How to apply for a patent in the US

How to apply for a patent in the US

April 13, 2017
Walker Weitzel
Patent Law


How to apply for a patent in the US

This post is for people who do not have a lot of exposure to patent law or the patenting system but have an invention that they would like to patent. I will describe the steps to the entire patenting process, and give you helpful insights where I can. These are the steps that I go through with most of my clients. The patenting process can be complex and case specific, so only your lawyer can really tell you the best course of action for your specific case. However, the following process is what I generally recommend when people come to me with an invention that they’re thinking about patenting. These steps are for a utility patent. The process for a design patent, and design patent vs utility patent will be covered in an upcoming article.

How to apply for a patent in the US step 1: Have an idea and develop it into an invention.

There’s a common refrain among patent lawyers that ideas aren’t patentable. What they mean is that an idea has to be developed to the point that it’s useful to others. For example, the abstract idea of a plane as a way of transporting people through the sky isn’t very useful. The inventor needs to work out how it operates so that we can actually make and use it. The inventor needs to tell us that it uses wings to stay up. A time machine would not be patentable unless the inventor can tell us exactly how to make one for ourselves. The inventor doesn’t need to build a working example per se, but they need to be able to describe in detail how it would work. In short, plans are enough, but they need to be thorough, and a working version is better.

How to apply for a patent in the US step 2: Contact a patent lawyer early for a free consult.

If you have an invention, you have a right to a patent, but you can lose that right by waiting to long to file. You want to find a patent attorney while you are still developing your idea, and let them know what you are working on. A patent lawyer can tell you what you need to do to protect your right to file. They can also give you some cost estimates for the process so you can start thinking about your budget and determining if patent protection makes financial sense. I recently wrote about the value of free attorney consultations for those interested in further reading.

How to apply for a patent in the US step 3: Perform a patent search and get a professional opinion.

Inventions have very specific definition under US law. They are required to be useful, novel, and nonobvious. Therefore, the existing technology is going to have a big impact on whether you can successfully patent yours. It is possible to just file without looking into the prior art, as it’s known, but I highly recommend doing some research to determine if your patent application is likely to succeed. That means that you need to determine how your invention compares to all prior inventions, and that means doing a patent search. Sometimes inventors will do their own searches, and sometimes they’ll have a professional do it. The important thing is to find the 10-20 pieces of technology most closely related to your invention. We like to search both patent databases around the world as well as nonpatent literature to see what is out there. Once you have the relevant prior art compiled, I recommend getting a professional opinion from a patent attorney on how the prior art is likely to impact patenting success. A patent lawyer will look at the prior art and render an opinion on whether your invention would be considered useful, novel, and nonobvious by the USPTO according to patent office guidance and existing case law. A patent search and opinion will likely cost $1000 to $3000, but the complexity of the invention and rates of the attorney you are working with obviously can impact that. For the curious, I publish my flat-fee pricing guide. Doing a thorough search yourself can be a good way of mitigating cost, but I still recommend having an attorney do an opinion on your search findings.

How to apply for a patent in the US step 4: Provisional patent application.

I generally recommend applying for a provisional patent before filing a full formal nonprovisional patent application. It incurs an extra filing fee (currently $130 for most of my clients), but what you get in exchange is a one-year extension before you have to file a nonprovisional patent application. In that year you can test your technology in the marketplace, either by selling it yourself or testing the market for licensing partners. You can talk to manufacturers and marketers to determine how you might make and sell your invention. Also, you get to defer a huge portion of the application costs for that year, so it is easier from a budgeting standpoint as well. A provisional patent application does not give you any actual intellectual property rights- you don’t own anything yet. It does, however, establish that you possessed the invention on the filing date, and no one can swoop in take it from you. A provisional patent application is just a very thorough disclosure of everything you know about your invention, and a good patent attorney will even attempt to keep it broad enough that yet to-be-determined equivalents of your invention or its components are covered. Understand that you can only rely on the material in your provisional application, so you want it to be thorough and well drafted. I highly recommend having a qualified patent attorney draft the provisional application. Once you have a provisional patent application filed, you can say you have “patent pending.” A good provisional patent application will cost $2000 to $6000, depending.

How to apply for a patent in the US step 4: Nonprovisional patent application.

The nonprovisional application is where you describe the intellectual property that you own. You do this in “claims,” which are carefully worded descriptions of the invention that stake out the boundaries of your property rights. A nonprovisional application is quite formal, and requires a significant amount of paperwork and back-and-forth with the patent office. A patent examiner at the USPTO will compare your invention to the prior art and evaluate your application for technical and substantive correctness. A skilled patent attorney is crucial to this step. Adding claims to a provisional application in order to file a nonprovisional, together with filing, will cost an additional $2000 to $6000. How to apply for a patent in the US step 5: Patent Prosecution This is the process of making sure that your patent gets pushed from the application stage through to issuance. As I mentioned, the patent examiner will be looking at your application, and they will likely raise objections or rejections for various reasons. Very few patents are granted as filed. They almost always require some back and forth with the patent examiner. At times, it can be minimal- a couple of technical mistakes corrected, and striking a couple of claims is enough to satisfy the examiner. Other times, it can be a lengthy battle that might involve several rounds with the examiner and even moving up the chain to the Patent Trial and Appeals Board or even into court. This is very rare, but some very determined patent applicants will do it, and it might be worth it if they have a very valuable piece of technology. It is difficult to estimate the cost of patent prosecution because it is entirely case-specific, but the inventor does have some say in it. If you are aggressively claiming a very broad definition of your technology, then you can expect more pushback. If you are only claiming very narrowly, then it can go through pretty easily. A patent prosecution attorney will work your application all the way through to issuance, which is where you will get a patent number and actual intellectual property rights. Normally $1000 to $5000 in prosecution costs, depending.

How to apply for a patent in the US step 6: Patent maintenance.

Patent maintenance technically only requires paying maintenance fees at 3.5, 7.5, and 11.5 years. If you fail to pay the maintenance fees, the patent will eventually go abandoned. However, throughout ownership, it is good to remain vigilant in making sure that others are not exploiting or infringing on your patent. Again, this is extremely case-specific, but you have worked very hard for your limited monopoly over your invention, so you want to make the most of it.

There you have it- a brief overview of how to apply for a patent in the US. I will be happy to answer any questions in the comments section, or feel free to contact me directly if you need specific guidance on your case.

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