How to Patent

The patent process has two major steps: meeting the requirements for patentability and filing the patent application. An inventor must file a patent application within one year from the time the invention is for sale or in the public use in the United States. Due to the potential loss of international patent rights‚ the application should be filed immediately and before any disclosure.

Before a patent application is filed‚ an inventor should conduct a patent search to determine whether a similar invention has been patented or whether such a patent is pending. A patent search can be conducted through the USPTO or with the assistance of patent search firm or patent law firm.

The Requirements of Patentability

In order to obtain a patent‚ an invention must satisfy three requirements. First‚ the invention must be Novel. In other words‚ the invention must be new. If that invention already exists in the so called “prior art‚” than the invention is not considered novel. If the particular invention was previously patented or published‚ or is known to or used by the public‚ the invention does not satisfy the novelty element and the application will be denied. However‚ to satisfy the novelty requirement‚ an inventor need not start from scratch to create an entirely new invention unheard of in the industry. Instead‚ the novelty element only requires a single new component‚ feature‚ or characteristic. An improvement on an existing invention is considered novel as is a combination of existing inventions in a new and useful way.

Second‚ the invention must be Useful. This element simply requires that the invention serve some function. If the invention can be used practically to perform some task or assist in the performance of a task‚ that invention will probably satisfy this element. For example‚ a process or composition for artfully dying jeans will probably meet the usefulness requirement. In addition‚ manufactures‚ compositions‚ or processes used solely for experimental purposes may still be considered useful.

Third‚ the invention must be Non-Obvious. If‚ at the time of the invention‚ those reasonably skilled in the art would find the invention to be an obvious improvement or change to the prior art‚ the patent application will be denied. For example‚ if combining two existing inventions would be obvious to someone with skill in the industry‚ such a combination is not eligible for patent protection. The invention sought to be patented must be a non-trivial extension of the prior art. In other words‚ an invention must possess a certain minimum level of creativity or discovery in order to be eligible for patent protection.

The Patent Application

If an inventor has made a discovery that meets all of the above requirements‚ he or she should file a patent application with the USPTO. The Patent Application must contain two major components. First‚ it must describe the invention sufficiently for someone with comparable skill in the art to reproduce it. Second‚ the scope of the invention must be set forth in the “claims” of the patent. The claims are operative sentences describing the novelty and usefulness of the invention. An inventor’s ability to exclude others from using‚ making‚ or selling the invention (the essence of a patent) is limited to the manufactures‚ processes‚ or compositions described in the claims.

Defining the scope of an invention is a difficult process. If the scope is too narrowly defined‚ the patent will not be as effective against those who seek to use the invention for their own gain. If the claims are too narrow‚ by changing a minor aspect of the invention‚ a would-be infringer could avoid a patent infringement cause of action. However‚ if the scope is too broadly defined‚ the applicant risks outright rejection by the USPTO‚ forcing them to engage in a back and forth process until appropriate claims can finally be agreed upon.

Once submitted‚ the application is then reviewed by the USPTO. If the USPTO rejects one or all of the applicant’s claims‚ the applicant may rebut and argue on behalf of their claims. If the inventor and the USPTO can agree on the scope of the claims‚ a patent may be granted. After a patent is granted‚ the USPTO may still reissue or reexamine the patent and make changes to the patent if necessary.