Inventors: Preparing to File a Patent Application
Entrepreneurs and independent inventors benefit from doing their own research and learning about the patent process before seeking guidance from a patent attorney. While a patent attorney should always be consulted prior to filing a patent application, there are several steps that can be taken by individuals before investing in the often expensive procurement process involved in obtaining a patent. The following guide will help you (1) determine whether patent protection is available to protect your idea; (2) determine what type of patent protection will best serve your intellectual property needs; (3) determine whether patent protections is, in your case, a wise investment; and (4) develop a strategy to approach procurement of one or more patents to protect your intellectual property.
(1) Determine whether your idea is considered patentable subject matter.
To determine whether patent protection is available to protect your idea, you must establish that your idea may be categorized as patentable subject matter. Ideas that may be protected with patents include novel processes, machines, articles of manufacture, chemical compositions, or ornamental designs.
A process may include software, such as a new mobile app; a new procedure, such as a novel way of purifying water; or a method of manufacture, such as a novel assembly process for a product. A machine or article of manufacture may include devices or parts to make devices that are novel, such as computer hardware, semiconductor fabrication, medical devices, active wear apparel, and any type of mechanical devices. Ornamental designs, such as the aesthetic characteristics of a dessert container, or the engravings on a jewelry cabinet, may be protected as well and also fall under the patentable subject matter category.
Subject matter that may not be protected with a patent includes mathematical formulas, laws of nature, abstract ideas, or discoveries of natural phenomenon. However, note that a new use a mathematical formula may be protectable. For example, discovering a new mineral is not patentable, although discovering a new use for a newly discovered material may be patentable. Similarly, abstract ideas or mathematical principals such as newly derived formulas that explain physical phenomenon are not patentable subject matter, but if a unique and non-obvious use for a mathematical formula is developed that idea may be patentable as a process or method of achieving the resulting task.
Once you determine that you have an idea falling into he category of subject matter that may be protected with a patent, it makes sense to determine what type of protection best suits your needs. In part, this step will help you in the prior art search or investigation process below.
(2) Determine whether your idea may be protected with a design patent, a utility patent, or both?
If you believe you have an idea that may be characterized as patentable subject matter, the next step is to figure out whether you will benefit from utility or design patent protection. Where the crux of your innovation is in its utility (i.e. its functionality) then you will want to protect that innovation with a utility patent. If your idea on the other hand is ornamental in nature (i.e. a design that adds aesthetic value to an existing product) then you will want to protect that design with a design patent. Of course, there may be some instances where it makes sense to protect your new concept with both a utility patent and a design patent. However, be careful about filing for both a design and a utility patent for the same idea, since one way to invalidate a design patent is to prove that the design is primarily functional- hence, discuss these options with your patent attorney to make sure you don’t jeopardize your intellectual property.
(3) Prior Art Search or Investigation: Discovering whether your idea has been disclosed before, and whether patent protections is, in your case, a wise investment.
You will want to perform a search. A search may begin with a regular search using any well known search engine. For example, Google terms that describe your idea to see what types of products or articles are out there describing anything similar. You will want to gather all the relevant information you find, including similar products sold online, or articles (whether academic or otherwise) disclosing relevant subject matter. Saving these files is important because if you decide to submit a patent application, you will need to provide the USPTO with what is known as an information disclosure statement (or IDS) in which you disclose all relevant information available that pertains to your invention and that may be considered prior art. We will discuss prior art and information disclosure statements in a later article. For now, know that you have to keep this information and that this information needs to be presented to the USPTO.
Once you have conducted this very broad search, and assuming you do not discover a device or product closely resembling your own, you may want to conduct a patent search in the USPTO database or other patent databases in order to identify patent documents or patent application publications that may prevent you from obtaining a patent, or may present obstacles during prosecution of your patent application. While patent attorneys often prefer using the USPTO’s database as a more effective solution to searches, other patent search engines exist, which are very user-friendly and provide a great resource to inventors. Particularly, some sites offer convenient pdf files for nearly every search result that is provided. See our resources links to the right of this page to access a variety of patent search engines.
While searching patent databases is not particularly difficult, there are tricks and strategies that patent attorneys develop over time, which help identify relevant prior art. Otherwise, you may find yourself looking at thousands of documents that bear some relevance to your idea but that are not the most pertinent prior art to focus on. Admittedly, prior art searches are never perfect, but a skilled patent attorney will help you find prior art that will likely require consideration before a patent examiner in order to obtain an enforceable patent.
A good search of patents and patent publications serves several purposes. First, a proper search will give you an idea of whether you have a truly unique concept or whether the idea has been disclosed before. If your idea has been disclosed before in a patent document or any other publication, you will save yourself the expense of seeking procurement and the expense of hiring a patent attorney to prosecute your patent application. Second, the search results will give you an idea of what type of developments related to your concept already exist or have been pursued in the past- this may indicate how strong of a market there may be for your idea. Additionally, you may discover that even though similar concepts have been disclosed, you have a unique feature that presents a new improvement over the prior art. Finally, you may be able to see what limitations or restrictions you may be entitled to in order to carve out protection for your design- if the prior art will limit you to a very narrow and specific embodiment of your idea, obtaining a patent may not prove to be a wise investment since it may be easy to design around your concept; conversely, if you find that you will be able to claim your concept broadly, then asking a patent attorney to help you draft a patent application may very well be worth the investment.
(4) Develop a strategy to approach procurement of one or more patents to protect your intellectual property.
After you have performed a patent search- or if you have decided not to (remember patent searches are not required), you will want to sit down with a patent attorney before you file your application. While you are allowed to file your own application, it is most often a mistake to do so on your own.
First, you will want to discuss your objectives with your patent attorney, and set up a plan. Figure out what type of patent application you will require, either a design patent application, or a utility patent application (sometimes both, and sometimes your idea may require more than one application, depending on your business model and the budget you have to work with). Talking to your attorney about your budget or limits to how much you are willing to invest in procurement will help your attorney guide you as to what plan for procurement works best in your case.
Second, discuss whether you will benefit by filing a provisional application or whether you are ready to file a non-provisional application. See our other articles discussing the differences between provisional and non-provisional applications.
Third, discuss other considerations such as non-publication requests and filing for protection abroad. There are different implications to filing for patent protection abroad, including costs and hiring counsel in other countries or regions. And while non-publication requests keep an application confidential during the application’s prosecution, an application that is not published (and thus kept secret) will be prevented from filing for protection in another country. Yet other considerations include applying for faster prosecution procedures, which typically require higher filing fees but present advantages under some circumstances. See our other articles in which we discuss issues like filing non-publication requests, filing for protection abroad, and the different programs that expedite prosecution of your patent application.
Our patent attorneys will be ready to review any search documents you have discovered, or we are prepared to perform a search on your behalf. Typically, the more thorough search you have performed, the better chances you give yourself to obtain a patent that will be enforceable and valuable.