The journey from a spark of creativity to a legally protected invention is crucial. Successfully going from one end of that spectrum to the other requires a basic framework and understanding of the patent process. With that in mind, we want to guide you through the essential steps of patenting a new invention as we help you Power Your Ideas®. Determining if your invention is eligible for a patent is a good place to start.

The Process of Patenting a New Invention

The journey from a spark of creativity to a legally protected invention is crucial.

Catherine Cavella, ESQ.

A Step-by-Step Guide For Newcomers to the Process of Patenting A New Invention

The journey from a spark of creativity to a legally protected invention is crucial. Successfully going from one end of that spectrum to the other requires a basic framework and understanding of the patent process. With that in mind, we want to guide you through the essential steps of patenting a new invention as we help you Power Your Ideas®. 

Understanding Patent Eligibility

Determining if your invention is eligible for a patent is a good place to start. In the U.S., patents are available for inventions that are “novel,” “useful,” and “non-obvious.” The invention could be a product, a method, or a machine. But remember, not everything is patentable. Laws of nature, natural phenomena, and abstract ideas are not eligible, no matter how novel, useful and non-obvious they are. So the first step is determining whether your invention is patent-eligible subject matter (not a law of nature, natural phenomenon or abstract idea).

Next, to help you gauge the likelihood of getting a patent, you can research existing patents and patent applications, aka “prior art.” Prior art research (sometimes called a “patent search”) helps identify whether your invention is new or unique enough to be patented. Use the USPTO’s online database for this research. If your invention is too similar to one already published, it may not be eligible, even if the prior invention was never patented. 

A word about patent searching: Note that patent applications are unpublished for 18 months. That means you can never research 100% of the prior art. So it’s important to understand no patent search is perfect – with patents, there is no certainty. So it’s important to file your application as soon as you can and avoid delays. The longer you wait, the more priority you lose and the more unpublished prior art you will have standing between you and your patent getting granted.

Other Considerations

It’s also essential to understand the types of patents: utility, design, and plant (read our previous blog to learn more about each type and what they protect).

Once you have decided your invention is eligible for a patent and you know which type to pursue, it’s essential to consider what other elements of protection you may need. For example, you will need an international patent application (PCT Application) if you plan to license or market your invention globally. Keeping your invention confidential until you file a patent application is wise to prevent losing your rights. Additionally, set aside time to read more about the process and the criteria for patentability. Look into concepts such as non-obviousness and novelty. 

Assessing the commercial potential of your invention should drive your patent strategy. Thorough documentation of your invention will help you (and your attorney) during the patent application and prosecution process.

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Preparing and Filing a Patent Application

After confirming your invention is eligible,  prepare and file a patent application. This includes a detailed written description, patent drawings (usually), and patent claims. The written component must clearly describe how to make and use your invention and how it differs from previous inventions. The drawings must comply with the USPTO rules (have them done by a patent draftsman). The patent claims are numbered paragraphs at the end that describe the boundaries of your patent. Patent claims are the most strategic and critical part of the application – they have a big impact on the value of your patent.

The two main types of patent applications are provisional and non-provisional. A provisional application may be informal and secures an early filing date, but it never becomes a patent. A non-provisional application is more formal and is required to get a patent. To get the benefit of a provisional’s early filing date, a non-provisional must be filed within 12 months of the provisional application. The non-provisional application must include claims that define your invention’s scope (boundaries). The application process can be challenging, and many inventors seek professional help. It’s crucial to draft your application carefully to protect your invention. If you plan to file an international application, it is important to file it when you file your U.S. non-provisional or you may lose your international rights.

Once you file your application, if you have complied with the basic rules you will receive a Filing Receipt in the mail – save it! Your filing receipt confirms your priority date, which determines what is prior art to your application. Pay attention to your application’s specific requirements for drawings and technical details when filing to make sure your filing date is your priority date. At this point, you are patent pending – congratulations!

After Filing – What’s Next?

Filing the application is just the beginning of the process. If you did prior art research, you will need to file an Information Disclosure Statement (IDS) – we recommend 3 months after filing. Expect your non-provisional to be published 18 months after your earliest priority date (your provisional filing date, if your non-provisional claims priority to your provisional). Your non-provisional will eventually be assigned to a USPTO Patent Examiner, who will look for reasons to reject your application. Prepare for the patent examination process, and do not be discouraged! Office Actions (rejections) are part of the process – expect at least two. Respond promptly to any USPTO communications or requests for additional information. Finally, remember that obtaining a patent can be a lengthy process, often taking several years. Strategic claim drafting based on prior art strengthens your patent application. Expect to amend your application in response to Office Actions. 

Patent Grant and Post-Grant

Once you and the Examiner agree on patent claim language, the Examiner will issue a Notice of Allowability, and you’ll have the opportunity to file a continuation application to keep your patent family alive (a good idea if you want to maximize your patent protection). Then you will pay your patent Issue Fee, and your patent will be granted. After grant, patent maintenance fees will be due at 3.5 years, 7.5 years and 11.5 years if you want to get the full 20-year scope of your patent. Because there is an economic advantage to holding a patent, map out your broader patent protection strategy and how your patent fits into your business model. 

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Catherine Cavella

Since 1992, Catherine Cavella, Esq. Her focus on Trademark Law and Copyright Law for the last few decades gives her deep insights into the fundamental principles behind the rules. Catherine regularly writes about new developments in trademark law, copyright law, and internet law.

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