Do You Need One to Apply for a Patent?
In short, you do not necessarily need a patent attorney to help you file for patent protections for your design or your invention. That is not to say that the process is not difficult. Navigating the patent laws and procedures required for filing a patent is complicated. Luckily, there are extensive resources out there to help you if you want to undertake filing on your own.
The essence of If the patent is identifying your invention as capable of patent protection and fully disclosing its attributes to the public. This sounds simple, but the process is quite demanding. If you successfully do so, you will have protections that last for 20 years from the date of filing.
In this article, we explain the various things you need to know and consider.
What is Patent Law?
The patent law system in the United States is entirely a matter of federal law. Specifically, you can find all of the laws applicable to patents under Title 35 of the United States Code. You find the corresponding regulations under Title 37 of the Code of Federal Regulations. Perhaps the easiest place to access information regarding patents is through the United States Patent and Trademark Office (USPTO) website (USPTO.gov).
The USPTO is the administrative agency charged with managing the entire US patent system. It accepts and reviews applications, publishes those application, reviews the application for adequacy, and grants or rejects applications for patent protection. It also maintains the database of all previously filed patent applications and granted patents.
As part of this process, the USPTO offers extensive resources to the public. In addition to volume of documents explaining the application process and procedures, the USPTO provides a search engine to query the database for prior patent applications. This is perhaps the greatest resource available or determining whether your invention is capable of patent and for drafting your patent application.
What is Patentable Subject Matter?
A patent or patent rights provide an inventor with protective rights in an invention, design, or plant.
• An “invention” for purposes of patent law includes a process, machine, article of manufacture, or composition of matter.
• A “design” regards the aesthetic or ornamental characteristics of an article of manufacture. Basically, it is the look or shape of a product — rather than the function of the product itself.
• A “plant” is an asexually produced species of plant created with a unique genetic makeup.
A creation that falls into these categories are known as patentable subject-matter. Throughout this article, we will focus on the requirements for a utility patent.
Things that fall outside of these categories of subject matter may be too abstract or theoretical to apply a patent.
Who Can Claim Patent Rights?
To claim patent rights, you must be the inventor. You may also be the employer (principal) for whom an employee (agent) inventor is working for. Individuals working together can jointly file a patent application.
What is Required to Secure Patent Protections?
A patent application makes certain claims about the invention. These claims identify specific aspects of the invention that meet the requirements for patent protection. The requirements for a claimed element to be protectable by patent are:
• Novelty – This simply means that the claimed element of the invention must be new. This means that it must not have been previously disclosed to the public. Disclosing something to the pubic includes:
⁃ The claimed item is already being sold or offered to the public for purposes other than testing or development.
⁃ The claimed item has been the subject of extensive disclosure, such as through description in a trade publication.
⁃ The claimed item item has not previously been the subject of a patent filing in the United States or other country.
• Non-Obvious – The claimed item cannot be an obvious concept in the context of the invention. That is, it must not be already commonly understood by experts in the field. Experts in the field are known as Persons Having Ordinary Skill in the Arts (PHOSITAs).
• Useful – The claimed element must perform some identifiable function or purpose. Note, the function must have some effect or result. It does not matter the value of the function or result. A design patent does not require a showing of usefulness, as the design patent applies only to the ornamental or aesthetic qualities.
A utility patent application may make numerous claims about the invention that are subject to patent protection. A design patent only makes one claim about the aesthetic features of the invention. In a utility patent, there can be multiple stand-alone claims, or a claim can have numerous sub-claims (or dependent claims).
What is a Patentability Search?
The first step in the process of filing for patent protection is to make certain that your invention does not already exist. If your invention has previously been disclosed to the public, either by sale or as the subject of a prior patent application, it will not be eligible for patent protection.
The process is known as a patentability search. This includes searching for your product in the market and searching US and international databases to determine whether someone has previously filed for patent rights that would conflict with your patent claims.
What is the Process for Filing for Patent Protections?
So, you have successfully conduct a patentability search and are satisfied that your invention has not previously been disclosed to the public. If you are going to attempt to patent you invention yourself, you are going to need to know everything that is required in a patent application.
As previously discussed, you must submitted a completed application to the USPTO. After submission, there will generally be a back and forth conversation between the inventor and the patent examiner. You must convince examiner that your application meets all legal requirements for protection. This process is known as “prosecuting” your patent.
It is worth mentioning at this point that you will be required to pay the applicable filing fees at the time of application. The associated fees are application fees, examination fees, search fees, and (if the patent is later granted) issuance fees. If the prosecution process requires any amendments, requests for re-examination, or appeals, additional fees will apply.
The first step is fully completing a patent application, including:
• Application title page identifying the filing as non-provisional,
• Names of all inventors,
• Residences of the inventors,
• Name or title of the invention,
• Patent agent or attorney and registration number (if applicable)
• Address for correspondence,
• U.S. Government agency with rights in the invention,
• Specification identifying the function or use of the invention,
• Claimed elements of the invention,
• Oath or Declaration of the Inventor, and
• References to any prior Art.
Once the USPTO receives the completed application packet, it will mark this as the filing date. The filing date becomes important for a number of dates in the future.
At that time, the USPTO it will begin researching to make certain the invention meets the criteria as patentable subject-matter. This includes examine the claimed elements of the invention to determine if it meets the novelty, non-obvious, and usefulness requirements.
Part of this process is a patent search to determine if your invention is the subject of a prior patent application. As previously stated, the examiner will search both US and international patent databases. The reviewer will also search various commercial sites to determine whether you invention has been publicly disclosed.
What are Your Primary Considerations for Whether to File Your Own Patent?
The primary considerations for whether to file yourself are resources and knowledge. A legal professional who practice patent law will be more thorough and competent than an first-time patent filer. The drawback is that hiring a patent attorney is very expensive. Most design patent filing start at $1,500, while most utility patent filings start at $5,000.
The other consideration is quality. Just because you successfully undertake to file a patent application doesn’t mean that it will adequately protect your invention from competitors. A patent professional will know how to best draft the specification and claims to offer the greatest protection possible. Doing it yourself is likely to miss many of the potential aspects of your invention that are capable of protection.
