If you have developed an invention and want to protect it, you need an experienced patent attorney who can guide you through the patenting process. Your application will either be a Utility, Design, Plant, or Provisional Application. During your initial consultation, our team will advise you as to which type of application is appropriate for your invention.
What is a Patent Application?
“Patent Application” refers to the legal and administrative proceedings involved in requesting that a patent be issued for an invention.
Determining Patentability: Patent Search
Before we file your patent application, we recommend conducting a search to ascertain whether or not your invention has already been patented. If an application has already been filed for the same or very similar invention, you will save thousands of dollars and time by not pursuing the application. We perform a search first before we determine if it is advisable to move forward with a patent application.
In some cases, your invention may be different enough from any prior creations such that moving forward with a patent application would be a wise and recommended move. We conduct a comprehensive search with the U.S. Patent & Trademark Office (USPTO). In addition to being able to determination patentability, the results from the search also provide us with additional relevant information that is often of interest in regards to the invention.
Once patentability is determined, we will proceed with the application process.
The Application Process
To receive a patent, an applicant must file their request with the USPTO. It is always advised that you work with a patent attorney due to the intense process. The filing requirements are detailed and specific and the entire process can take as long as three years and cost as much as $30,000. The Manual of Patent Examination Procedure contains the rules for filing a patent application, but you’ll want to work with a patent attorney to prepare this.
Contained in a Patent Application
A patent application must contain the following key elements:
- the specification
- the claims
- the abstract, and
- the drawings.
The specification is constructed of several elements and, with the help of the drawings, explains how to make and use the invention.
The elements of the specification include the following:
- Title of the invention. This should be brief, but also technically accurate and descriptive.
- Background of the invention. This should include the field or subject matter of the invention and a description of all relevant prior inventions. We advise our clients to refer to earlier inventions in order to be able to point out specific problems that their invention solves.
- Brief summary of the invention. This is an overview declaring what the invention can do. How does the invention solve the problems described as part of the background section?
- Detailed description of the invention. This should provide a thorough description of the structure and operation of the invention. It must be complete enough that persons of ordinary skill in the field could follow it to make and use the invention.
Collectively, these pieces form a narrative that describes and distinguishes the invention from any other. Every specification describes the invention so that someone knowledgeable in the field of the invention can make and use it without having the need to do further experimentation.
The specification must also disclose the “best mode” of how to create and use the invention. If the inventor knows of a better way to create the invention and fails to disclose it in the specification, that failure could result in the loss of patent rights.
The claims define the scope or boundaries of the patent. Detailed statements should explain what your invention covers. This is the most important part of the application in that what is stated in the claims section is the basis of your request for patent rights.
The application must also include an abstract that summarizes the invention.
Drawings need to be included with the application, if they are necessary for showing how the invention works. Some applications (such as for pure chemicals) will not need to include a drawing.
Drawings must illustrate every aspect of the invention specified in the claims section of the application. The USPTO has strict requirements for both claims and drawing. All patent applications must include a drawing if the subject matter permits.
Detail is Key
The patent application must be sufficiently detailed so that it allows a person with skill in the field to create and use the same product. The application must clearly define and distinguish what’s new about the item or process compared to what is already in existence. If the patent office denies a patent application, the applicant can seek to be reconsidered or they can appeal the denial to the Board of Patent Appeals and Interferences. A rejected applicant may also bring their case to a court.
What to Expect from the Patent Examiner
Each patent application filed with the USPTO goes through a rigorous process of examination. It will be assigned to a “patent examiner” (an employee of the USPTO), to ensure its completeness and validity. He or she will inspect the application to ensure that:
- the invention meets the requirements for patentability, and
- the application itself follows the required USPTO format and language.
This process typically takes between one and three years and during that time the examiner and your legal team and you will exchange letters or phone calls until you reach an agreement about which parts of the invention the patent will cover, if any.
Because of this rigorous scrutiny, it’s advised that you work with a patent attorney. There are numerous discussions involved in receiving a patent and your attorney will be able to walk you through all of them.
It should be noted that once you file for a patent, the process is not complete. Under United States patent law, when a person files for a patent the legal document, called a “provisional application” establishes an early filing date, but this does not mature into an issued patent until the applicant files for a regular non-provisional patent application within one year.
The provisional patent application can only be pending for 12 months prior to becoming abandoned. Thus, filing a non-provisional patent application that claims the benefit of the provisional application must be done within 12 months. Failure to do so may forfeit your rights to claim the benefit of provisional application. Such benefits of the provisional application include:
- ease of preparation,
- lower cost, and
- the ability to use the term “patent pending”
One you file for the provisional application you are able to use the term “patent pending.” This can only only be legally used when a patent application has been filed, and may have significant marketing advantages for your product. This marking can also serve as notice to potential infringers who copy your invention and that they may be liable for damages once the patent is issued.
Having prepared, filed, and prosecuted patent applications (domestic and foreign), our firm is highly respected for its knowledge and patent prosecution.
Our attorneys have experience in all areas of design patents, including:
Intellectual Property Patents
Mechanical Device Patents
Medical Device Patents
Patent Portfolio Management
Patent Office Actions
Reilly Intellectual Property Law Firm
Reilly Intellectual Property Law Firm provides patent services to protect the inventions that change and shape our world. We handle handles patents, trademarks, copyrights and licensing legal services in Denver. Our experienced attorneys provide strategic guidance, patent counseling and prosecution, new product clearance and licensing, as well as counsel regarding patent enforcement and how to avoid possible infringement issues.
We provide solutions that anticipate our client’s need to protect their intellectual property so that their business thrives. We would love to work with you to develop a dynamic strategy that addresses your patent, trademark, copyright, and licensing concerns.