You’ve decided to get a patent…now what?

Patenting takes work, and usually lots of it.  Don’t let this deter you though – just break it down into manageable pieces.

Once you have decided to take the plunge and start the process of securing patent protection for your invention, the first thing you should do is find a good patent agent.  A patent agent is uniquely qualified to navigate you through the patent application drafting stage and subsequent filing at the Patent Office.

Step 1 – Consider compiling background information on your invention (if you haven’t yet)

However backing up a step, you might consider compiling all the background information on your invention yourself before initiating the process with a patent agent.  This includes all information in the public domain (everything available without restriction to the public) related to your invention and is referred to in patent lingo as “prior art”.  You know your invention best and so are most likely aware of what has been done before by competitors in your field.  There are a number of good free on-line patent databases that allow you to see what others have patented (or have applied to patent) in your area.  A good place to start is googlepatents.com.  Similar to a regular google search, the google patent search engine is very user friendly and a search can be performed simply by entering key words.  If you have the time and inclination, also perform a search on the US Patent and Trademark website.  Here is the link to US Patent Office web-based search: http://patft.uspto.gov/netahtml/PTO/search-bool.html

A patent agent can also conduct the search for you.  I suggest doing a preliminary search yourself on the internet to get a sense of what has been done before.  If something comes up in your search that is identical to what you have invented, then there is no reason to proceed to step 2 since you will not be able to get a patent.  This can save you a lot of time, money and headache.

Step 2 – Engage a good patent agent

Finding a good patent agent with experience can be challenging.  Ask how many patent applications they have drafted, their technical expertise and how much it will cost.  If the agent is a partner in a firm, ask if they will do the work themselves or if it will be performed by a more junior member of the firm.  If the latter is the case, then ask for the qualifications and experience of the person who will actually be doing the work.  It is best if the person doing the actual work has at least 3 years of experience, but preferably more.  Unfortunately, the good agents are busy and so it might be hard to get their band-width once you have retained them.  Be persistent.  Everyone deserves the best representation they can get.

Step 3- Assessing patentability and the patent application drafting process

This stage of the process will largely be spearheaded by the patent agent.  They will probably perform their own search of the literature to satisfy themselves that your invention meets the requirements for patentability.  If you have already done a preliminary search, then send them the results of your search to give them a starting point for their own research on your invention.

First, the invention needs to be new, generally meaning that it is not identical to what is in the public domain already.  Second, it needs to be non-obvious, meaning that it is not just an obvious variation of what is already in the prior art.  Developing the judgement as to whether or not an invention is eligible for patenting takes years of experience to perfect and even then can change as case law evolves and develops over time.  This is best left for an expert, although keep in mind that the patent agent is not a technical expert in your field (or rarely) and does not have the intimate knowledge of it that you do.  If the patent agent comes back with a negative assessment regarding your prospects for getting a patent that is based on a misunderstanding of your invention, do not be afraid to tell him or her.  A good patent agent will listen attentively and reassess the patentability of your invention if warranted.  A bad one will not listen because he or she thinks they know better.  Get a second opinion if this occurs.

Even if your invention is new and non-obvious, there is certain subject-matter that is just simply off limits.  This can also vary depending on the country, but things that are not functional (purely aesthetic) cannot be patented, nor doing things that require only professional skill or judgement such as a process that entails purely mental steps (this is tricky to assess – ask a patent agent), as well as things that don’t work at all (e.g. perpetual motion machines).  Regarding things that don’t work at all, as a humorous aside, an inventor once tried to patent a “death ray”, similar to the one on star wars, and the Patent Office flat out rejected it.  Not surprisingly, when the Commissioner of Patents (head person at Patent Office) decision was appealed, the courts agreed with the Patent Office.

Again, I cannot stress how important it is to retain a patent agent to make a proper legally sound assessment as to whether or not what you have invented is patentable.

The drafting of the patent application should be carried out by the patent agent with extensive input from you.  The patent agent will describe your invention in legal terms in enough detail that someone else who is quite familiar with the technical field can reproduce it without undue burden (meaning it can’t be too hard for them to replicate).  They will craft what are called “claims” at the end of the document that define the scope of what you can prevent others from doing.  All of this takes years of experience to perfect and is best left to an experienced professional.  If you have a penchant for writing, by all means take a first stab at it, but do not be surprised if fairly significant revisions are made by your patent agent.  Let them earn their money.

Lastly, make sure to review the patent application before it is sent to the Patent Office.  Your patent agent may have made a few technical mistakes and they should be caught before the filing process is initiated.  They do not do what you do day in and day out and so reviewing the document for technical content is essential.  After your review, the patent application will be sent to the Patent Office and wait in line for review by a patent examiner.  The process of sending the patent application to the Patent Office is called “filing”, probably harkening back to a time when the Patent Office put the patent application in a physical file while it was waiting for review.  After you have filed your patent application pat yourself on the back for a job well done (or your agent).  However, you don’t have what is strictly speaking a “patent” yet – it is still an application, i.e., “patent pending”.  It needs to be reviewed by the Patent Office first before it is allowed and then issued.

What happens after your patent application is filed and how the Patent Office conducts the review prior to allowing your application (or rejecting it) will be the subject of a later blog.  Stay tuned.

Disclaimer: Again, I wish to stress that the opinions in this blog do not reflect those of my past or present employers.  The above is also not meant to be taken as legal advice.  If you need legal advice, retain a patent agent.

 

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