How to Register a Patent

You don’t need to be a visionary like Thomas Edison to come up with an innovative and valuable invention. However, it’s important to be wise enough to protect your creation if you want to make the profits you deserve. In essence, you’ll need a patent, which is a legal right granted by the government to take action against anyone (an infringer) who attempts to profit from your idea. In the United States, only the original inventor has the right to file for a patent, although these rights can be transferred to others or a company.

Filing for a U.S. patent can be a complicated and challenging process, with the possibility of rejection. That’s why many experts suggest that inventors hire a lawyer to help with drafting and submitting the patent application. As an inventor, you’ll need to act quickly to ensure your rights are secured—especially if someone else later claims the idea as their own. Consider keeping an inventor's notebook and submitting a provisional patent application to demonstrate that you acted diligently in pursuing your patent.

Before submitting your patent application, visit the U.S. Patent and Trademark Office (USPTO) website to check if your idea has already been patented. After that, determine the appropriate type of patent for your invention to ensure you apply for the correct one.

The USPTO recognizes three types of patents. First, there are Utility patents, which are the most common and apply to inventions with a specific function. These differ from design patents, which cover the non-functional, ornamental aspects of items, like their unique shape or surface design. Lastly, plant patents protect inventions related to plants that can be reproduced asexually. It's important not to confuse a patent with trademarks, copyrights, or trade secrets, as each has its own set of laws governing them.

Patent applications can be filed electronically through the USPTO website, via mail, or by fax (email submissions are not accepted). However, be prepared for a lengthy wait. Depending on the type of application and the nature of the technology, it may take anywhere from one to three years before your patent is granted.

A patent can be rejected for several reasons, including failing to meet the novelty and non-obviousness criteria. Novelty means the invention must be distinct from prior art (earlier patents or publicly known knowledge). Non-obviousness indicates that the invention is sufficiently different from prior art that a skilled professional in the field wouldn't deem it an obvious idea.

So, what exactly is required to file a patent? Continue reading to learn more.

What do you need to file a patent?

You may have thought that creating your invention was the most challenging part, but the patent process can quickly become overwhelming due to all the components required in an application. A formal (non-provisional) application contains several necessary sections. Along with the invention's drawings, you'll need to include the specification, which serves as a guide on how to make or use the invention. The specification includes the following:

The specification should also include essential information like the title of the invention, references to related applications, and a list of figures depicted in the drawings.

Your application will most importantly include claims, which come after the specification. Claims define the legal extent of your patent and specify the boundaries of your invention, should the patent be granted. Along with independent claims, which stand on their own, you can include dependent claims, which are narrower and reference a prior claim [source: Pressman]. Start with broad claims to maximize legal coverage, but you may need to narrow them later if the examiner deems them too vague.

In addition to the application itself, you'll need to submit several other items, such as the payment for filing fees, a self-addressed receipt postcard, a Patent Application Declaration (PAD) form, and an Information Disclosure Statement (IDS). The PAD confirms you as the true inventor, while the IDS requires you to disclose any relevant information you're aware of, such as similar applications that may affect yours.

Unfortunately, the process doesn't end once you've filed your patent, which is yet another reason to seek professional assistance. An attorney can guide you through the prosecution process, helping you fight for your patent to be approved by the USPTO.

The U.S. Patent and Trademark Office

Governments grant time-limited patents to encourage inventors to keep pushing the boundaries of innovation and scientific progress. Without these protections, inventors might hesitate to create new products for fear that someone might steal their ideas. The U.S. founding fathers recognized this when they gave Congress the authority to issue patents, as stated in the Constitution (Article 1, Section 8).

With the rapid pace of technological advancements and the increasing recognition of patents' value, the past decade has seen a significant rise in patent applications. In 2008, the USPTO received 485,312 patent applications and granted 185,224 patents [source: USPTO].

Throughout the patent process, you'll work with a single patent examiner. Utility patent examiners typically have a background in engineering or science.

It's quite uncommon for an examiner to approve a patent application on the first attempt. Usually, the examiner will issue a non-final rejection, which gives you the opportunity to amend your claims (narrow them), respond (argue your case), or do both. Following this, the examiner may issue a final rejection. However, you still have options like submitting an after-final amendment or argument. You could also file a continuation application, essentially restarting the process with new claims, re-submitting the specification, paperwork, and obtaining a new serial number and filing date (while retaining the priority of the original filing date). Alternatively, filing a Request for Continuing Examination (RCE) allows you to submit another amendment without re-submitting the specification or receiving a new filing date. Another possibility is to appeal to the Board of Appeals and Patent Interferences (BAPI).

For this process to be worthwhile, you must believe that your invention has value. Even while the prosecution is ongoing, and regardless of whether you're granted a patent, you can still profit from your invention or license it to someone else. The licensing agreement remains valid whether or not a patent is granted.

As you might expect, drafting and prosecuting a patent application can be quite complex. A specialized attorney can help guide you through the process. However, the more an inventor understands the procedure, the better they can collaborate with their attorney to secure the maximum legal protection.