This article has been written by Ayush Tiwari, a student of Symbiosis Law School, NOIDA. This article elaborates on what a patent is, its types, and will help in offering a basic understanding of how a patent can be obtained and the crucial steps involved in the patenting process.

It has been published by Rachit Garg.

Introduction

Are you looking to protect your invention with a patent? If you have an invention that you believe is unique or revolutionary, then you should consider filing for a patent. Obtaining a patent in the United States is a key step in protecting your invention or innovation from unauthorized usage or exploitation if you are an inventor or innovator. A patent is a legal document that grants exclusive rights to an invention. It gives the inventor the right to prevent others from manufacturing, using, or selling the invention without the inventor’s permission.

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In the US, the US Patent and Trademark Office (USPTO) is responsible for issuing patents. In this article, we’ll discuss the process of getting a patent, the steps involved, and what you should know before filing, although the procedure can be complicated and time-consuming. This article will help in offering a basic understanding of how a patent can be obtained in the United States as well as the crucial steps involved in the patenting process. An individual may protect their invention and acquire the exclusive rights they need to grow in the marketplace by taking a few simple actions and taking the required measures.

What is a patent

A patent is a form of intellectual property protection that grants the inventor exclusive rights over an invention for a limited period of time. If an individual has an invention, such as a new and technical solution to a problem, a novel product, or an innovative method of achieving greater outcomes with some advancement in technology, having a patent on their name for the invention provides them with the ability to exploit their invention for a certain period commercially, giving the inventor an advantage over the invention for a certain period, and also provides them with the right to decide whether or not the invention can be used by others and under what conditions. 

Article I, Section 8 of the U.S. Constitution states that “Congress shall have power… to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.” So, it can be said that since the passage of the United States Constitution, the significance of granting monopolies for novel innovations has been acknowledged.

Having a patent in the United States for one’s innovation gives one the right to prevent anyone from using, selling, or importing the invention in the United States for a limited period of time. Patents are typically granted for a period of 20 years from the filing date of the application. The key to obtaining a patent is that the invention must be novel, useful, and non-obvious. As it is a right to exclude others, that is, one can prevent people from utilizing the invention without permission, which is patent infringement. It can also be referred to as a negative right. 

In continuation of the provision given in the Constitution, the Patent Act (35 U.S. Code), which established the United States Patent and Trademark Office (the USPTO), governs and oversees the issuance of patents in the United States. In order to obtain a patent, an inventor must submit a patent application to the USPTO. The patent application must include a detailed description of the invention as well as any drawings or diagrams that are necessary to understand the invention. Once the patent application is submitted, the USPTO will review it and determine whether or not the invention meets the required criteria. If the invention is deemed patentable, the USPTO will grant a patent.

Types of patents

In the US, there are three types of patents that can be granted: utility patents, design patents, and plant patents.

Utility patents

A utility patent is the most common type of patent and is granted for any new and useful process, machine, article of manufacture, or composition of matter. Utility patents also cover new and useful improvements to existing inventions. Utility patents, usually referred to as “patents for invention,” are the most prevalent type of patent. They are issued in connection with innovative and useful procedures, machinery, manufacturing processes, substance compositions, or improvements. Utility patents protect inventions such as computer software, investment strategies, medical equipment, tools, chemical compositions, genetically altered life forms, and improvements.

Utility patent holders have the right to prevent others from creating, using, or selling their innovation for a period of 20 years from the day the patent application is submitted. This sort of patent requires maintenance costs, making it more expensive than a design patent.

Although utility patents provide comprehensive protection against potentially competing inventions, obtaining them can take two to three years. The subject matter of a utility patent application must be useful in order to be granted a patent. Traditionally, this meant operability, practicality, and usefulness. In terms of operability, even if a great innovation has both practical and beneficial uses, it will not be given a utility patent. The term “practical use” refers to actual usage or real-world application. This element is easily established for many sorts of innovations, but it can be more difficult to establish for chemical compounds, which are sometimes developed before their practical use is determined. The beneficial use requirement of the utility patent, which prohibited immoral or deceiving innovations. Utility patents can be obtained in the following categories:

  1. Machines or apparatuses- Devices in which components interact, such as automotive gearboxes, machine tools, appliances, and so on.
  2. Processes- Methods or techniques utilized in the production of a device or product, as well as computer software used to achieve some tangible result.
  3. Articles of manufacture- Articles having no moving components, such as soap dishes, water-spray nozzles, and bottles.
  4. Compositions of matter- Compounds such as plastics, medicinal compounds, and metal alloys are examples of matter compositions. This category also includes specific types of living forms, such as single-cell and multicellular creatures, as well as vertebrate animals.
  5. Computer software- This subject matter was formerly said to be unpatentable due to Supreme Court rulings that caused uncertainty about whether software constituted an invention, a formula, or an algorithm. In deciding whether the whole process or technique is patentable, more recent Supreme Court opinions have focused on the patent claims as a whole rather than whether they contain a mathematical formula, and since then, in many cases, patents have been granted to software.

Design patents

A design patent is granted for any new, original, and ornamental design for an article of manufacture. Design patents, as opposed to utility patents, which protect the function or functioning of a machine or device, protect the physical and aesthetic appearance, or, in an easier way, the look of the product. This look might take the form of a shape, color, ornamentation on the surface, or a combination of them. A design patent enables the owner to prohibit anyone from creating, using, or selling the patented design for 15 years after the patent is awarded. This type of patent doesn’t require any maintenance fees. Design patents are becoming more popular, as since 2006, around 23,000 have been granted each year. Samsung, Sony, Nike, Procter & Gamble, Goodyear, and Microsoft are among the companies that frequently seek design patent protection. Design patents are often less expensive to obtain than utility patents and are issued significantly sooner. However, the extent of protection varies and is often more limited.

There is no necessity that the design be creative or visually appealing; merely that it be primarily decorative in nature. If the overall look of the design is governed by performance, then the design is practical or functional and hence not patentable. However, certain products, such as automobile wheels and cell phone housings, are a mix of both functional and ornamental components, and the design features are thus patentable.

Inappropriate Subject Matter for Design Patent

A design for an item of manufacture that is principally determined by the function of the article lacks ornamentality and is not adequate statutory subject matter under 35 U.S.C. 171. Specifically, if it was neither a unique or distinctive shape nor the appearance of the object at the time the design was made that wasn’t demanded by the function that it serves, the design lacks ornamentality and is not adequate subject matter. One such case is Best Lock Corp. v. Ilco Unican Corp. (1996), which displayed a key blank design. In an infringement proceeding, the Federal Circuit Court of Appeals ruled that the form of the blank key blade was governed by function, and therefore the design was not aesthetically pleasing or ornamental. However, some goods, like automotive wheels and cell phone housings, combine both functional and aesthetically pleasing components, making the design aspects patentable.

Furthermore, 35 U.S.C. 171 requires that a patented design be “original.” A design that is clearly based on a well-known or naturally occurring product or person is clearly not original, as required by the law. Lastly, design patent applications should not include subject matter that might be regarded as objectionable to any race, religion, sex, ethnic group, or nationality. 

Plant patents

A plant patent is granted for any new and distinct, asexually reproduced plant variety that has been cultivated, propagated, and reproduced asexually. Plant patenting is not permitted in many nations, however, the United States Plant Patent Act of 1930 granted patent rights to individuals who developed new kinds of various asexually propagated plants. Apple trees and rose bushes derived from removing parts of the stem rather than sprouting seeds are commonly patented examples. Tuber-propagated plants, such as potatoes, were excluded both then and now. This is due to the fact that the plant portion required for propagation is also food. Ex Parte Hibberd, a 1985 judicial ruling, stated that utility patents, which had been accessible to inventors since 1790, would be extended to plants. This may include hybrids, seedlings, mutants, and cultivations other than plants found in an uncultivated state or varieties such as potatoes or edible tuber propagated plants.

But what exactly is asexual production? The multiplication of a plant without the use of fertilized seeds to ensure a perfect genetic duplicate of the plant being replicated is known as asexual reproduction. Any known asexual reproduction process that produces a genuine genetic duplicate of the plant may be used. The goal of asexual reproduction is to maintain the plant’s uniformity and stability. This second step of the invention must be completed with enough time before applying for patent rights to allow for a thorough evaluation of propagules or clones of the claimed plant for stability, ensuring that such specimens retain the same distinguishing characteristics as the original plant. This covers any cultigen, mutant species, hybrid species, and freshly discovered seedlings that are not generated from a tuber-produced plant or a plant discovered in the wild. Plants grown from tubers, as well as wild or uncultivated plants, are not patentable.  “Tuber” refers to a short, thickened underground stem or rhizome.

A plant patent holder can prevent others from creating, using, or selling the plant for up to 20 years from the day the patent application is filed. A plant patent application must be filed within one year of the variety being made available or known to the public anywhere in the world. Even if a new type is detailed in any publication or on the Internet, the one-year grace period is presumed to have commenced. Plant patents, like design patents, do not need maintenance fee payments.

Patent processing

Once a patent application has been submitted to the USPTO, it undergoes a rigorous examination process. During the examination process, the USPTO will review the application to ensure that all of the requirements have been met, like unity of invention, subject-matter restrictions, etc., and that the invention is novel, useful, and non-obvious. The USPTO may also request additional information or make amendments to the patent application.

How long does it take to get a patent

The US Patent and Trademark Office can often take a long time to evaluate and eventually approve a patent application. However, even before one gets to the government agency, the work required to be completed prior to filing the application can be time-consuming and laborious. From the time one begins working with their patent attorney, expect it to take several months to get their patent application filed.  The amount of time it takes to obtain a patent varies depending on the complexity of the invention as well as the backlog of applications at the USPTO. Typically, it takes between 18 months and 3 years to obtain a patent. These are averages, and the time between filing and issuing is greatly determined by the decisions one makes throughout the filing and prosecution stages of the process for applying for a patent. It is nevertheless possible to devise a method to expedite the patent application process and obtain a granted patent in less than a year. It is also feasible to move slowly and spread out patenting fees over time, in which case obtaining a patent might take three or more years. Ultimately, the best patent prosecution approach is determined by the patent applicant’s priorities, goals, and resources.

In order to speed up the patent process, you can submit a request for expedited examination. This request can be made after the patent application has been submitted and will allow the USPTO to prioritize your application. Accelerated review and prioritized examination are the two techniques used in the United States to expedite the patent application process. The Accelerated Review procedure assists applicants in receiving a patent within a year. Furthermore, the Track One system is an expedited method that allows newly filed utility and plant patent applications to receive their final patent application requirements within twelve months by paying a fee of $4200. It is not even necessary to have a pre-search examination report to begin the examination procedure.

How to file for a patent

Before you can file for a patent, you need to make sure that your invention is eligible for patent protection. To do this, you should conduct a patent search to determine if the invention or a substantially similar invention has already been patented or is currently in the process of being patented.

Once you have determined that the invention is eligible for patent protection, you can begin the process of filing for a patent. The first step is to submit a patent application to the USPTO. The patent application must include a detailed description of the invention as well as any drawings or diagrams that are necessary to understand the invention.

It is important to note that the patent application must include all of the required elements, including disclosure, description, specification, claims, best mode, enablement, drawings, and model. Failure to include any of these elements in the patent application can result in the application being denied.

But before we get to the stages of getting a patent, it’s important to understand that there are two ways to file for a patent:

  • By doing it yourself, or
  • through a registered patent attorney. 

Since patenting an invention is complicated, the USPTO strongly recommends hiring a patent attorney. In most cases, a patent attorney is recommended because the patent attorney’s job is to present the invention in a manner in which it more closely brings out the fundamental uniqueness of the invention, which is likely to be patentable to distinguish it from other inventions; this often costs twice as much as the entire patenting procedure. A patent attorney who has experience and has received particular training in patent drafting understands industrial property rights. They help individual inventors or businesses through the process of obtaining a patent and subsequently enforcing their rights in the event of patent infringement.

However, the USPTO has made provisions for inventors and small business owners with limited resources. The USPTO offers free assistance to independent innovators and small business owners. When filing for a patent, a person can either hire a registered patent attorney or do it on their own, also known as “pro se.”

Checking eligibility

Processes, machinery, items of manufacturing, and matter compositions are patentable, according to Section 101 of the Patent Act (35 U.S.C.). On its face, it appears that the patent office accepts each and every patent application made to it. This is, to a considerable extent, correct. The United States has one of the world’s broadest requirements for what constitutes patentable subject matter under this legislation. Physical device inventors often do not need to worry about whether their innovations are non-statutory. Certain inventions, however, are more likely to be challenged as to whether they fall under Section 101, such as software inventions and inventions relating to specific types of medical tests and diagnostics. Inventions that fail to meet the Section 101 requirements are deemed to fail the “subject matter eligibility” requirement for patent protection and are not eligible for a valid US patent regardless of whether they meet the other requirements for patentability (i.e., the invention is new, useful, and non-obvious). 

The text of Section 101 defines four sorts of patentable inventions: methods, machines, products of manufacturing, and matter compositions. If an innovation does not fall into one of these four categories, it cannot be patented. Data structures, for example, that are not claimed in conjunction with a computer or any sort of computer-readable medium plainly fall outside of these four categories. Non-functional descriptive content, such as music, literary works, and data compilations or arrangements, is also prohibited. It is therefore obvious that electromagnetic waves or signals do not fall into any of these categories and are hence not patentable. Lastly, a claim to “software” that does not relate to a process or a physical machine (such as a computer or mobile device) would fall outside of the four statutory categories and would thus be unpatentable. To circumvent this dilemma, most experienced patent attorneys never claim software in the abstract but rather solely in the context of a computing machine or a process. 

If an invention is to be deemed patentable, it must fit under one of these statutory categories and avoid a judicially determined “exception” to patentable subject matter.

Mayo Collaborative Services, et al. v. Prometheus Laboratories, Inc. (2012)

Natural laws, natural events, abstract concepts, and mathematical formulae may not be specifically excluded from patentable subject matter under patent laws. In the United States, the test used to exclude certain subject matter from patentability is whether the subjects are basic tools of scientific and technological work, and monopolization of those tools through the grant of a patent may impede rather than promote innovation. The case further highlights the distinction between patent eligibility (i.e., the term “invention”), patentability requirements (novelty, nonobviousness, and industrial utility of an invention), and written description requirements. The patentability requirements and the written description requirement apply only to patent eligible subject matter. According to the Supreme Court, determining a subject’s eligibility for patent protection gives more legal certainty than depending on patentability requirements. This is due to the fact that laws of nature that are not disclosed in the prior art may not eliminate originality and non-obviousness.

Together with the Association for Molecular Pathology et al. v. Myriad Genetics ruling involving naturally occurring compounds, the decision of natural processes/phenomena had a considerable impact on later US Patent and Trademark Office (USPTO) processes. The USPTO swiftly responded to the Court’s decision by issuing new subject matter eligibility guidelines.

Diamond v. Diehr (1981)

Facts

In this case, the respondents applied for a patent claiming the invention of a technology for molding raw, uncured synthetic rubber into cured precision items. Whereas the procedure could previously be calculated using well-known time, temperature, and cure relationships to determine when to open the press, the respondents claimed that their invention enabled them to precisely measure the temperature inside the mold, which was previously an uncontrollable variable in the process. This breakthrough would allow the industry to achieve previously unattainable uniformly exact cures by continuously detecting the temperature inside the mold and transmitting the data into a computer, which would then utilize an existing equation to calculate the most effective cure time.

The claims of the respondent were rejected by the patent examiner because they were drawn to nonpatentable subject matter under 35 U.S.C. 101. The Board of Appeals of the Patent and Trademark Office also agreed with the examiner.

The Court of Customs and Patent Appeals reversed, saying that a claim drawn to generally patentable subject matter does not become non-patentable because a computer is involved.

Judgment

The Supreme Court had to evaluate whether the respondent’s claims qualified as potentially patentable subject matter.

First, it had to interpret the term “process” as it appears in 35 U.S.C. 101. It confirmed the definition of a “process” established in Cochrane v. Deener (1876), which states that “a process is a mode of treating certain materials to produce a given result.” If it is novel and beneficial, it is as patentable as a piece of machinery.” Furthermore, the Court noted the addition to the above definition established in Gottschalk v. Benson (1972): “Transformation and reduction of an article ‘to a different state or thing’ is the clue to the patentability of a process claim that doesn’t include particular machines.” Such processes are patentable.

Second, the Court considered the patentability of methods that include features that are prohibited from patentable subject matter. It confirmed that a process “is not unpatentable because it contains a law of nature or a mathematical algorithm” and went on to state that when determining whether a claim or an invention at hand represents patentable subject matter, they must be regarded as a whole rather than being dissected into their various elements. The essential criterion in evaluating the patentability of a method under 101 is whether it performs a function that the patent laws were meant to protect, such as changing or reducing a thing to an entirely different state or thing.

The “novelty” or “non-obviousness” requirements are pointless in assessing a subject matter’s general patentability. The Court concluded that the respondents were not attempting to patent a mathematical formula but rather a method of curing synthetic rubber that included a formula. As a result, the claims include patentable subject matter.

Patent requirements

In order to obtain a patent, the patent application must include all of the required elements. The elements include checking eligibility, novelty, utility requirements, and a requirement of non-obviousness.

Requirement for novelty (newness)

In order for an invention to be patentable, it must be considered unique or new. According to this condition, an invention cannot be patented if significant disclosures of the invention have been made. The laws that define whether a public disclosure has occurred are intricate and frequently necessitate a thorough examination of the facts and the law. However, the most important rule is that an invention will not normally be patentable if:

  • The public was aware of the innovation before the applicant sought patent protection;
  • Before the applicant filed for patent protection, the invention was described in a printed publication; or
  • Before the applicant filed for patent protection, the invention was described in a published patent application or issued patent.

These restrictions are waived for disclosures made by the inventor within one year of filing the patent application. This implies that a patent application must be filed within one year after an inventor’s initial public disclosure or offer for sale of an invention. This “statutory bar” is very rigid, which means that an inventor who fails to file for patent protection on her new invention within the one-year grace period would forfeit all rights to patent protection on the innovation.

Dewey & Almy Chemical Co. v. Mimex Co., Inc.,

In this case, it was held that: 

  1. A novel innovation is one that was not anticipated by prior art. In general, “prior art” refers to all information that existed before to the relevant filing or priority date of a patent application, including oral disclosure in some countries.
  2. Anticipation requires an “enabling disclosure” in which the prior art permits a person proficient in the field to execute the claimed invention effectively. In the matter at hand, the Court stated, among other things, that:
  1. A result in the uncertain prior art, combined with a lack of invention of the result in the art, would not preclude the issuance of a patent claim for lack of originality or novelty. 
  2. Anticipation is based only on whether there is any difference between what is claimed and what is revealed in the prior art, not on “considerable differences.” As a result, there can be no “hit or miss” in anticipation; only striking the “target” that the art “aimed” at will harm the originality of a future invention.
  3. Prior teachings contribute to “the store of common knowledge” as a requirement for anticipation under patent law. 
  4. The term “new” is not defined under the TRIPS Agreement or the Paris Convention. Furthermore, TRIPS Agreement Article 1.1 stipulates that “members shall be free to determine the appropriate method of implementing the provisions of this Agreement within their own legal system and practice.”
  1. As a consequence of this, there is no prescribed method for Members to define that whether innovations are “new” within their domestic system.
  2. A member may specify the scope of prior art that defeats an invention’s originality.

Useful requirement

According to patent law, the subject matter must be “useful.” This implies that the invention must serve a purpose. In the context of computer and electrical technology, the utility criteria are easily achieved in most circumstances. When seeking to patent a pharmaceutical or chemical compound, the condition is particularly important since it is vital to establish a practical or specific application for the new product.

Nonobviousness requirement

If an innovation is not identical to past items or methods (referred to as “prior art”), it is deemed new. However, in order for an invention to be patentable, it must also be a non-obvious improvement over the prior art. This evaluation is established by determining whether the desired patentable innovation would have been evident “to a person having ordinary skill in the art to which the claimed invention pertains.” In other words, the invention is compared to the prior art, and whether the changes in the new invention would have been obvious to a person of ordinary ability in the sort of technology employed in the invention is determined. The Act requires that the innovation be evident prior to the filing of the application.

The United States Supreme Court ruled in Swofford v. B & W, Inc. (1966) and Graver Tank & Mfg. Co. v. Linde Air Prod. Co. (1950) that utility and novelty are factual concerns. However, it is unclear if non-obviousness is a question of fact, law, or both. The answer to this question is significant because it impacts the division of responsibilities between the court and the jury as well as the extent of judicial review in patent litigation. So, who decides whether an invention is patentable, the factfinder or the judge? A judge versed in all statutory legislation can make wider policy decisions, or a fact finder familiar with the facts of the specific case can hear the witnesses and assess their credibility. In this regard, there are two points of view: the technical approach, which regards non-obviousness as a matter of fact, and the contextual view, which treats non-obviousness as a matter of law. Prior to the United States Patent Act of 1952, the issue of invention was handled as a fact. However, in Tights Inc. v. Acme McCrary Corp. (1976), the Fourth Circuit Court of Appeals concluded that obviousness is a mixed matter of law and fact, implying that the issue might be brought to the jury if properly informed on the legal standards. 

As one might expect, determining whether a certain modification or improvement is “obvious” is one of the most difficult decisions in patent law. To make such a decision, a patent examiner would often research earlier patent documents to identify patents and published patent applications that are the most similar to the invention for which a patent is sought. Suppose all of the invention’s characteristics can be found in a single patent. In that case, the patent office will reject the patent as lacking novelty (it is precisely the same as what was previously known and hence is not new). If no patent has all of the characteristics, the examiner will try to combine two or more prior patents to see if a combination of those prior patents contains all of the features. If the examiner finds such a combination, the invention is likely to be rejected as an obvious combination of components recognized in the prior art. Rejections based on the combination of prior art references are quite prevalent in patent applications. To effectively utilize a combination of references to reject a patent application as apparent, the patent examiner must explain some basis for combining the references. Previously, patent attorneys could successfully argue against rejection by demonstrating that the inventors of the prior art references would not have considered combining their invention with the other invention(s).

Graham v. John Deere Co. of Kansas City (1966)

Facts

The petitioner in this case, William T. Graham, filed a patent application for a mechanical device designed to mitigate shock from plow shanks on rocky terrain. The clamp installed kept the plow from being damaged. He was granted a patent in 1950. In the following years, he refined his design by moving the hinge plate to reduce the outward motion of the shank away from the plate. In 1953, he received another US patent for this modification.

The latter patent was in question in the present case. The United States Court of Appeals had previously affirmed the petitioner’s patent for the Fifth Circuit, but it was later declared invalid by the United States Court of Appeals for the Eighth Circuit. Finally, the Supreme Court granted certiorari and listened to the case.

Judgment

  1. In this case, the U.S. Supreme Court established the subject matter’s obviousness or non-obviousness will be determined in
  1. considering the scope and complexity of prior art,
  2. the distinctions between the prior art and the claims in question, and
  3. the degree of ordinary skills in the pertinent art.
  4. secondary considerations may include commercial success, long-felt but unresolved needs, or others’ failure to find a solution.
  1. The non-obviousness tests, as specified in Section 103 of the Patent Act of 1952, must be capable of adapting through case-by-case development. 
  2. An invention must be interpreted not only in light of the claims but also in light of the prosecution history at the Patent Office.
  3. Long-felt needs for and the inability of others to discover a solution, as well as the financial success of an invention, are subtests for patentability and are more vulnerable to judicial treatment than technical facts commonly addressed in patent litigation. They have the potential to “tilt the patentability scales.”
  4. In terms of patent infringement, the Court determined that the scope of a patent, if restricted to fulfill the requirements of the patent examiner, cannot thereafter be understood to embrace that which was previously excluded from the patent.

KSR International Co. v. Teleflex Inc. (2007)

This case involved the need for non-obviousness for patentability. The Supreme Court of the United States (hereinafter: the Court) strengthened the objective analytical technique for interpreting 35 U.S.C. 103 as established in Graham v. John Deere with important factors to consider. Despite the absence of a clear teaching, suggestion, or desire to integrate numerous prior art references, a claimed invention may be obvious.

The value of published research and express prior art should not be emphasized by the patent examiner. The artist is not to be regarded as a technical dumbbell with little initiative of its own but rather as a person capable of applying common sense and taking into account the particularities of the distinctive scenario.

This case determined that the Court of Appeals for the Federal Circuit erred by strictly applying the narrow teaching, suggestion, and motivation test 

  1. for obviousness under 35 U.S.C. 103, 
  2. for the narrow understanding of the use of hindsight, and 
  3. for failing to consider whether the invention was obvious to try. 

They considered the preceding to be in contrast with Graham’s wider notion of obviousness.

Step-by-step guide on how to get a patent in the US

Now that you know the basics of patenting an invention, here is a step-by-step guide on how to get a patent.

Step 1: Conduct a patent search

The first step is to conduct a patent search to make sure that the invention is eligible for patent protection. The drafting of a patent application is the first step in acquiring a US patent. In general, it is preferable to do a patent search before preparing an application. This search attempts to locate issued patents and other published works relating to the invention.

After an examination of the prior art, the application may be filed if the invention looks patentable. It should be noted that there is no necessity to do a patent search prior to submitting a patent application. In many circumstances, innovators are well aware of the activities of their rivals and the market in their field. They are convinced that they are aware of the most relevant prior art since they have this information.

Step 2: Prepare a patent application

Once you have determined that the invention is eligible for patent protection, you can begin preparing the patent application. The patent application must include a detailed description of the invention as well as any drawings or diagrams that are necessary to understand the invention. An inventor can prepare, file, and prosecute a patent application on his or her own, a process known as “pro se.” The USPTO, on the other hand, advises applicants to seek the aid of a patent agent or patent attorney who is registered to practice before the USPTO.

The application consists of a written “specification” that is normally divided into the following components for both non-provisional and provisional utility patent applications:

  • The title of the invention;
  • Cross-reference to related applications, which lists any earlier U.S. patent applications, whether provisional or non-provisional, from which the applicant’s claims may benefit.
  • Background of the invention, which explains the invention’s “technical field” and gives information such as known technology, issues solved by the invention, and, possibly, failures of the previous art to notice or appropriately address these challenges.
  • Summary of the invention, which offers a quick summary or brief explanation of the invention and often highlights the merits of the invention and how it addresses a problem or design issue.
  • Brief drawing description, which explains the subject matter depicted in one or more accompanying figures.
  • A detailed description of the invention, including cross-references to any drawings supplied, specifies the best mode of executing the invention and gives a sufficiently comprehensive disclosure to enable those knowledgeable in the art to copy and practice the invention.
  • Claims that attempt to explain the scope of the invention to be protected. A non-provisional patent application must contain at least one claim; by statute, a provisional patent application must not include any claims. This is the most important component of the patent application since it establishes the legal scope of protection sought. These claims are similar to a legal description of real land.
  • The abstract of the disclosure highlights the disclosed embodiments of the invention to aid in the search for relevant prior art.
  • Drawings that represent examples mentioned in the detailed description section.
  • Oath or declaration, in which each designated inventor affirms that he or she is an inventor of the subject matter stated in the preceding claims and is making or approving the patent application.

Once 18 months have passed from the applicant’s claimed effective filing date, the non-provisional application for a patent is typically published for public viewing. Once the application is published, any publications relating to the application, including an associated U.S. patent application, are open to public scrutiny.

In some cases, where international patent filing is not desired, the applicant may request that the application not be published. Unlike utility patent applications, design patent applications in the United States are not subject to disclosure after 18 months. Instead, design patent applications are only published when they are granted as patents.

Step 3: Submit the patent application

Once the patent application is ready, you can submit it to the USPTO. The USPTO will review the application and determine whether or not the invention meets the required criteria mentioned above. If it meets the standard, then the USPTO will accept the patent and publish it.

Step 4: Examination process

Once the patent application has been submitted, it will undergo an examination process. During this process, the USPTO will review the application to ensure that all of the requirements have been met and that the invention is novel, useful, and non-obvious. The examiner assesses the application in light of the prior art and ensures that it complies with different formal criteria. According to 35 U.S.C. 131, “examination of applications,” the director shall examine the application and the purported novel invention, and if it appears from the examination that the applicant qualifies to receive a patent under the law, the director shall grant a patent accordingly.

The application will be allocated for inspection after it has been acknowledged as complete. The person reviewing the application will go through the application’s contents to see if it meets the requirements of 35 U.S.C. 111(a). The following are the primary requirements for granting a patent to an applicant:

  • Patentable inventions i.e., subject matter of patentability (35 U.S.C. 101).
  • Conditions for patentability; novelty (35 U.S.C. 102).
  • Conditions for patentability; non-obvious subject matter (35 U.S.C. 103).
  • Specification (35 U.S.C. 112)

A non-provisional application for a patent is assigned to a patent examiner when the patent application is submitted, and the USPTO assigns an application number and filing date. This examiner performs an independent patent search of the invention through prior art materials made available to the examiner, including any prior art furnished by the applicant.

The regulations specifically provide that the applicant and the patent attorney/agent executing the application must submit to the patent examiner all information “material to the patentability” of an invention asserted in a non-provisional application.

This includes information obtained while the patent application is pending with the USPTO. An Information Disclosure Statement (IDS) can be used to disclose information to the patent examiner. Then the examiner assesses the application in light of the prior art and ensures that the various formal conditions that are mentioned above have been met.

The claims in a patent application are initially “rejected” in communication with the applicant from the USPTO, known as an “office action.” One has the option to offer corrections or refute the concerns voiced. The applicant will have a defined window of time in which to respond to the objections; if they are not addressed within that window, the patent application will be canceled.

An interview with the examiner is available to applicants in the ‘First Action Interview Pilot Program’ after the applicant has reviewed the examiner’s search results and any objections. This gives the applicant the chance to speak with the examiner directly, which cuts down on the amount of repeated communication needed to resolve issues and may accelerate the process of issuance of a patent for their invention.

Step 5: Amendment and response to the objection raised

The applicant’s patent attorney will create a response document in response to the first office action that highlights the purported errors in the office action. In order to further describe the invention and, in certain situations, to restrict the claims in order to circumvent the prior art stated in the office action, this response document usually includes an amendment to the claims. The response will also provide justifications for why the present claims are still patentable in spite of any references to prior art or objections raised.

The patent attorney must be careful not to introduce “new information” to the application while making amendments. Amendments to the written description, drawings, or claims of an invention must be in line with the original application in order to be valid under the Patent Act. Any issue involving an amendment or growth of the initial disclosure will be disregarded as new information. In order to prevent new inventions from being “piggy-backed” into old patent applications, certain kinds of additions are not permitted.

Most of the time, applicants have three months from the time the first office action is delivered to respond. This deadline may be extended for a maximum of three more months. Although the fees and extension requests do not need to be submitted until the office action response is submitted, each one-month extension requires the payment of an additional fee. The application is regarded as canceled if a response to the office action is not submitted before the six-month period has passed. The Commissioner may, however, reinstate the application if it can be demonstrated that the failure to pursue the application was unavoidable or unintentional. The applicant must submit a petition and pay a petition fee in order to reopen an abandoned application. If a proper response to the office action has not already been filed, it must be included with the petition.

Step 6: Final rejection/acceptance

If all goes according to the applicant’s expectations, the patent office will approve the application once the applicant files the answer. 

The applicant’s response may not always persuade the patent office. Instead, the patent examiner either keeps rejecting the application for the same reasons outlined in the first office action or comes up with new justifications for why the application continues to fall short of the legal requirements for patentability. A second office action informs the applicant of this repeated refusal. This second office action will often be deemed “final.” The applicant’s ability to respond is therefore constrained after an office action is final. The applicant typically has the following options:

  • decide to withdraw the application;
  • request a review and convince the examiner to accept the application;
  • appeal the final decision to reject; or
  • file a request for continued examination (or “RCE”), which will allow the examination to continue.

The applicant must keep in mind that only the application will be allocated for inspection after it has been acknowledged as complete.

A non-provisional application for a patent is assigned to a patent examiner when the patent application is submitted, and the USPTO assigns an application number and filing date. This examiner performs an independent patent search of the invention through prior art materials made available to the examiner, including any prior art furnished by the applicant.

The regulations specifically provide that the applicant and the patent attorney/agent executing the application must submit to the patent examiner all information “material to the patentability” of an invention asserted in a non-provisional application.

This includes information obtained while the patent application is pending with the USPTO. An Information Disclosure Statement (IDS) can be used to disclose information to the patent examiner. Then the examiner assesses the application in light of the prior art and ensures that the various formal conditions that are mentioned above have been met.

The claims in a patent application are frequently initially “rejected” in communication with the applicant from the USPTO, known as an “office action.” One has the option to offer corrections or refute the concerns voiced. The applicant will have a defined window of time in which to respond to the objections; if they are not addressed within that window, the patent application will be canceled.

An interview with the examiner is available to applicants in the ‘First Action Interview Pilot Program’ after the applicant has reviewed the examiner’s search results and any objections. This gives the applicant the chance to speak with the examiner directly, which cuts down on the amount of repeated communication needed to resolve issues and may accelerate the process of issuance of a patent for their invention.

Step 5: Amendment and response to the objection raised

The applicant’s patent attorney will create a response document in response to the first office action that highlights the purported errors in the office action. In order to further describe the invention and, in certain situations, to restrict the claims in order to circumvent the prior art stated in the office action, this response document usually includes an amendment to the claims. The response will also provide justifications for why the present claims are still patentable in spite of any references to prior art or objections raised.

The patent attorney must be careful not to introduce “new information” to the application while making amendments. Amendments to the written description, drawings, or claims of an invention must be in line with the original application in order to be valid under the Patent Act. Any issue involving an amendment or growth of the initial disclosure will be disregarded as new information. In order to prevent new inventions from being “piggy-backed” into old patent applications, certain kinds of additions are not permitted.

Most of the time, applicants have three months from the time the first office action is delivered to respond. This deadline may be extended for a maximum of three more months. Although the fees and extension requests do not need to be submitted until the office action response is submitted, each one-month extension requires the payment of an additional fee. The application is regarded as canceled if a response to the office action is not submitted before the six-month period has passed. The Commissioner may, however, reinstate the application if it can be demonstrated that the failure to pursue the application was unavoidable or unintentional. The applicant must submit a petition and pay a petition fee in order to reopen an abandoned application. If a proper response to the office action has not already been filed, it must be included with the petition.

Step 6: Final rejection/acceptance

If all goes according to the applicant’s expectations, the patent office will approve the application once the applicant files the answer. 

The applicant’s response may not always persuade the patent office. Instead, the patent examiner either keeps rejecting the application for the same reasons outlined in the first office action or comes up with new justifications for why the application continues to fall short of the legal requirements for patentability. A second office action informs the applicant of this repeated refusal. This second office action will often be deemed “final.” The applicant’s ability to respond is therefore constrained after an office action is final. The applicant typically has the following options:

In the first office action, a deadline of six months will be imposed when replying to the final office action. The application should be withdrawn if the applicant, after consulting with an attorney, thinks the invention is not patentable. Alternatively, the applicant may ask the examiner to reconsider their decision, but this request must be made as soon as possible and include any reasons or changes that would make the application more likely to be approved. The applicant then has to wait for a response to the reconsideration request.

The applicant has the option to file an appeal with the Patent Trial and Appeal Board (the “PTAB”) against the examiner’s refusal. A notice of appeal and an appeal fee must be filed in order to appeal. Additionally, the applicant must submit a brief in support of their claim. The appeal may be subject to an oral hearing. It often takes many years from the moment a Notice of Appeal is filed until a ruling is rendered by the PTAB. If the PTAB rules against the applicant, they may appeal to the Court of Appeals for the Federal Circuit or initiate a civil action against the Commissioner in the District of Columbia’s federal district court. 

The Federal Circuit Court of Appeals will analyze the office’s record and can either uphold or overturn the office’s decision. The applicant may present testimony in court during a civil proceeding, and the judge will then make a judgment.

The applicant may choose to proceed with the prosecution of the patent application in front of the patent examiner as an alternative to filing an appeal. In order to do this, a request for continued examination and a reply to the final office action are sent. Once this patent application has been reviewed, the patent office will decide whether to grant it or issue yet another office action. A single patent application could face five or more office actions owing to the submission of several RCEs before being approved and becoming an issued patent.

Step 7: Publication of the patent

In general, non-provisional patent applications are published 18 months from the earliest filing date; however, the director may publish the application earlier if the applicant requests it. A U.S. patent application’s file history and ability to download the application itself are made public when it is published.

It is essential to publish the patent for the following reasons:

  • If the applicant is also submitting a patent outside of the US, it is required by US patent law.
  • Examiners and competitors attempting to submit comparable applications will find them through prior art searches.
  • It will let competitors know that someone has applied for a patent for this subject matter.
  • Having a website-published patent will help the applicant gain recognition.

The application is often still being processed at this time, but after the application is published, the inventor may be able to collect royalties from any company that copies the concept. They would have to present evidence that they were eventually given a patent for the invention, as well as evidence that the defendant was aware of the patent’s publication.

Step 8: Grant of patent

The United States Patent and Trademark Office (USPTO) examines the patentability features of the invention and, if deemed patentable, provides the applicant with a Notice of Allowance. This means that the applicant is qualified to obtain a patent. The notice of allowance could include conditions for the applicant to meet before the patent is awarded.  This will include the issuance fee as well as the publication fee. In response to the notice of allowance, the applicant completes the necessary procedures and pays the appropriate issue fee.  To avoid application abandonment, this amount must be received by the USPTO within three months of the date of mailing of the Notice of Allowance. Unlike many other deadlines, this three-month term cannot be extended. 

Once the USPTO receives the issue fee, the patent is issued in the name of the United States under the seal of the United States Patent and Trademark Office. It is either signed by the Director of the USPTO or electronically written on and attested by an official. The patent will include the claims and drawings that have been approved by the USPTO, and then they will be attached to the patent and become part of it. 

Cost of filing for a patent

Estimating the cost of a US patent is challenging since so much depends on the technologies involved. Inventors generally like to believe that their creations are not too complicated and that they can be communicated easily. As a result, people are led to assume that the entire procedure should just take a few hours, implying that the cost should be relatively low. The cost of filing for a patent can vary depending on the complexity of the invention and the type of patent sought. When you consider how simple or complicated inventions and inventions might be, you can see why patents have varying costs. Patenting more complicated innovations is more expensive than patenting simpler inventions. As a result, patent costs vary depending on a number of factors. Generally, it will cost between $3,000 and $15,000 to file for a patent. This cost includes the filing fee, the examination fee, and the attorney fees (if applicable).

The short-term expenses involved with drafting and filing a patent application, which provides the inventor with patent pending status for the invention, are factored into the cost calculation of a patent. Furthermore, the estimate considers the long-term costs of investigating the patent application in order to get the patent. This is just for the patent application and to show that the invention is currently patent pending. The cost of the examination is not covered. Long-term costs are associated with the investigation of the patent application, which happens when a USPTO examiner examines the merits of the invention and determines whether or not to reject or grant the patent application.

Even after the patent application is filed, there are still a lot of costs involved. These costs are incurred only after the patent has been considered by the USPTO, which usually takes around eighteen months from the day the patent application is filed. The Patent Office rejects the great majority of patent applications when they are initially assessed. The cost of responding to these rejections varies depending on the circumstances, but in most situations, the fee will be between $3,500 and $4,500. Typically, a patent application will have one to three rejections before being accepted by the Patent Office. Once approved, there is a requirement to pay an issue fee of around $800. 

Once the patent is granted, the possessor has the right to restrict anyone from making, using, selling, or importing the invention. The patent will expire around twenty years after the patent application is submitted. However, one has to pay maintenance fees for the entire period.

It is important to note that the cost of filing for a patent can vary depending on the jurisdiction. In some countries, the cost of filing for a patent is much higher than in the US.

Rights of the patent holder

The scope of the right to exclude

It is critical to understand that a patent does not give the patent holder the right to make their own invention. Instead, the patent grants the patent holder the exclusive right to prevent anyone from making, using, selling, or importing the invention. The right of the patent holder to create their own invention is contingent on the rights of others and any general laws that may apply. Another party may have a patent that prohibits the patentee from using her/his own invention. The patent holder is the only person who may create, use, or sell the invention since the core of the right provided by a patent is the ability to exclude others from the commercial exploitation of the invention. Others may only do so with the permission of the patent holder. A patent licensing agreement is typically used to grant such permission. In this sense, patent laws provide monopoly rights in the invention in the same manner that a monopoly is an exclusive right granted by the government for one party to conduct business in a particular area.

Infringement

During the life of the patent, infringement is defined as the illegal making, using, selling, or importing of the patented invention within the territory of the United States. The claims of the authorized patent govern the extent of these rights. A patent will typically include many claims. In order for the whole patent to be infringed, only one claim must be infringed. If a patent has been violated, the patent holder may sue in an appropriate federal court for treatment. The patent owners may seek an injunction to prohibit further infringement as well as monetary damages from the court. In such an infringement proceeding, the defendant may challenge the patent’s validity, which the court then adjudicates. The defendant may instead argue that its conduct is not infringing. Patent infringement suits follow the federal courts’ standards of procedure. If the US government infringes on a patent, the patent holder can seek monetary damages in the US Claims Court. Without the approval of the patent owners, the government may utilize any patented invention. The government could use any patented invention without the patent holder’s consent, but the patent holder is entitled to compensation for usage by or for the government.

Common mistakes to avoid when filing for a patent

When filing for a patent, it is important to avoid making any mistakes that could potentially delay or prevent the patent from being granted. Here are some of the most common mistakes to avoid when filing for a patent:

  • Not conducting a patent search: Before you file for a patent, it is important to conduct a patent search to make sure that the invention is eligible for patent protection.
  • Not including all of the required elements: The patent application must include all of the required elements, including disclosure, description, specification, claims, best mode, enablement, drawings, and model.
  • Not preparing a detailed description: The patent application must include a detailed description of the invention, as well as any drawings or diagrams that are necessary to understand the invention.
  • Not filing a request for expedited examination: In order to speed up the patent process, you can submit a request for expedited examination. This request can be made after the patent application has been submitted and will allow the USPTO to prioritize your application.

Conclusion

Getting a patent is a complex process that requires a thorough understanding of the process and the requirements for obtaining a patent. In this article, we’ve discussed how to get a patent in the US and the steps involved in the process. We’ve also discussed the types of patents, the cost of filing for a patent, and some common mistakes to avoid when filing for a patent.

Patent prosecution is a lengthy procedure with multiple stages. Some stages are simple, while others are more difficult for those who are new. Kindly keep in mind that patent prosecution in the United States (or anywhere else in the world, for that matter) might take a long time. Expect a lot of back-and-forth communication between the applicant and the patent office.

Thus, seeking a patent not only puts the invention to the test but also the patience of the applicant. Knowing what is going to happen next, how long a specific step may take, how much money the applicant may have to spend, what options are available, and so on can help relieve the anxiety that can arise while navigating such a complex system. Although the patent process is time-consuming, it is an important aspect of establishing an organization and monetizing its assets. Patents may provide considerable value to people and organizations, as well as a greater return on investment in the advancement of new technologies. Patents must be pursued with a wise approach that combines business interests with an array of alternatives for how, where, and when to file for patents.

References

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