Thinking Beyond the Obvious

If you've made it to this web page, you've already started along the path to patenting your invention! Coming to a basic understanding of patents and the patenting process is the first step in patenting your invention. The information presented below will help independent inventors and small business owners understand how to proceed towards obtaining a US Utility Patent. 


Prepare Record of Invention

Completing a Record of Invention is one of the most important steps to protecting your invention. This establishes a credible date of inventorship. Have at least one (preferably two) people withness the Record of Invention. In addition to having the ROI witnessed, it is recommended that you also have it notorized or utilize the USPTO Document Disclosure Program (USPTO DDP) to further establish a credible inventorship date. 


Conduct Patent Search   

A patent search should be completed, but is not required to proceed with patenting your invention. The Patent Office does not require that a patent search be completed prior to filing a patent application. They conduct their own search regardless of whether you have completed one or not. The patent search is something you can do yourself or have done for you by a patent agent, patent attorney, or patent searcher. 


Evaluate Patentability 

There are many benefits from evaluating the patentability of your invention based on a patent search. These include:

  1. Knowing whether a patent discloses or claims subject matter that anticipates your invention, thereby preventing you from obtaining a valid and enforceable patent.
  2. Providing you (or your patent practitioner) with information that can be used to draft claims that are much less likely to be found anticipated by or obvious in view of a reference found and cited by the Patent Office.
  3. Identifying similar inventions that can help you to better understand the scope of your invention and secure broader claims.  


File Patent Application 

Providing the patent search and patentability evaluation do not identify any patents that disclose or claim subject matter that anticipate your invention or render the essence of your invention clearly obvious, you are now ready to move forward with filing a patent application. For inventions filed in utility patent applications, you can file a non-provisional (regular) patent application or a provisional patent application.

Non-provisional patent applications are examined by the Patent Office for patentability. The 20 year term of a utility patent begins with the filing of a non-provisional patent application. In cases where a product incorporating the invention will soon be commercialized or is already commercialized, I typically recommend that a non-provisional application be filed. This rational is based on the patent having to be issued prior to being able to prevent infringement by enforcing it.


Provisional patent applications are not examined by the Patent Office. As mentioned above, the 20 year term of a utility patent application does not start until the non-provisional application is filed. To prevent permanent abandonment of your invention, you must file a non-provisional patent application within 1 year of the filing date of your provisional patent application. Generally speaking, I recommend that the independent inventor seeking to license their invention file a provisional patent application. It is cheaper to file and gives you 1 year to market your invention before the inventor or licensee has to begin paying the more expensive fees associated with filing and prosecuting a non-provisional patent application.  


Prosecute Patent Application 

Within usually 6 to 15 months after filing your non-provisional patent application, it will be examined by the Patent Office. In almost all instances, the Patent Office will reject all or most of your broadest claims based on patents that they find in their search or patents presented to them in your IDS. In my opinion, if your broadest claims are allowed as filed, your invention was not claimed broad enough. There is nothing to gain by intentionally writing claims narrow enough to be allowed as filed.

At this point, you or your patent practitioner will begin the patent prosecution process. During patent prosecution, you or your patent pracitioner will present arguments to the Patent Examiner as to why your invention is patentably distinct over the references that are cited in the rejections of the claims. In most instances, amendments will be filed with modified or new claims that are intended to overcome the rejections.

If common ground cannot be met with the examiner by the second amendment, the rejections are usually made final, and a continuation application must be filed to continue prosecution or the case can be appealed. The patent prosecutioin process can go on for months, or even years, depending on the complexity of the invention, the prior art in the field, and the breadth of the claims desired or required by the inventor(s).  


Patent Issues 

Following successful patent prosecution, your patent will issue and your will be the proud holder of one or more US patents. Being the holder of 5 US patents and two of them being commercialized, I can tell you that it is worth the effort!


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