Overview of Patent Process for Inventors
Overview of the Patenting Process
Can you give me an overview of the patent process? Inventors and founders often ask me for an overview of what to expect when getting a patent. That’s a fair question. And there are a variety of approaches to answering it. The answer really depends on the person’s perspective. A patent secretary will view the process differently from a patent agent, who will view it differently from a government official, etc..
For example, the United States Patent and Trademark Office (“USPTO”) provides an overview of the “Process for Obtaining a Utility Patent.” Understandably, the USPTO focusses largely on the procedural aspects of getting a patent. After all, the USPTO is concerned with how each applicant navigates their system.
I come at the patent process from the inventor’s perspective. I am most concerned with maximizing value from the patent process. So my “overview” is a little bit different. I focus on comparing the invention to the state of the art and using that comparison to draft the most valuable patent claims possible. Below, I have outlined this process. Notably, it looks quite different from other “overviews” of the patent system.
Inventor Focussed Overview of Getting a Patent
My overview of getting a patent can be distilled into 9 steps, which I’ve outlined below. Notably, a patent professional would add “client development” and “engagement” before step #1. (For many patent professionals, getting the client consumes about 30% of all time). Likewise, a patent litigator or transactional attorney would care only about step #9. A patent secretary would focus primarily on the paperwork involved in steps 6-8.
- Extracting the Invention – Organizing all available information about the invention by interviewing the inventors, usually multiple times.
- Studying the Invention – Studying all available information provided by interviewing the inventors and reviewing documents provided by the inventor.
- Comparing the Invention to the Prior Art – Independently evaluating the invention from the standpoint of someone skilled in the relevant art; Determining similarities and differences.
- Drafting Patent Claims – Defining the invention in a manner that emphasizes its patentable aspects. This involves applying the analysis in step #3 to synthesize definitions with the greatest likelihood for covering valuable property within the following twenty years.
- Drafting Patent Application(s) – Drafting supporting descriptive material. This material often provides definitions for key terms in the application, along with examples, and background information.
- Filing Patent Application(s) – Formatting the application from step #5 to conform with the USPTO’s standards for patent applications. Then, filing the patent application with the USPTO and paying the required fees.
- Arguing for Patentability – After filing a patent application, the application sits “pending” at the patent office for years. See Stats. After waiting, a patent examiner examines the claims and (almost always) rejects them as a “first action.” At that point, the applicant must address the examiner’s reasons for rejecting the claims–usually through some combination of arguing or amending the claims.
- Grant of Patent – After agreeing on a set of patentable claims, the Applicant pays the issue fee and the USPTO grants a patent. The Applicant is then responsible for paying maintenance fees 3.5, 7.5, and 11.5 years following the grant.
- Enforce or License Patent – A patent provides the right to exclude others from making, using, or selling the invention that is defined in the claims. This right to exclude is the source of all value – a monopoly – the ability to prevent competitors from entering the market. That right may be sold (licensing the patent) or enforced against competitors via a patent infringement lawsuit. This later route is also called patent litigation.