A quick guide to the patent process. Includes important terms.
While fairly straightforward, the technical terms and legal
aspects of filing a patent application can be confusing. I’ve
attempted to outline the patent process step-by-step and include
simple explanations of patent terminology you will encounter along
the way. It should be noted that getting a Trademark or Copyright
follows a very different process.
Contact Noro IP for more
specific information in those areas.
Step 1: Record the Invention ASAP
When you first invent something, it is important to write up a
complete, dated description of the invention. Later, this record
will provide evidence that the inventor possessed the invention on
the date indicated. In the United States, a patent is given to the
first to invent, not the first to apply for a patent. The inventor
must sign and date the description and have one other witness sign
and date it as well. The record can be simple and short, but
should include enough details to convey clearly what the invention
is. In most cases, it will utilize patent drawings or diagrams,
which show how the invention works.
Step 2: Don’t Talk About It!
If the invention has been described in a printed publication,
has been in public use or on sale before the invention was
recorded (here’s where that dated record comes in handy), it can
not be patented. Also, if an invention has been described in a
printed publication, has been in public use or on sale for more
than one year before the formal patent application date, it cannot
be patented.
Step 3: Perform a Patentability (Novelty) Search
Many people don’t realize just how much has already been
patented. Even if you don’t see your invention on the shelves,
that doesn’t mean it’s not already be owned by another inventor.
Because of this, Noro IP highly recommends getting a
Patentability (Novelty) Search done before applying for a
patent. Patent applications can cost approximately $2,000 -
$10,000 and take years to complete. But Patentability (Novelty)
Searches start at $300 and take approximately 1-2 weeks, saving
you considerable time and money to determine if your invention is
patentable and if filing a patent application is worth it.
An invention must be new, useful and non-obvious to get a
patent granted. You may conduct a Patentability (Novelty) Search
on your own using keywords and search terms using the free USPTO
Patent Database or other patent databases. You will also want to
search the USPTO’s Patent and Trademark Depository Library for
other patent-related publications.
However, given that millions of patents exist, a Patent Agent
or Attorney will be more efficient at conducting a professional,
exhaustive search that proves an invention to be new, useful and
non-obvious.
Your Patentability (Novelty) Search done by a reputable Patent
Agent or Attorney can answer the following questions:
a) Is your idea truly novel, has already been patented, has
been anticipated or rendered obvious?
b) Is it worth the cost of filing a patent at all, given the
scope of patentability?
c) What is your competition doing?
d) Is it worth the effort and expense to fully develop and
market your concept?
The results of the Patentability (Novelty) Search will be
printed on your patent and serve as evidence that your invention
is novel. During the application process a Patent Examiner from
the USPTO will also conduct a similar search and may discover
different findings.
Step 4: To Apply or not to Apply?
After analyzing all the related information from your
Patentability Search and marketing and development research, you
need to make a decision whether to apply for a patent or whether
to continue developing your invention further. In the case of
applying, you have several options available depending upon your
time schedule, the invention’s need for protection and available
funds. Your registered Patent Agent or Attorney can help you with
professional recommendations, but the ultimate decision is yours
as an inventor.
Step 5: Filing a Patent Application
There are three categories of patents you may apply for:
Design, Plant, and Utility. The majority of Patent Applications
are Utility Patent Applications and there are two types of Utility
Applications: Provisional and Non-Provisional.
A
Provisional Utility Patent Application provides immediate
protection for your invention while giving you time to file a
regular,
Non-Provisional Patent Application. A Provisional Patent
allows an inventor to claim "patent pending" status for the
invention for 12 months at a fraction of the price of a regular
Patent Application. Often five to ten pages, a Provisional Patent
Application consists of text and drawings that describe how to
make and use your invention.
It provides the inventor with a 12 month period to further
develop the invention, determine marketability and seek licensing
agreements. If you file a regular, Non-Provisional Patent
Application within 12 months of filing the Provisional, you can
claim the original Provisional filing date to prove that your
invention came before other similar developments.
A Non-Provisional Patent Application is a regular Patent
Application that will protect your invention for 20 years. It is
more detailed than the Provisional Application and includes a full
set of claims and patent drawings. It costs more than the
Provisional to prepare and file and takes longer to process as
well. The US Patent and Trademark Office has very specific
requirements for preparing and filing a Non-Provisional Utility
Patent Application, which must include a data sheet; a
specification; a claim or claims; drawings, when necessary; an
oath or declaration; and the prescribed filing, search, and
examination fees.
There are many other legal nuances in the Patent Application
process which can affect patentability and enforceability such as
rules about who can apply for a patent, claim types and specific
patent law definitions of new, useful and non-obvious. Noro IP can
walk you through the entire process from start to finish.
For a FREE consultation or additional information, call Noro IP
at 1-800-605-6993.
*Important Patent Terms*
Patent Drawings (also called patent figures, drafting,
sketches, diagrams, or art) – any artwork accompanying patent
documents. Usually, Patent Drawings are made by professional,
technical artists and must follow the guidelines of the US Patent
and Trademark Office’s (USPTO) Design Unit.
Patentability Search (also called Novelty Search) – a
thorough search of unexpired and expired patents, related patent
and non-patent literature and publications.
Novelty – if an invention is “novel,” it is different from
anything seen or known before the time of invention. Your
invention must be proved novel in order to be eligible to receive
a patent.
Patent Agent – patent professionals who usually have a
technical education background but have also passed the USPTO
patent bar exam to become a registered patent agent with the
USPTO. They can perform patentability searches, but not
applications.
Patent Attorney – attorneys who usually have both a legal
degree and a technical degree (such as engineering, biomedical or
computer science) and have passed the patent bar exam to become
registered with the USPTO. They can perform patentability searches
and prepare patent applications, but are usually more expensive.
Patent Examiner – a USPTO professional who examines patent
applications to determine patentability. This is the person who
will decide to either grant or deny the patent.
New (or Novel) – New or Novel refers to the invention never
being patented, known or used by others Useful – patent law
specifies that inventions must have a useful purpose.
Nonobvious – the term used if your invention is different
enough from similar inventions to warrant a patent being granted.
It must be “nonobvious to a person having ordinary skill in the
area of technology related to your invention.” Think of it as a
threshold point:
New, Useful and Non-obvious example: Let’s consider the
iPod. Although hand-held music players have been around for a
while, it was unique because it could store so much music in a
small amount space, which was a nonobvious improvement to those in
the electronics field. It’s useful purpose is to allow people to
listen to music. It is new (or novel) because this type of
technology inside of a hand-held music player had never been
patented or used by others before. While the iPod is a fairly
straightforward example, many inventions walk closer to that fine
line between patentable and non-patentable. That is when a Patent
Agent or Attorney with a technical background in the field of your
invention (ie electrical, mechanical, biomedical, etc.) comes in
handy to help determine whether your invention will pass that
threshold point or not.
Prior Art – refers to all inventions that came before your
invention. Existent patents are the biggest source of prior art,
but non-patent literature such as magazines or newspapers are
important to discover whether someone has invented the same thing
without patenting it. Also, international patent documents and
international patent databases should be included
Patent Claims – the claim or claims are a series of noun
phrases following the description and drawing portions of the
patent application which define the extent of the protection
granted by a patent. They are extremely important for patent
prosecution and litigation when enforcing your patent.
Patent pending (also called patent applied for) – as soon
as an application is filed, you must mark “patent pending” on your
product. This is so that you may recover damages from an
infringer.
Infringement – any party which manufactures, imports, uses,
or sells patented technology during the term of the patent is
considered to infringe on that patent and is subject to legal
action. Infringement is determined from the scope of the patent
claims.
Design Patent - allows any person who has invented any new
and non-obvious ornamental design for an article of manufacture to
protect that design. The Design Patent protects only the
appearance of an article, but not its structural or functional
features and has a term of 14 years.
Plant Patent - grants a patent to anyone who has invented
or discovered and asexually reproduced any distinct and new
variety of plant and has a term of 17 years.
Utility Patent - patents an invention (a process, machine,
manufactured item or composition of matter) for a term of 20
years. There are two types of Utility Patent Applications:
Provisional and Non-Provisional.
Provisional Utility Patent Application - provides immediate
protection for the invention while giving the inventor time to
file a regular Non-Provisional Patent Application
Non-Provisional Utility Patent Application - a regular
Patent Application that will protect your invention for 20 years
if granted
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