drafting, portfolio management and be cost-effective and help increase patent quality.

It can be difficult to draft a patent application. If you do it correctly, your chances of securing patent rights are high. Failure to follow the correct procedure may subject your patent to no issuance. There are many parts to an application, including claims, drawings, and specifications. Such may be rejected for technical or formal reasons. It is advisable to look for the assistance of a skilled professional to protect your invention.

The professional can’t do it all as they are the medium through which your idea is put in writing. To capture the essence of the invention you want to protect, you need to work closely with your patent professional.

If you choose a professional to represent you, you should be ready to give them any written information, drawings, or descriptions of your invention to help them understand what you are trying to protect. It is highly commendable for you to have a one on one detailed discussion on the application. A draft of the application enables you to easily read and discuss it with the professional on what it will protect before filing. You can then make any final adjustments before filing to ensure it meets your approval. The rights and security of your patent depend on a successful filing application.

Patent Prosecution

The patent prosecution process involves several steps that must be taken in order to secure a patent for an invention. The steps in patent prosecution include:

Filing a patent application: The first step in the patent prosecution process is to file a patent application with the appropriate government agency, such as the United States Patent and Trademark Office (USPTO) or the European Patent Office (EPO).
Review and examination: Once the patent application is filed, it will be reviewed and examined by a patent examiner to determine if it meets the legal requirements for a patent.
Respond to office actions: If the patent examiner finds issues with the application, they will issue an office action, which is a letter outlining the issues. The applicant will need to respond to the office actions and may need to make revisions to the application before it can be granted.
Allowance and payment of issue fee: If the patent office is satisfied with the application, they will issue a notice of allowance, and the applicant will be required to pay an issue fee to have the patent granted.
Grant of patent: Once the issue fee is paid, the patent office will grant the patent, and it will be published in the official gazette.
Maintenance: Once granted, the patentee is required to pay maintenance fees at certain intervals to keep the patent in force.
Enforcement and Defense: The patentee has the right to enforce the patent and prevent others from making, using, selling, and importing the invention, but also has the responsibility to defend it against any invalidity or non-infringement challenges.

Overall, the patent prosecution process involves filing a patent application, review and examination, responding to office actions, allowance, payment of issue fee, grant of patent, maintenance fee payments, among others.

When Should Patent Filing Be done?

The current U.S. law (as per the 2011 America Invents Act) grants patents to the first person who files for patent protection. This is a change from how United States law used operate. An award was only granted to the first inventor.

The United States is now a “first to file” country. It is crucial to file patent protection immediately to ensure that others do not file on the same invention.

Anyone who didn’t invent something to learn about your invention, should not race to file your patent before you since it is illegal. It is only an “inventor” that can fill patent protection. Anyone who steals your idea is not an inventor. You might consider holding discussions with potential investment partners or companies. Hence, it is vital for you to have your patent application ready.

Assess the Market Readiness

Before rushing into the patent filing process, evaluate the readiness of the market for your invention. Are potential customers and industries prepared or in need of your innovation? Launching a patent application too early can be as risky as filing too late, especially if market demand has not been accurately gauged.

For startups, aligning the patent filing with market readiness not only ensures that the product meets an existing demand but also positions the startup at a competitive advantage when the market is ripe.

The Role of Product Development Stages

Your product’s stage of development plays a significant role in deciding when to file a patent. If your invention is still in the conceptual or prototype phase, consider filing a provisional patent application.

This strategy allows you to secure an early filing date, giving you a year to refine the invention and assess its commercial viability before committing to the more costly and detailed non-provisional patent application. This approach not only keeps initial costs lower but also provides flexibility in further developing and perfecting the invention.

Monitor Competitive Movements

Keep a vigilant eye on your competitors. In a ‘first to file’ system, the race to the patent office is real. If you are aware of competitors working in similar technology spaces, accelerating your patent filing might be necessary to stake your claim on the innovation landscape before others.

However, this doesn’t mean rushing unprepared; ensure that your invention meets all patentability requirements and that your application is as robust as possible.

Strategic Disclosure Decisions

Deciding when to publicly disclose your invention can also dictate your patent filing timeline. Public disclosure of an invention before filing can often compromise its patentability in most parts of the world, except in the U.S., which allows a one-year grace period after disclosure.

For startups looking to engage with partners, investors, or others, using non-disclosure agreements (NDAs) before such meetings can safeguard your rights while you prepare for a formal patent filing.

Integrating Business and IP Strategy

Your patent filing should be a strategic decision integrated with your broader business objectives. For instance, if your startup is seeking investment, a well-timed patent filing can significantly enhance your venture’s valuation.

It demonstrates to potential investors that you are committed to protecting your intellectual property and have a clear vision for your technology’s future.

Preparing for International Expansion

If you envision your product making a mark in international markets, consider the timing for international patent protections under the Patent Cooperation Treaty (PCT). Filing a PCT application can be a strategic move after your initial domestic filing, extending your ability to claim patent rights in over 150 countries within specific time frames.