A Guide to Filing Patents

Allow us to be the first to congratulate you on your invention, which we have no doubt is the greatest thing since the last thing people said was the greatest thing since sliced bread. Now comes the nitty-gritty: filing a patent to secure your original product or process so that you maintain your competitive advantage when the product goes to market.

If there is a step zero in patent filing, it’s the decision of whether to engage the services of a patent lawyer to help you. According to the American Intellectual Property Law Association 2007 Report of the Economic Survey, the average charge by a small law firm to prepare and file a minimally complex, 10-claim patent application was $8,548. We know most of you intend to file yourself (which is why you’re reading this), but a patent lawyer can tell you in an initial consultation if your idea is worth pursuing a patent and thus could save you a significant amount of money in the long run.

Whether you file pro se (yourself) or with counsel, you need to consider risk versus reward. As Paul Janicke, the HIPLA Professor of Law at the University of Houston Law Center in Texas, says, “Some people assume a patent will be worth the costs; often it is not.”

Thanks to the generous provisions of the America Invents Act, there’s never been a better possibility of having your patent subsidized by the federal government. A national pro bono task force has been established with the goal of covering the entire country – Idaho, Wisconsin, Montana, North Dakota – with patent assistance support so that worthy inventors are discovered. If you can prove financial need and the capability of using a patent, use the pro bono assistance form and you could receive help.

Even if you don’t qualify for pro bono assistance, and you know without a doubt your idea is patentable and you’re still determined to DIY, follow these guidelines for ensuring your baby is protected for the next 14 or 20 years.

What’s Patentable

To be considered valid, patents must be all of the following:

  • New: To determine whether an invention or process is “new,” the patent examiner considers the “state of the art.” To pass the test, nothing else like it can have been made public in any way, in anywhere in the world. If something similar has been made public, your patent will be denied on the basis of the existence of prior art.
    A notable patent to be tentatively invalidated recently is Apple’s “rubber band” patent, which covers the way an Apple product’s touchscreen “bounces” back once the user scrolls to the end. A judge ruled two previous patents by AOL and Apple’s own “rubber band” developer, respectively, predated Apple’s patent and thus failed the prior art test.
  • Non-obvious: This means that the invention, or at least one step in a process, must not be self-evident to a person who already has significant knowledge of the field. As of 2010, the guidelines for determining what constitutes obviousness are threefold. The first is known as the TSM test (teaching-suggestion-motivation), which finds an invention obvious if a previous invention either explicitly or implicitly created a reason for modifying that invention somehow. The second test involves substituting one known element for another, and the third deals with whether contriving a solution to a known problem stemmed from common sense.
    Plenty of inventions that seem obvious weren’t patented until recently, like the water-removing hairbrush (patented in 2011). They are awarded patent status because they’re sufficiently unique to the market. On the other hand, the fact that there are only so many ways to make refreshing gum led to a scenario where Wrigley’s patent was invalidated because of two instances of prior art. The court found its usage of a chemical called WS-23 was not unexpected enough to merit a patent in light of Cadbury’s patent that uses similar agent WS-3.
  • Useful: The third requirement is that your creation be capable of being put to industrial use, the easiest requirement to satisfy. You can directly state utility on the application or rely on the fact that the use is self-evident, but the idea has to be described well enough to ensure someone else can use it. The most common reason applications fail the usefulness test is that the invention would not work as the requested patent describes. Other disqualifiers are patents dealing with natural laws and abstract ideas.
    The patent office routinely sees unworkable patent ideas, especially antigravity and perpetual motion designs, which experts in the field of physics have declared impossible for decades. That hasn’t stopped inventors, who continue to submit their applications (and in at least one case, a patent was inadvertently granted).

Inventorship vs. Authorship

The question of inventorship versus authorship comes into play when a new invention or process has come into being after multiple people collaborated to various degrees to produce a scientific manuscript. In the world of scholarship, such contributors are often granted status as “authors” of the paper out of professional courtesy. However, where a patent is concerned, naming the correct creators is a matter of law, not morals, as naming the wrong person can be grounds for a patent being invalidated.

According to the United States Patent and Trademark Office (USPTO), inventorship hinges on who conceived the idea. This means that those who contribute to the origination of an idea qualify as inventors, whereas those who put the idea into practice at the inventors’ direction do not. It is not even necessary that the inventors personally develop the idea into practice, nor that they contribute to the conception of the entire invention as a whole. To be a co-inventor they only have to contribute to one of the claims on a patent.

How to File

Start by going to the source. The USPTO has a helpful interactive flowchart that outlines the process from start to finish. There you’ll find that step one is conducting a prior art search to make sure someone else hasn’t beaten you to the punch with the same invention. The USPTO offers its own search engine, which is a good place to start, but don’t rule out everyone’s favorite search provider. Google Patents features a “Find prior art” button (accessed from a patent’s application page) that allows inventors to view similar creations, both in the U.S. and Europe, thanks to Google’s translating functionality.

Once you’re confident your patent is original, it’s time to draft your disclosure, which is the description of the invention, whether for a plant, design, or utility patent (the most common). The USPTO has lengthy manuals that describe in detail how you should go about this process, but there are few general things to keep in mind.

  • Be thorough: The claims you make about your invention in your disclosure will be used to determine whether someone is infringing on your patent. So you can see why you want to provide at least one claim with the broadest description of your invention within reason, to protect yourself from the widest range of uses. Buy a copy of David Pressman’s Patent It Yourself, or just read through the claims of similar patents until you start to get a feel for a well-laid-out claim.
    As Janicke tells us, “The claim language (inventors use) in the draft is often too narrow; others can easily design around the patent in that circumstance, and that patent is then commercially worthless.”
  • Include detailed drawings: At least one illustration is required with your application, but multiple drawings from multiple angles provide more detail to an application, making it that much stronger. Some inventors hire patent illustrators to assist them for around $75 a drawing, but you can also create them on your own if you are so inclined. An inexpensive guide book like How to Make Patent Drawings would be a wise purchase for DIYers.
  • Follow the proper format: Remember, there is no form for creating your disclosure, but the USPTO has strict guidelines for formatting your submission that, when not followed, can result in an examiner’s objection and cause you significant delays. For example, the paper must have at least a 1-inch margin, papers must be direct printouts, you need to include a protective cover, and so on.

Once you’ve prepared your application, you need to decide whether to file globally or just in the U.S. The cost of securing patent protection in just a single foreign country can run into the tens of thousands of dollars. If you think there is a high probability of your invention being heavily marketable in a particular foreign country, it might be a wise investment — if initially painful —to protect your interests there for the future. For many young businesspeople, you’ll just have to do without.

If you’re seeking a utility patent, you’ll now need to choose whether to apply for a provisional or non-provisional patent. Basically, a provisional patent is a low-cost way to establish “patent pending” status for a maximum of 12 months and put your invention on record for use in a non-provisional patent application. However, to be awarded a patent, you will ultimately have to file a non-provisional application.

E-filing is a way to save on printing, postage, and mailing costs. But in order to be able to file electronically through the USPTO’s EFS-Web (Electronic Filing System) and check your application’s status on PAIR (Patent Application Information Retrieval), you’ll need a customer number (request form here). Once you obtain that number, download, complete, have notarized, and submit the Certificate Action Form to ensure secure access to your data. The codes you receive once the form has been processed will be your login info as a registered e-filer.

Now the ball is in the patent office’s court. If your application is accepted, congratulations, you’ll be getting a patent (after you tender the $1,700-$2,000 in issue and publication fees)! If it is not accepted on the first submission (which is quite common), the examiner will issue a non-final action laying out the problems with the application. For most of these, you have six months to respond before the application is abandoned. You can respond electronically with the Response to Action Form.

If problems persist with the application, the examiner will issue a final action. At that point (or after a claim has been rejected at least twice with non-final actions), you may file a Request for Reconsideration After Final Action. You may also file a Notice of Appeal, to have your case reviewed by the Board of Patent Appeals and Interferences. Don’t expect a quick turnaround, though; the BPAI has been known to take about 18 months to issue a ruling on an appeal.

Worth the Cost

Even without the aid of counsel, seeking a patent has become almost prohibitively expensive because of the fees. But if you’re planning a business around your invention, the process of obtaining a patent could be a powerful learning experience, a sort of trial-by-fire welcome to the world of industry. You’ll have to understand your product thoroughly and be able to convey that understanding, budget to cover all the expenses, and jump through all the bureaucratic hoops. We’d be hard-pressed to come up with a better initiation than that.