Five Early Steps to Patent Your Invention

As a patent attorney my general advice for independent inventors is to always have professional assistance when preparing and filing your patent application. However, it is undeniable that preparing and filing a patent application is an expensive process that often comes during business startup when financial resources are at their lowest. The following are a few steps that any inventor can take to begin the patenting process. Even if you ultimately decide to seek professional help, taking these early steps can help crystalize the invention in writing and reduce professional drafting costs down the road.   
 
1.Preliminary “Knock-Out” search
 
Novelty and non-obviousness are two of the major milestones to overcome before the United States Patent and Trademark Office (USPTO) will allow an application. The question is whether your invention is new and not obvious in view of the “prior art.” Examples of prior art  are physical embodiments (e.g., marketed products) or published disclosures (e.g., articles, patents, or applications) in any language, anywhere in the world. 
 
Novelty generally means that the invention is not anticipated or the same as the prior art. The novelty hurdle is often easier to overcome because at least one or more element of your invention usually differs in some manner from the prior art. Obviousness is often the bigger obstacle. Your invention must not be obvious in view of prior art individually or in combination with multiple pieces of prior art.  As an overly simplified example, if your invention contains elements A, B, and C, the USPTO can reject the application as obvious if: (i) prior art 1 contains element A and B; (ii) prior art 2 contains element C; and (iii) there is a reason to combine the prior art. 
 
One way to search for prior art is to perform an internet search (e.g., google or yahoo) for similar inventions, and then check the USPTO patent and application databases (uspto.gov).  The USPTO databases are generally user friendly, but first time searchers should understand there is a skill to performing accurate and relevant searches. While it is nearly impossible to definitively say any patent application will be patentable a Knock Out search can provide a modicum of optimism. Essentially, assuming you do not find anything exactly on point in your search (no anticipation-no “Knock Out”) it becomes more reasonable to proceed with the patenting process.[1]
 
2.Decide when you need to file your patent application
 
In 2013 after the passage of the America Invents Act (AIA) the United States joined most of the industrial world in becoming a first to file instead of a first to invent country.  The long and short of this change is that there is now a greater incentive to file your patent application as soon as it is ready.  Additionally, inventors should file their applications within one year of any offer for sale or public disclosure of the invention to ensure the offer for sale or disclosure does not become prior art against your own invention. If you think you may need international protection the timing of filing becomes even more complicated, and you should seek professional assistance.  
 
3.What kind of patent application should you file?
 
There are three kinds of patents, (i) utility, (ii) design, and (iii) plant (for the purposes of this post we will not discuss plant patents).  Further, there are two types of utility applications, namely, provisional applications and non-provisional applications.  
 
Utility patents are for functional inventions (e.g., products, methods and processes), while design patents are for ornamental features of a product (e.g., the shape of an iPhone or the design of a piece of furniture).  
 
Provisional utility applications can be thought of as an optional bookmark that must be converted to a non-provisional patent application within twelve (12) months of filing or the provisional application will go abandoned.  Provisional applications have reduced filing fees, allow the inventor to secure their filing date (for prior art purposes), and provide additional time to determine the feasibility of pursuing the invention. Additionally, provisional applications are not examined, and therefore usually have no prosecution costs.
 
Non-provisional utility applications have higher USPTO filing fees to pay for the examination, and require prosecution (assuming you do not receive a first office action allowance, a very rare occurrence).  You are not required to file a provisional application to file a non-provisional application, but you must eventually file a non-provisional application to ultimately receive a utility patent. As discussed above the provisional application is the optional bookmark, the non-provisional application is the application that eventually (hopefully) becomes a patent.      
 
4.Begin drafting your application and preparing drawings 
 
I would generally suggest non-professionals[2]start with the specification (the text of the application) when drafting utility applications. Provide a detailed description of your invention, explain what your invention does, and how its special and unique features provide improvements over the prior art.  Include detailed ways of constructing and using your invention, variations on how your invention can be built or used, and various materials that can be used to manufacture and/or practice your invention.  Where helpful provide drawings to explain how your invention works providing reference numbers in the drawing that are cross referenced in the text of the specification.  A good starting point is to find patent applications on similar subject matter (possibly the ones you found in step 1) and use them as an outline. 
 
For design patent applications you will need a very short specification and at least six drawings from different perspectives of the ornamental design. While design applications are less complicated to draft and file than utility applications there are still many aspects of the drawings, as well as potential prosecution, that are greatly benefited by the assistance of counsel.  However, even if you are not employing a patent attorney to prepare the design application it is highly beneficial to employ a professional draftsman (e.g., graphic artist) that is familiar with USPTO drawing requirements.[3]   
 
5. Claim drafting
 
The scope of protection provided by a utility patent is defined by the claims.[4]The claim language acts similarly to the property description within a deed for real property. The patent claim defines the invention (land) that is secured by the patent (deed) for the inventor (land owner).[5]The claim defines the meets and bounds of the protection provided by the patent.
 
The language employed in a patent claim must be found and defined in the specification. Support for the claim language is one of the essential features of the specification of a patent application.  In practice, the USPTO examiners will often read the claims first and then look to the specification to answer questions about the claim language. If proper support/clarification cannot be found the USPTO may issue rejections based on written description and indefiniteness (topics for another day). 
 
Further, the patent claim must not encompass subject matter outside of the invention disclosed by the inventor. This is one of the balancing acts necessary for a successful patent claim. The claim should define the invention as broadlyas allowably supported by the specification without encompassing subject matter already known in the prior art.  Unfortunately, for most inventors this is an aspect of patent drafting where science tends to give way to law and form. 
 
Final thoughts 
 
Hopefully the above discussion provides encouragement, and does not frighten away too many budding entrepreneurs.  What should always be noted is that pursuing a patent is a business decision in which the inventor must weigh the costs and benefits. Patents can be exceedingly helpful tools in advancing a business. The patent can become a shield to protect against illicit competition and a sword to provide additional funding sources through investments, licensing or assignment. But like most things in life, if you decide filing a patent is worth doing, it’s worth doing right.  Take your time, draft a detailed application, tweak it, improve on it, consider seeking professional advice, and above all don’t be so intimidated by the process that you never begin.  


[1]For most independent inventors and small businesses it is often not worth the effort to predetermine the USPTO’s views on obviousness.  This is because the cost of properly analyzing obviousness often exceeds the cost of actually drafting and filing the application. 

[2]There are two main thoughts on patent drafting, start with the specification or start with the claims.  The second method, employed by many patent attorneys, is to start with the patent claim. Patent attorneys often use this drafting method because the specification must support the claims and if specific support is not provided valid claims cannot be issued.  The idea is to get the claim language down, and then draft the specification to specifically define the claim terms.  The claim terms should then be used throughout the specification so that support can be pointed to when needed during prosecution before the USPTO, and potentially later in litigation.          

[3]For similar reasons a knowledgeable draftsman should be used for the preparation of drawings for a utility application. 

[4]The scope of the protection provided by a design patent is defined by the drawings. 

[5]Interestingly, and actually important for first time claim drafters, is the fact that much like a property description in a deed, each patent claim no matter its length is one sentence with one period.