How to get from zero to patent pending all by yourself.
Patent Pending is the first step to patenting your idea.
In this guide, we will discuss how to patent your idea and how to get a united states patent. More specifically, this article will address how to get patent protection by becoming “Patent Pending”, which is the first step in securing a patent.
Because the patenting process is complex, I have dealt with various stages of patenting your idea other blog posts. In this article, I’m going to discuss just the beginning stages of how to patent an idea. That means we’re going to discuss how to protect your ideas using the patent system.
Patent Pending Pic
What does Patent Pending mean?
A patent itself is a tool that inventors use to protect their invention from copycats. If you have an issued patent, which means a patent that has completed the application process, has been granted, and issued, you are legally allowed to prevent others from copying your idea. Moreover, the patent laws provide for pretty substantial money damages from patent infringers. This means that having an actual patent gives you strong protection against people who would otherwise copy your idea.
The actual patent application process is not always quick. Occasionally, I can get a patent to issue in under a year, but that is the exception. More often, a patent application takes two to four years to complete, and during that time, you only have partial rights to assert your patent. In other words, up until the date that your patent issues, you cannot initiate any sort of court proceedings against an infringer. You are able to warn your infringer that they are infringing a patent that is likely to issue, and this does have an effect on the eventual money awards for damages, but it does not allow you to step in and prevent them from acting until the patent issues.
At this point, people often ask what you even get out of being “patent pending”. Even though it seems like it doesn’t give you any power, it does one very important thing: it establishes that you were the earliest inventor of your technology, and it doesn’t matter how long the application process lasts, you will be the only person who can get a patent on your device.
Therefore, anyone else who sees your invention is prevented from trying to patent it themselves. You have established what is known as “priority.” Priority is the biggest benefit to being patent pending.
What do I need to do to become patent pending?
The short answer is simple: you need to file a patent application. Okay, so what do we need to do to file a patent application? Well, this is where it becomes more complicated. There is more than one type of patent application, and the type you choose has a lot of bearing on how this process goes.
What are the different types of patent application?
There are a whole variety of types of patent application that are relevant here: a provisional utility patent application, a nonprovisional utility patent application, a design patent application, an international or PCT application, an international design registration, are the types of patent application that are relevant to 99% of inventors. The key to becoming “patent pending” is that you file at least one of these applications.
This is where it gets a little more complex, because the best way to become patent pending will depend on your case and your precise situation. We’ll look at the above types in turn:
Provisional Patent Application
A provisional patent application is a tool whose only purpose is to establish priority. In order to establish priority, what we are trying to do is to prove that you “possess” the invention, and you recorded it by filing the provisional patent application. So what does it mean to “possess” an invention?
Possession of the invention has a technical definition in patent law, that is known as reduction to practice. Reduction to practice is a term of art that means that you have either actually made the invention, or you have described it in sufficient detail to allow someone to make it themselves without “undue experimentation”. This is a key detail- it means that you have to fully and carefully describe your invention in order to prove that you possessed it.
In practice, this means that you must describe the invention enough to allow anyone with sufficient skill in your type of technology to use or build your invention without having to “invent” anything themselves.
A provisional patent application is not a highly formal document. In fact, most provisional patent applications are not inspected or examined. They are simply a placeholder that you file until you are able to file a formal, or nonprovisional patent once you have the opportunity (as long as it is within one year of filing your provisional patent application.
Therefore, it is possible for individuals or inventors to draft and file a provisional patent without much help from an attorney. As I mentioned above, the only defining principle of a provisional patent is that it provides sufficient written and pictorial description to support someone who wants to make or use your invention.
A provisional patent application will eventually need to become a nonprovisional patent application. The relationship between the nonprovisional patent application and the provisional patent application is that every detail in the nonprovisional must be “supported” by some reference in the provisional. This is the common stumbling block- if a detail fails to make it into the provisional patent application, you cannot then add it to the nonprovisional because this constitutes “new matter”, which cannot be added to the application later.
For example, if you submit a provisional for a device that has a propeller on it, it is sufficient just to show a picture of the propeller in the provisional application, even without using words to describe it, because the picture of the propeller is a sufficient disclosure to support the nonprovisional without adding new matter. However, suppose it is important that the propeller is 4 inches in diameter. You can only put that information in the nonprovisional if it shows up somewhere in the provisional first. So, if you only have a picture of the propeller, you could only discuss the diameter of the propeller if it is labeled on the picture somehow.
This particular detail is why I implore people to at least have a patent attorney look at any provisional patent application before it gets filed. I help clients who self-draft all the time. By spending an hour of my time looking over the application, we can prevent the omission of some key details that end up making a big difference in the end.
Many attorneys recommend never filing a provisional patent application because of the risk of omitting key info. I believe that as long as you work with a knowledgeable patent attorney, the risk is very limited.
Provisional patent applications are also very affordable to file. Most provisional patent applications cost $75 as of the writing of this article.
In total, a provisional patent application is a great choice if you want to become patent pending in as soon as possible, while incurring the least upfront expense.
Provisional Patent
Nonprovisional Patent Application
A nonprovisional patent application is a full, formal patent application that will be examined by an examiner at the United States Patent and Trademark Office. Because of the large number of formalities that go into a full patent application, I rarely recommend that an inventor self-draft a nonprovisional patent application.
A nonprovisional patent application is mainly distinguished by its inclusion of “claims”. A claim, in patent parlance, is a single sentence that describes the elements of the invention. The claim is the thing that describes what you own. It is a technical description of the exact thing that you own, and any other thing that meets that description would be considered to infringe on your patent.
Because of the technical nature of the claims, they are extremely challenging to draft for most attorneys, and it takes years of practice and developed skill in order to properly draft a set of claims.
Another aspect of the claims is that every element in the claim must be supported by written description that appears elsewhere in the document, as well as in the provisional application, if there was one. A nonprovisional patent application can be filed by itself without having to claim priority to an earlier provisional application. In other words, a provisional application is an optional first step to filing a nonprovisional application.
When I personally draft a provisional application, what I am actually drafting the the first half of a nonprovisional application. When it’s time to file the nonprovisional, I simply have to draft the claim set, and we have an application ready to file. Through this method, I am able to avoid duplicating any efforts, and we can get a really good provisional on file, while breaking up the expense of the nonprovisional over more time.
Finally, all of what you have read applies to utility patent applications. A utility application is the type of application that is proper when the function of the invention is the defining characteristic. In other words- if your invention can appear in more than one form while still accomplishing the same function, then a utility patent is in order. Alternatively, if the particular shape or form of the invention is the defining characteristic, then a Design patent is in order.
Nonprovisional patent
Design patents
A design patent is different from other types of patents because a design patent protects “the ornamental design” of a functional object.
design patent for iPhone
A design patent has very little written description. It is a fairly simple document that states that you are the inventor of anything that appears the same as the drawings that you file in your design patent application. Actually, there is a lot more nuance than that, but in principle, you get protection over things that look like the figures you file.
Design patents are simpler and less expensive to get than a utility patent. The difference is significant, where preparation of a typical design patent may be only 10-20% of the cost to prepare an ordinary utility patent application.
One might ask, why would you want a design vs. a utility patent? The key to this question, as alluded to above, is that a utility patent protects things that have a particular function, while design patents protect things that have a particular form. Therefore, if your design must have a particular appearance to do its job, then a design patent is the way to protect that.
PCT International Patents
A PCT is a sort of combination of a provisional patent application that is filed and can be used in almost all countries, and a nonprovisional application that is examined. It is an application that you file with the World Intellectual Property Organization, and it is like a provisional that you can send to as many countries as you want.
Without going into it too much, the process can be used to essentially file one patent in many countries. However, a provisional patent application buys you just 12 months, while a PCT application buys 30! You can file the PCT application and take no further steps for up to 30 months, all while preserving your right to file your application in almost as many countries as you want.
All told, there are many circumstances that make the PCT application a very attractive alternative as an application method.
Hague Agreement Design Registration
A Hague Application is much like a design patent application in combination with the WIPO system of electing countries. It is a design patent, so you are registering images. To get protection in other countries, you simply elect them in you application, and pay the appropriate fee.
Registration is very quick, and it is a very effective way to gain registration in multiple jurisdictions with a single application. Again, this type of application would only be suitable in cases where form is the defining characteristic, as opposed to function.
How to patent an idea
How do I actually become patent pending?
Okay, you’ve read this much, and I haven’t told you how to get to patent pending yet. I’m not holding out, I’m just laying groundwork. The most efficient, and first thing you can do is to sign up for a free consultation with a patent attorney.
Good patent lawyers will be able to listen to your situation and recommend which of the above types of patent application will make sense in your particular case. Hopefully, you will have already determined which course you would like to take, and the patent lawyers can confirm your opinion.
In any event, speaking directly to a patent attorney about your idea can be extremely helpful to your understanding of the entire patent process, as well as letting you know what costs to expect for the various services.
Truly- no matter whether you end up working with an attorney at all in your patent journey, at least meet with one during a free consultation to learn as much as possible on how to proceed.
I want to do it myself
That is fantastic! Full stop. You can absolutely do it yourself. Here is what you do:
- Write up as much about your design as you can. Everything you have ever put on paper about your design, and everything you can think up now, such as the state of the art, how you had the idea, the problem it solves, the key features and elements, sketches, drawings, prior art you’re aware of, and anything else that comes to mind, should go on standard 8.5×11 sized PDFs.
- Set up an account with the USPTO to file your documents as an unregistered e-filer, which you are allowed to do if you are the inventor. You follow the prompts, and file your documents.
- Pay your filing fee at the end of the patent filing process.
- Save your filing receipt.
- Within 9-10 months of your filing date, begin to consider which patent lawyer or law firm you would like to hire.
Within one year of your filing date of your provisional patent application, you must file a nonprovisional application that claims priority to the original. This step will require the assistance of a patent lawyer to complete the patent process.
What is the purpose of becoming patent pending?
The end goal, as we mentioned above, is to establish that you have priority, and that you are the first inventor of your million dollar idea. The second important aspect of being patent pending is that you get to mark your product as “patent pending”. This simple marking can have powerful effects on marketing and sale efforts. In some cases, an inventor may choose to file only a provisional utility patent, without any real plans to file for a non provisional patent application.
Questions & Answers
What does the term patent pending mean?
It means that you have filed at least one type of patent application.
Can I say patent pending?
Yes, once you have filed an application.
How long does a patent remain pending?
It is pending as long as there is a live application. Therefore, that means within one year of filing your provisional, or, for a nonprovisional, it means the entire time from application up until either abandonment or issuance.
What is the difference between patented and patent pending?
Patented means that the patent application process is complete, and the patent has issued. Patent pending means that you are still in the application process.
How much does it cost to patent an idea?
Depending on the type of application, it could cost as little as $1000, or as much as $40,000.
Can you patent an idea for free?
No, there will always be some cost.
What is a poor man’s patent?
A poor man’s patent no longer has any legal effect as of 2012.
Is it worth it to patent an idea?
The average sale price of a patent is between $200,000 and $300,000, which means that patents have fantastic return on investment.
Conclusion
Honestly- it is challenging, but doable. The fasted way to become patent pending is to draft and file your own provisional patent.
