The Patent Process, Simplified

Need assistance with the patent process?

Seeking intellectual property protection can be overwhelming for many inventors, especially first-timers and small businesses looking to patent their inventions.

Legal representation is essential for navigating patent laws and the patent application process. An IP attorney can make the difference in obtaining a patent for your invention and helping you to protect your intellectual property.

Whether you have an idea and you’d like to find out if it’s patentable or need help with patent applications, or litigation, AEON Law has the intellectual property law services you need.

AEON Law has significant experience obtaining design patents and utility patents, in patent prosecution and patent litigation. Contact our law firm today for more information on our professional legal services. You may reach us here.

A patent is a form of intellectual property granted by governments that gives inventors or companies the exclusive right to exclude others from making, using, selling, offering for sale, or importing their patented invention for a significant time.

Under United States patent law, anyone who “invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof” may obtain a patent by filing a patent application.

The patent system serves several functions in the U.S. and global economy. Not only does it help protect inventors — it also encourages new innovations because inventors are required to disclose their inventions publicly, how they’re made, and how they’re used, as part of the patent process. Patents help fuel competition in the marketplace as companies work to develop new products to serve consumers.

Below, we’ll explain the types of innovations that may be patented and how to get a patent.

Forms of Patent Protection

Under U.S. patent law, there are three types of patents:

• Utility patents: A utility patent may be granted to anyone who invents or discovers any new or useful process, article of manufacture, or composition of matter, or any new and useful improvement thereof
• Design patents: A design patent may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture
• Plant patents: A plant patent may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant

What is required to obtain a patent?

To receive a patent grant, an eligible invention must be new, useful, and non-obvious.

If an inventor publicly discloses their invention, the inventor has a one-year grace period in the USA to file for patent protection. However, another independent inventor may still be able to file within that grace period and get the patent rights, so it is important to file as soon as possible.

For this reason, inventors who want to patent their invention may wish to perform a search of previous public disclosures. Earlier public disclosures are also known as prior art.
Not just anything can be patented. Literary, dramatic, musical, or artistic works; physical phenomena; laws of nature; and inventions that are not useful will not be granted patent protection. An abstract idea also may not be patented.

In the United States, the United States Patent and Trademark Office (USPTO) is the federal agency that issues patents.

How to Get a Patent

After determining that a patent is the suitable form of IP for you (rather than trade secrets, copyrights, or trademarks) and your invention is patentable, you may want to conduct a patent search.

The USPTO recommends inventors not experienced in performing patent searches engage a registered patent attorney or agent to conduct a comprehensive patent search for them.

A good starting point for inventors is the USPTO’s patent database, which includes patents that have been filed and granted that might be similar to your invention.

The USPTO database includes text descriptions of patents issued since 1976 and images of many patents issued since 1790. The USPTO also has a database of published patent applications.

In general, the USPTO is an excellent source of patent information and information about other forms of IP.

Many foreign countries also offer access to their patent collections online for free, which can help inventors who want to patent their IP.

Filing A Patent Application

After determining that your invention meets the criteria above, you’re ready to plan your application strategy.

This next stage of obtaining a patent for your invention, the process of drafting, filing an application, and working with the USPTO examiners, is also known as patent prosecution.

First, you’ll determine what kind of patent application you need to file.

If you’re filing a utility or plant patent application, there are two types of applications: a provisional patent application or a non-provisional application.

A provisional application allows inventors to file their patent application without a formal patent claim, oath or declaration, or an information disclosure (prior art) statement.

The USPTO does not evaluate provisional applications. They are used to establish an early effective filing date for a non-provisional patent application they file later. They give inventors more time to research or continue to develop their invention.

Once you’ve filed a provisional patent application, you have one year from the filing date to file a corresponding non-provisional patent application or convert the provisional application to a non-provisional one.

Filing a provisional application also allows inventors to use the term “Patent Pending” in connection with their inventions.

Non-provisional patent applications, in contrast, are examined by the USPTO.

They are also complex, lengthy, and require strict adherence to patent laws.

In non-provisional applications, inventors are required to provide the USPTO with a written specification of the patent (a description of the invention), claims (which set out the scope of legal protection), drawings, and an oath or declaration.

When submitting their applications, inventors will also need to pay filing, search, and examination fees.

The Examination Process

Once inventors have filed with the USPTO, and the USPTO accepts the application as complete, the examination process begins.

A patent examiner from the USPTO next reviews the filed application to make sure it meets the requirements set out in federal patent law.

The patent examiner will notify you if your application does not meet the requirements and explain why.

The examination stage is a collaborative process; you will have opportunities to amend your application or argue why your application meets the legal requirements. It’s important to know that, as part of this process, if you have chosen legal representation, the patent examiner will only communicate directly with your lawyer during the examination stage.

When the patent examiner finds the application meets the requirements, inventors will receive a notice of allowance. The notice of allowance will include information on the issue fee and publication fee you must pay before the patent will issue.

After the patent office has received your issue fee and the publication fee, it will issue your utility and reissue patents within about four weeks. The patent grant is mailed on the issue date of the patent.

Appeal

If your patent is denied, it’s not the end of the road. You can appeal the patent examiner’s decision to the Patent Trial and Appeal Board or PTAB.

Maintaining your patent

You might think that once the USPTO issues a patent, this is the end of the process, but it’s not. After you get a patent, you still need to maintain it. Depending on the type of patent you’ve received, you might need to pay maintenance fees to keep your patent in force.

Maintenance fees are required for a utility patent at 3.5, 7.5, and 11.5 years after they are issued to keep the patent protection in place. The utility patent will expire if these fees are not paid.

How long do patents last?

Patent owners should also be aware that patents do not last forever — their shelf life is limited to a set term, which also depends on the type of patent involved.

Utility patents and plant patents last 20 years from their filing dates, while design patents last 15 years from their issue dates.

International Patent Applications

Inventors can also file a consolidated international patent application through the Patent Cooperation Treaty (PCT).

Through this route, an inventor can seek protection for their invention in a large number of countries at once by filing a single patent application rather than filing in separate countries.

More than 155 countries are contracting states to the PCT, an international treaty governing inventors and companies seeking international patents.

Patent Litigation

The PTAB hears a variety of patent litigation in addition to appeals. Types of trials include inter-partes reviews and post-grant reviews.

The following are a few types of patent litigation.

Post-grant review

Post-grant review is a trial proceeding to review the validity of a patent. Post-grant review is initiated by a third party filing a petition within nine months of a patent’s issue date.

Inter partes review

Inter partes review, also known as an IPR proceeding, is a trial proceeding conducted at the PTAB. These proceedings are held to review the validity of a patent. These proceedings are initiated either nine months after the patent is issued or, if post-grant review proceedings occurred, after a post-grant review ends, whichever is later.

Patent infringement

Once you’ve been granted the exclusive right to your invention, it’s up to you to protect your invention. The USPTO’s patent system doesn’t help you defend your rights; it merely processes your patent application and makes grant decisions.

If you’re an inventor with the exclusive rights to an invention and someone infringes on it, you can choose to file suit against them for either direct or indirect infringement.

Engaging in litigation can prevent others from infringing on your patents and aid in protecting your intellectual property rights to your innovation.

Why hire a patent attorney?

A patent attorney can be an invaluable resource for inventors as they work to secure patent protection. Patent attorneys can assist in several ways, including providing the following services:

• Counseling clients on a wide range of patent matters, including crafting strategy in line with the client’s goals, budgets, and timelines
• Performing patent searches, determining the patentability of a new invention, providing opinions on patentability
• Analyzing products and services for infringement/noninfringement of existing patents
• Assisting with patent applications
• Prosecuting patent applications
• Licensing patents for others’ use

Need assistance with the patent process?

Seeking intellectual property protection can be overwhelming for many inventors, especially first-timers and small businesses looking to patent their inventions.

Legal representation is essential for navigating patent laws and the patent application process. An IP attorney can make the difference in obtaining a patent for your invention and helping you to protect your intellectual property.

Whether you have an idea and you’d like to find out if it’s patentable or need help with patent applications, or litigation, AEON Law has the intellectual property law services you need.

AEON Law has significant experience obtaining design patents and utility patents, in patent prosecution and patent litigation. Contact our law firm today for more information on our professional legal services. You may reach us here.