The light bulb just went off in your head – you've thought of an invention! But where do you go from there?

First of All – What is a Patent, and What Can Be Patented?

As discussed in a previous post about the importance of patenting your product, a patent is an intellectual property right granted by the federal government for new and unique inventions. The founding fathers considered patents so vital that they gave Congress the right to grant patents in the United States Constitution. In fact, before the inclusion of the Bill of Rights, the only “right” mentioned in the Constitution relates to patent rights and copyrights:

“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.” 

The United States Patent and Trademark Office (USPTO) is empowered to issue patents to inventors if they can show that what they've created is “novel and non-obvious” and has never been done before. The benefit of a patent is that it excludes others from “making, using, offering for sale or selling” the invention, granting inventors a limited “monopoly” for their product.

For an invention to be patentable, it must meet the USPTO's criteria for being “novel and non-obvious.”

• The USPTO defines “novel” as differing from other similar inventions in at least one of its parts. In addition, a novel invention cannot have already been sold, publicly used, or patented by somebody else.
• “Non-obvious” is a subjective standard based on whether a person with experience in the field of the invention (commonly referred to as “a person having ordinary skill in the art”) would consider the product new, unexpected, and surprising.

It's inherent in these definitions that the product must be manmade rather than naturally occurring, as natural, unaltered processes cannot be patented. A mathematical operation, a calculation method, or an abstract principle doesn't qualify, but an industrial process or application using the math or principle may be patentable.

The best way to find out if a product is patentable is to speak to an experienced IP professional while still in the process of development. If a product is not patentable, it might be worthwhile to make changes to make it more likely to qualify for a patent.

This and a second article will set forth the basic steps in the patent process from conception to the issuance of your patent and post-issuance requirements to keep your patent in force.

1. The Beginning – Conception[i] of an Invention

Coming up with an idea for some new device or method is not necessarily the same as conceiving a patentable invention. To conceive a patentable invention, an inventor must have a concrete idea that can enable “one skilled in the art to reduce the invention to a practical form without ‘exercise of the inventive faculty.'”[ii] In other words, if you tell someone who works in the relevant technology area about your invention, they must be able to understand and build/manufacture it without becoming inventors themselves. Having an idea about a refrigerator that runs on air would be a great addition to the household, but that is not an invention without having any way to build it.

So, before beginning this journey, you should be reasonably certain that you have conceived a patentable invention. If you are, then it is time to contact a patent professional and set up an inventor interview.

2. The Inventor Interview

Following what may be an initial brief telephone conference or virtual meeting, an inventor interview may be scheduled. An inventor interview is an in-person or virtual meeting between you and your patent attorney or patent agent to discuss your invention and the detailed steps that will be taken to obtain a patent. To help the meeting run smoothly, it is best to be well-prepared. In this sense, being well-prepared means the following:

• Prepare a thoughtful, cogent explanation of your invention.
• Point out how and why you believe your invention is an improvement over known technologies.
• Provide a brief written description, as well as photos, videos, drawings, schematics, flow charts, and any other graphical representation you have of the invention.
  • The written description and images are preferable, though certainly not required.

During the meeting, the invention will be discussed in light of the legal requirements that your invention must meet before a patent can be issued covering it, namely, novelty, usefulness, and non-obviousness. In addition, there may be discussions of further aspects of the patent process, including:

• Whether to file a provisional patent application (to be followed by the “real” non-provisional application within one year)[iii]
• Patentability searching
• The contents of a patent application
• The duty of disclosure owed to the USPTO
• Costs and fees
• Whether a non-publication request should be filed[iv]
• Whether it is desirable to request expedited examination of the patent application[v]
• Whether you are entitled to pay reduced fees to the USPTO because of small or micro-entity status
• Foreign patent filings
• An expected timeline for the next steps including when a patent application will be filed

The inventor interview also presents you with an opportunity to ask questions about the entirety of this process and any unfamiliar terminology used in the patent profession. Additionally, there may be business-related matters discussed, such as potential monetization options for future issued patents.

One additional matter that will be discussed is the importance of keeping the invention and its details confidential and not disclosing information to family, friends, neighbors, investors, or other businesses without having a written, signed, and enforceable non-disclosure agreement in place.

3. Patentability Searching

Though not required, a patentability search followed by a written patentability search report is usually advisable. A patentability search will enable your patent counsel to tailor your application and claims so that they are patentable in light of the known prior art. Patentability searches can be performed online by your patent professional, or an outside search firm can be retained to perform the search. To learn more about patentability searches, see these articles:

• Patentability Searching 101: Start your (Search) Engines!
• Patentability Searching 102: Take a Dip in the Bool(ean operators)
• Patentability Searching 103: To Infinity (Results) and Beyond!

4. Drafting the Application

Assuming the decision is made to proceed with drafting a patent application, your patent attorney or agent will contact, if necessary, a patent draftsman to prepare patent drawings. The patent laws require that a patent application describing and claiming an invention capable of being illustrated must have drawings. Where an invention relates to electrical or electronic technologies, your patent attorney will usually be able to produce proper drawings in-house. Mechanical inventions, however, will often require a skilled draftsperson to produce proper illustrations of the invention from a multitude of views and cross-sections.

The actual drafting of the patent application, apart from perhaps an early drafting of the background of the invention and the claims, will usually begin after the drawings are prepared. A typical patent application includes the following key elements:

• A written description of the invention;
• Claims to the invention; and
• The drawings.

Note: the written description and claims are commonly referred to as the “specification.” More specifically, the specification may include:

• A background section;
• A summary of what your invention is;
• A detailed description of your invention with reference to the drawings; and
• At the end of the description, one or more “claims.”
  • A claim is an attempt to set forth in words, in what may seem an arcane fashion, exactly what you believe your invention to be.

Upon completion, the draft application will be provided to you (and any co-inventors, if there are any) to review, comment upon, and edit as you deem fit. It is your patent application, after all. Extreme attention should be paid to the drawings to ensure they are accurate and to the specification text. Any misstatements or false impressions should be brought to your patent attorney's attention for correction. In addition, a critical, word-for-word review of the claims should be made to be certain that they set forth what you believe your invention to be.

5. Beware of the Never-Finalized Invention

Improvements to an invention are often made after the patent application drafting has begun. Inventors should strive to avoid a situation, however, where the invention is never finished because of continuous tinkering. Some changes to an invention, such as switching to a Philips head bolt from a slot head bolt to aid in the automated manufacture of your invention, will rarely merit inclusion in or changes to an already or nearly prepared application.

Depending upon the invention, though, such improvements often can be incorporated into the application being prepared. Sometimes an improvement is worthy of its own application. In any event, improvements should be disclosed immediately to your patent counsel so a decision can be reached as to how to proceed regarding those improvements.[vi]

6. New Matter

In conjunction with recognizing the problem of the never-finalized application, it is important to understand the concept of “new matter.” Once filed, the application is considered “carved in stone” and cannot be amended to add any substantive new matter. The application can be amended and portions rewritten to clarify the invention, but only if the amendments do not introduce substantive material, particularly material relating to the invention as claimed.

Thus, it is important to ensure that the application as it will be filed includes everything important to the description, illustration, and claiming of the invention.

It should be noted that while the application cannot be substantively amended after filing, there will be later opportunities to draft and file continuation and continuation-in-part applications, the latter of which can introduce new figures and disclosure related to the invention.

7. Finalizing the Application and Filing

Following any necessary rewrite of the specification and/or correction or addition to the drawings, the application will be placed in final form for filing. In the normal course of affairs, the documents required to accompany the application upon filing the application will be prepared. These filing documents include a declaration of inventorship and a power of attorney, both of which all inventors will be required to sign. Additionally, an assignment of patent rights will be prepared for each inventor's signature if the inventors are under an obligation to assign those rights, such as through an employment agreement.[vii]

Patent applications may be filed either online through the USPTO website – which is preferred – or in paper form with a substantial increase in filing fees. When filed electronically, a filing receipt documenting the filing will be received at that time. If a paper filing is chosen, a filing receipt will be received in due course.

How Gallium Law Can Help

Hopefully, the foregoing discussion will have answered some of the questions you have about the patent application process up to the filing of the application. If you have lingering questions, the professionals at Gallium Law are ready to answer them and help you obtain the patents rights to which you are entitled. Please call us at 651-256-9480 or fill out this Contact Form to speak with us soon.

*The information in this article is not legal advice and should not be relied on. The content of this article is for informational purposes only and is meant as a starting point in your search for answers to your legal questions.

[i] A more detailed explanation of “conception” can be found in the Manual of Patent Examining Procedure at §2138.04, https://mpep.uspto.gov/RDMS/MPEP/e8r9#/e8r9/d0e207607.html.

[ii] Gunter v. Stream, 573 F.2d 77, 197 USPQ 482 (CCPA 1978)

[iii] Briefly, a provisional application is never examined and no patent issues from it. Provisional patent applications can be filed for a nominal fee and serve to establish a filing date of a disclosure of your invention at the United States Patent and Trademark Office. A non-provisional application, claiming the priority filing date of the provisional application, must be filed within one year of the filing of the provisional application or that priority filing date will be lost. Your Gallium Law professional can provide a further explanation of why that priority filing date is important.

[iv] Non-provisional patent applications are published 18 months from their earliest effective priority date. 35 U.S.C. §122(b)(1). Exceptions to the publication rule can be found at 35 U.S.C. §122(b)(2). Occasionally, it may be desirable to request non-publication (for a fee) for various business or technology development reasons, among others. 35 U.S.C.§122(b)2(2)(B).

[v] For an additional fee an inventor can petition the USPTO to examine an application more quickly than it normally would be examined (also known as accelerated examination; such accelerated examination is known as Track One examination for utility applications and Rocket Docket for design applications).  Such a petition may be advisable, for example, where you are aware of potential infringers of any patent that may issue from the application.

[vi] You should note that making changes after the inventor interview will likely lead to increased costs, both in terms of attorney fees and drafting fees, and will almost certainly do so if the preparation of the application and drawings has begun.

[vii] In order to obtain a filing date, the only documents that need to be filed are the specification and drawings (and accompanying USPTO documents that do not need inventor signatures). Other documents such as the declaration, power of attorney and assignment can be filed later. The better practice is, however, to file everything at once if at all possible.