Anticipate This!™ | Patent and Trademark Law Blog

The Basics: How Do I Get A Patent?

Posted in General Commentary by Jake Ward on July 18, 2009

J. Douglas Miller had a nice post at his blog, Small Business IP Protection and Management, on how individual inventors and small businesses can get started along the patenting process.  Since patent practitioners often field such questions, we thought it worthwhile to reproduce Doug’s thoughts below.

One of the most asked questions we hear is “How do I get a patent?”.   Although we have posted this before, below is an overview of the important steps in beginning the patent process.

The first step:

One of the most important first steps when something is invented is to make a record of the invention.  The record can consist of a simple a written description accompanied by any sketches, drawings, and/or diagrams.  The written description does not necessarily have to be long, but should include enough detail to tell what the invention is and how it works.  Any sketches, drawings, and/or diagrams which can supplement the written description should be included.  The inventor should then sign and date the written description and sketches, drawings, and/or diagrams, and have a witness sign and date the written description and sketches, drawings, and/or diagrams.

What the record of invention does is provide tangible evidence that the inventor actually possessed the invention on the date indicated.  It should be noted that other evidence could be used to pre-date this record.  This record is important in the United States because a patent is awarded to the first to invent, not the first to apply for a patent.  Thus, this record can become very valuable in the future.  A copy of the record should be given to your patent attorney to be placed in your file.  The record is also very helpful to your attorney in understanding the invention and in beginning preparation of a patent application.

The second step:

Once an inventor has made a record of an invention, the next step is to determine whether the invention is patentable.  In order to be patentable, an invention must be new, useful, and unobvious.  The new and useful requirements are fairly straight forward.  Unobviousness is a little less “obvious”.  However, we will leave that definition for another day.

To determine patentability, one typically conducts a search of the records of the U.S. Patent and Trademark Office (USPTO).  Although a search is not required, it is highly recommended as it may eliminate unnecessary expenses down the road if an invention is deemed not patentable. 

There are essentially three ways to conduct a patentability search. 

  1. One method which can be used to conduct a search is to visit a website maintained by the USPTO which includes a database of all U.S. patents and published U.S. patent applications.  A searcher can enter key words and other search terms in order to locate relevant patents.  The patents can be viewed in their entirety, and printed if desired.  Other web sites are available such as Google Patent for conducting the patentability search.
  2. Second, a search can be conducted at a Federal Depository Library where patent documents are also made available.  These documents can be searched, and quite often, the staff of these libraries is quite helpful in conducting the search.  The USPTO website includes an information page about these libraries, and also a listing of these libraries.
  3. Finally, a patent attorney can conduct the search for you.  Typically, either the attorney will visit the USPTO to conduct the search.  The attorney may also conduct the search on the USPTO website, but it is typically much more efficient for the attorney, and thus, less costly, to conduct the search at the USPTO.

Once the search has been conducted, the patent documents located can be studied in view of the invention to determine whether the invention appears to be patentable.  It should be noted that a Patent Office Examiner will also conduct a search during the patent application process, and may find more pertinent art.  Although not foolproof, the patentability search can provide a good indication whether or not the invention is patentable. 

Finally, the inventor’s third step:

Once it is determined that an invention is patentable, the inventor must determine what type of application will be filed to adequately protect the invention.

There are two general types of patent applications covering the structure or method of an invention which can be considered, a provisional and a utility.

A provisional patent application typically includes a written description and drawing(s) of the invention. The provisional patent application is given a filing date and a serial number, but is not examined by the Patent Office. The formal requirements are less stringent for the provisional patent application than a regular patent application and the Government filing fee is lower.  Although not required, at least one claim is typically included.  If the provisional patent application is converted to a utility patent application within one year of its filing date, the later filed application may obtain the benefit of the filing date of the earlier-filed application.

The filing of a provisional application provides an inventor with the comfort of having the disclosure lodged in the United States Patent and Trademark Office and provides the inventor a year to improve the invention, seek licensees, seek investment capital, test the market, etc.  The provisional application will not mature into a patent.

A utility patent application has more stringent requirements than the provisional.  The utility application typically includes a more detailed written description (including a full set of claims defining the metes and bounds of the invention sought to be protected) and formal drawings of the invention.

The Government filing fee for the utility patent application is higher than a provisional patent application, and the costs of preparation are typically higher as well.  A Patent Office Examiner examines the utility patent application. If the invention is found to be patentable, the utility application will mature into a patent.  The term of a utility patent is 20 years from the date of application.

A design patent application can also be considered.  A design patent covers the overall ornamental appearance of an invention, but the protection afforded by a design patent is typically narrower than that of a utility patent.  However, both a design patent application and a provisional or utility patent application can be filed for a single invention if desired.  The term of the design patent is 14 years from the date of issue. 

As soon as a provisional, utility, or design patent application is filed, any documentation, sketches, drawings or the like may be marked with “pat. pending”, “pat. applied for”, or the like.

The above steps in the patent process should give inventors a general idea of the patent process.  Although other factors may impact patentability, enforceability, and the like, this process can be used as a guide for most inventions.

2 Responses

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  1. Josh Kay said, on July 20, 2009 at 2:27 am

    It is good to put up some straightforward and basic information every once in awhile. Many times discussion of in depth issues leaves a less informed reader behind.

    For more on patents, see Generalpatent.com

  2. Captain Obviousness said, on July 22, 2009 at 7:07 pm

    It’s accurate, but it leaves out the part where the inventor spends $10-$15K to get the application drafted and successfully prosecuted only to find out his invention is worthless.


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