Michael J. Foycik Jr., Esq.

Tweet

How to get a Patent? That’s a good question! The short and long answers are below.

The short answer is : In the US, file a US Utility Patent Application, or a US Design Patent Application. Note that a US Provisional Patent Application does not become a US Patent, but does give “patent pending” status.

And, do you need a US Patent Attorney? Yes and No. In theory, a patent application can be filed by the inventor. Due to the great number of legal technicalities and chances of losing rights by use of poor legal language or by failing to add the right legal language, most authorities believe it is by far the best course of action to have a US Patent Attorney prepare the patent application. Some very experienced inventors might prepare their own patent applications, although that is not common.

The longer answer is:

These are the basic steps for how to get a patent. For a Utility Patent, the goal is to get broad claims allowed by the US Patent Office, and which become part of an Issued Patent. The claims define the scope of what is legally protected by the issued patent.

The inventor should write a description of the invention, and make sketches or drawings which can show the invention. The description and drawings do not have to be very detailed, as long as they clearly explain what the inventor believes is new.

If working with a US Patent Attorney or US Patent Lawyer, something which is highly recommended, this information may be enough to start. The US Patent Attorney will then draft a more detailed version of the invention in the format required by the US Patent Office, referred to below as the USPTO (which is short for US Patent and Trademark Office).

What will the US Patent Attorney add to help the invention? Good question! The US Patent Attorney will provide the correct wording for various elements, and will provide a set of claims to set forth the legal rights proposed for the invention. Proper drafting of the specification and claims requires good knowledge of current laws and legal case decisions. It should include proper use of “means for” language which may need to be present in the claims and specification, and must be properly supported by an explanation of equivalent structures or functional elements. The US Patent Attorney can provide additional language to encompass or add features which would be known to anyone having skill in the art, in order to broaden the scope of the resulting claims.

The US Patent Attorney will send the draft application to the inventor for changes and additions. This draft application may go back and forth more than once, until the Inventor is satisfied with the draft application. At that point, the draft application is filed with the USPTO by the US Patent Attorney together with the necessary transmittal forms and legal forms.

The USPTO will send an Official Filing Receipt. After that, the USPTO will conduct a search of the prior art patents and other literature, and send an Official Action reporting the results of that search together with an explanation of any objections or rejections. The objections can be to the form or language used, including any objections to the drawings, specification, or claims. The rejections will be legally based, and can include rejections over prior art, as either “anticipated” or “obvious over” the prior art. Other rejections can include “non-operability” and “non-statutory” rejections. It is possible to respond to these objections and rejections, and in many cases these objections and rejections can be overcome by a proper response.

The US Patent Attorney can respond to any such official action received from the U.S. Patent Office. If the official action is a rejection, then a response will provide arguments in support of patentability and possibly changes to the claims. The response will also respond to any objections.

The rejections over the prior art can be overcome, when possible, by amending the claims to avoid the cited prior art, or by providing arguments in support of patentability. For example, a cited prior art patent might not work in exactly the same way as the invention, or it might not have equivalent structural or functional elements as the invention.

The USPTO will consider the Response filed by the US Patent Attorney.

Assuming the application is deemed patentable (the majority are), then a Notice of Allowance and Issue Fee Due is sent. Upon payment of the issue fee, a patent will issue.

It is that simple. This whole process can take anywhere from 12 months to 36 months, depending entirely on the U.S. Patent Examiner to which the application is officially assigned.

A more detailed explanation is as follows.

Very detailed explanation: How to get a Patent

First, you provide details about the invention, and we prepare a draft application together with draft drawings, for your review. This draft includes the claims, abstract, summary of the invention, background of the invention, and detailed description of the invention. We make any changes or additions you wish to make, at no additional charge. We normally charge just half of the fixed service fee in advance for this draft. We normally make changes to the draft at no further charge.

When you are satisfied with the application, we send the final, revised version of the application together with the necessary legal forms (i.e. the Declaration by the inventor, and possibly a small entity form and/or an Assignment if needed). You, the inventor, will review the completed application papers, and will sign and date the forms and return all of the paperwork together with the balance of the service fee due together with the official government filing fee. The government filing fee differs depending on whether it is for a provisional patent application, a utility patent application, or a design patent application.

When there are drawings in the application, we attend to obtaining formal drawings. When the application has been filed without formal drawings, the formal drawings are due approximately two months after the date of filing. We can obtain the formal drawings which conform to the numerous patent office standards, at a cost of around $100 to $150 per sheet, prepared by an experienced patent draftsman. If possible, two to five figures of drawing may be placed on each sheet, to keep costs as low as possible. Typically, for a medium complexity invention, three to five sheets of drawings may be required. For a simple application, often just one sheet is needed.

Prior to preparing the patent application, it is possible to have a patent search done. This can be for any of a number of reasons. One is to search for a “right to use” patent, which shows the invention and is expired. Another reason is to determine the likelihood of patentability. Still another reason is to determine the possible value of a patent in the selected field. It is never necessary to conduct a patent search before filing a patent application, but it is often a good idea. If a patent search is needed, we can get one done at a relatively low cost.

The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.