United States Patent Prosecution Basics
What is a Patent?
A patent can be obtained on an invention, which can be either a functional thing or a process of doing something. Before you consider getting a patent, it is important to understand what a patent is and is not.
A patent is not a right to make, use, or sell the invention. You don’t need a patent to build your invention or launch your product to consumers. However, if you release your invention to the world, you risk letting others copy it and undercut your business.
A patent is a right granted by the government to prevent anyone else in the United States from making, selling, or using the invention. You can also use a patent to prevent someone from importing products covered by the patent into the country. A patent is a right to exclude others from profiting from the invention without your permission and protects against competitors copying your invention.
Is a Patent Right for Me?
So you’ve invented something, and now you’re wondering if you should get a patent for it. Having a patent can be a valuable way to protect your invention (and your business), but you should decide whether a patent is the best choice for you before you start down the road to obtaining one.
First, you must consider whether a patent is the right type of intellectual property for you. A patent can generally be obtained for any “process, machine, manufacture, or composition of matter.” More plainly, a patent protects functional things and methods. If what you have come up with is more like a brand name or identity, then you likely want to explore trademark protection. If what you have come up with is a creative or artistic work, or computer code, then you likely want to explore copyright protection (thought design patents can be obtained for certain non-functional features).
Then, you should consider the likelihood of getting a patent. To obtain a patent, your invention must be useful, new, and non-obvious. You should consult with a patent professional to evaluate the likelihood of success for your particular invention.
Patent Process Overview
The patent process has several distinct steps. First, you’ll typically work with your patent professional to draft the application. A good application should be highly detailed and cover everything that you are seeking to protect.
Once your application is submitted to the US Patent Office, it will be assigned to an examiner skilled in the field of your invention. However, there are far more applications than examiners, and it will likely be almost a year before you get your first office action (unless you take action to expedite).
An office action is the examiner’s response to your application. Most likely, your application will be rejected the first time. This is normal. Once you receive your first office action, you will work to respond to the examiner’s arguments and overcome the rejection.
For many applicants, their application is approved after this response. However, it may require several rounds of office actions and responses before your application is allowed, if it is eventually allowed at all.
It is important to keep in mind that the examination of a patent can often take years, and you should consider this timeline in building your IP and business strategy.
Priority and Provisional Patents
In patents, as with much of life, timing is everything. The United States operates on a first-to-file system, where the first person to file a patent application on an invention gets the patent. This means that even if you invent something first and keep it hidden in your garage for years, someone else can patent your invention if they file first.
Another important timing consideration is that the patent office evaluates whether your invention is new and non-obvious based on everything that exists as of your filing date (the “prior art”). This means that by filing earlier, you can reduce the pool of material that can be used to reject your patent.
One of the best tools for protecting your rights is the provisional patent application. A provisional application effectively holds your place in line by fixing a filing date for all the content in your provisional application on the date you file it. However, you must file your full utility patent application within one year of filing your provisional to claim the benefit of the earlier filing date. Only the content that was filed in the provisional application gets the benefit of the early filing date, so your provisional should be as complete as possible. As an extra benefit, you can mark your products “Patent Pending” once you have a provisional application on file.
Provisional vs. Utility Patent Applications
To optimize your patent strategy, you must consider the different options available to you. The most common type of patent is the utility patent, which covers almost all types of inventions. There are also design patents for ornamental features and plant patents for plant varieties, but these do not feature heavily in most people’s patent strategy.
A utility patent application must contain a complete description of the invention that would allow someone to make or use it by reading the patent. Part of this description should be drawings or descriptive figures of the invention. The utility patent application must conclude with claims, which are the formal description of your invention and define your scope of protection. The utility patent application is what will be examined and ultimately issue as a patent.
A provisional patent application has fewer requirements and several strategic advantages. A provisional application should contain as much description as possible and may include drawings. However, it is not required to contain claims. A provisional application is never examined or published and will not result in an issued patent. Nevertheless, it can be a powerful tool to obtain an earlier filing date and give you an additional year to refine your invention before filing a utility patent application.
What Are Patent “Claims”?
While a patent may be dozens of pages, the most important section is the few sentences at the end known as claims. Claims are formalistic descriptions of the patented invention and must include all the components of the invention and how they relate to each other.
The claims define the scope of protection granted by the patent. To win an infringement case, you must show that the allegedly infringing product embodies each and every element of a claim in your patent. If there is an element missing, then the other product does not infringe your patent. Because of this, a strong patent will have multiple claims that expand the scope of coverage to the maximum extent possible.
Because well-drafted claims make the difference between a powerful patent and a useless one, the initial claim drafting is a critical step in the patent process.
