It is highly recommended that non-attorneys seeking to register a patent not attempt to do it on their own but to seek the assistance of a qualified patent attorney.
For educational purposes what follows is a brief outline of the steps that must be followed in preparing and submitting an application to the United Stages Patent and Trademark Office (USPTO). (first, review the basic requirement to qualify for a patent).
Describe the Invention on Paper
Prepare a written description of the the idea. Get two people to sign as witnesses. Depending on the invention, you may also need to build and test it, documenting all of these efforts in the written description.
Assess the Commercial Potential of Your Invention
Why bother with the expense and effort if the invention has no commercial potential? Be honest with yourself. Is there an actual market for it?
Decide if the Invention Is Novel
Search for U.S. patents. Most patent attorneys hire professional searchers to carry out patent searches for their clients. Doing that provides reliable information. It is easy, however, to do preliminary research using these internet search tools.
- CLICK HERE to go to the official USPTO patent search page
- CLICK HERE to go to the Google patent search page (intuitive and easy to use).
Once the patent search is completed, you can compare your invention with previous patents and then answer two questions (if the answer to either is "no" you will be wasting your time and money working on the application).
- Is it Novel? Is your invention different in some important part aspect from previous inventions?
- Is it Non-Obvious? Would someone with ordinary skills in the field of your invention consider your invention to be obvious
Provisional Patent Application (optional):
- Successfully taking an invention to market requires the ability to talk to people about the product. It is impossible for a manufacturer or retail buyer to commit to a product without seeing it. Once an inventor discloses the idea, however, he or she has one year to patent before the idea is deemed not be "novel". Full blown applications, however, can cost many thousands of dollars and in the early stages most invention designs are still evolving. Provisional patent application may be a solution
- A "provisional patent" application can be filed at a fraction of the cost of a full blown application
- The provisional application is simpler to complete that the full blown application. CLICK HERE to view a YouTube video from the government's patent office (USPTO) on how to prepare a provisional patent application
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- A provisional patent will not actually become a patent until a full blown regular application has been filed and approved
- A provisional patent is like a place holder that lays a claim to the filing date and the invention. It provides protection for one year. It gives the inventor time to develop the product and gain market information before making a final decision about filing the full blown (expensive) application.
Drafting the Regular (Non-Provisional) Patent Application
Here is where you need to take a deep breath and perhaps get some outside guidance.
Broadly speaking, there are four main tasks involved in drafting a patent application:
- Describe the invention's background, including why the invention is different from other relevant inventions and deserves a patent
- Illustrate the invention through drawings, flowcharts, or diagrams (many inventors assign this task to graphic artists, though it can be done with some self-help resources found through Google searches).
- Describe the invention's physical structure (if any) and how it works.
- Patent Claims: Describing exactly what aspects of the invention the inventor wishes to patent.
- Patent claims establish the boundaries or scope of an invention. When a patent owner sues for infringement it is because someone has made, used, or sold an invention that has all of the elements in one of the claims. The claim(s) must commence on a separate sheet and should appear after the detailed description of the invention. Each claim must start with "I claim," or "the invention claimed is" or the equivalent. Each claim must begin with a capital letter and end with a period. Periods may not be used elsewhere in the claims except for abbreviations (thus, the entire claim must be a single sentence).
- Claims should be arranged in order of scope so that the first claim presented is the least restrictive (the "independent claim") followed by any "dependent claims" grouped together to the claim(s) to which they refer. For example, here are claims that might be made for the invention of the peanut butter and jelly sandwich (with claim "1" being the "independent claim" and claim "2" a "dependent claim")
- A sandwich comprising: 2 pieces of bread, peanut butter and jelly, wherein the peanut butter is spread on 1 piece of bread and the jelly is spread on the other piece of bread and then the two pieces of bread are put together so that the peanut butter and jelly are touching.
- The sandwich of claim 1 further comprising: bacon, lettuce, tomato and fluff, wherein these ingredients are disposed between the peanut butter and jelly.
The first three tasks involve no particular legal skill. Writing patent claims, however, is a little different. These claims describe the invention in a way that will later be used to determine whether someone else is infringing on the patent. The inventor may want to have a patent attorney or agent review the claims before they are submitted to the Patent Office. The Patent Office will write the claim -- for free -- based on the rest of your application.
CLICK HERE to go to the USPTO patents page which contains much useful information relevant to filing an application. It also has links to the other relevant pages (including the link for actually filing the application electronically)
Deal with the Bureaucracy until Your Patent Is Issued
After you file the application, you must respond to questions and objections raised by the Patent Office and negotiate for the best patent you can get. You may want to get some professional advice -- especially if the patent examiner seems particularly obstinate -- but in many cases the process is generally straightforward and doesn't involve difficult legal principles.
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