Applying for a patent is a long and sometimes complex process, but the process can be broken down in these five steps. Find out how to get started researching your patent, drafting the application, and what to do while you wait for an official response.
Find out more about Patents
by Joe Runge, Esq.
Joe Runge graduated from the University of Iowa with a Juris doctorate and a master of science in molecular evolution.
Updated on: December 13, 2022 · 5 min read
Applying for a patent is a long and involved process. It helps enormously to know the steps of the patent application process. These five steps will help you plan out the patent process as you seek to protect your invention.
The first step in how to get a patent is to understand your invention. What aspect (or aspects) of the invention makes it new and useful? Suppose you made a custom pair of shears that are useful for cutting thin strips of fabric. The scissors have a custom-designed handle with different shaped finger loops and an additional set of pivots that allow the cutter to feel the slightest resistance when cutting through very thin fabric.
Once you identify the aspects that make your invention new and useful then you need to consider the scope. Are there other ways to make your invention? For example, could you use springs instead of pivots? Could you change the shape of the finger loops or the materials they are made out of? Find all the possible ways to make your invention work, even if they're not as good as the preferred way you make your invention.
Next, look at whether or not your invention has a broader application. Is there something special about thin fabric or could you use the scissors for any type of delicate work? Would the shears be useful for surgery or other precision applications? If so, would you need to make further modifications? Asking these types of questions early on will help you search, protect and benefit from the full scope of your invention. It will give you more strategic options and, most likely, a more valuable patent.
A patent requires absolute novelty. Part of the rationale of giving inventors exclusive rights to their inventions is to encourage the inventor to teach the public how to make the invention work. If a reasonably skilled person could make the invention work from information already available to the public, then what benefit is there to giving the inventor exclusive rights?
You have to search to find any relevant publication, presentation, sales brochure, patent application or issued patent that overlaps with your invention or some components of your invention. For example, you may find a technical white paper that discusses precision robotic manufacturing. You notice that the robotic arms have the same kind of pivots as your super sensitive scissors. The reference is considered prior art, even if it is in a different field.
The United States Patent and Trademark Office (USPTO) requires you to disclose any publication, patent or other written document that you know to be relevant to your patent. Failure to do so could disqualify your patent, even after the USPTO issues it.
Back to the pair of scissors that you made. Let's say you really like them, but they leave a lot to be desired. The pivots are too loose and you want to spend more time tinkering to get the tension just right. You also want to try out some new materials for the finger loops. If you want to get a patent on file but leave some room to tinker, you may want to file a provisional patent application.
A provisional application serves as proof that you are the inventor as of the date you file the patent. You can then take a year to file the actual patent application (what most people call a patent is actually called a utility patent). In that year, you can experiment and perfect the prototype that you built. You cannot, however, add anything new. If your new prototype includes super sensitive pressure sensors that you did not include in the provisional application then you will need to file a new patent application to get the benefit of the new sensors.
When considering what patent protection is available to you, do not rule anything out. For example, you may shape the finger loops on your scissors because they have a real functional improvement in improving sensitivity to resistance. They may also produce a very distinctive appearance. You could file a design patent application for the distinct appearance of the finger loops in addition to or in place of a utility patent application. Generally, a design patent protects the way an article looks, while a utility patent protects the way an article is used and works. Overlapping patent protection is incredibly important and makes your intellectual property that much more valuable.
Drafting a patent application, even a provisional patent application, is tricky. Patent applications have several parts, each of which can be rejected for technical or formal reasons. If you are going to file it yourself, read the Manual of Patent Examining Procedure. Make checklists for each portion of your application and triple-check your work. If you are lucky, a mistake will only cost you time and money. If you are not, you can lose your filing date or cripple your ability to get an issued patent.
Drafting a patent is a skill that takes experience to develop and a team to execute. At all other steps, there is a lot of work the inventor can do. But when it comes to drafting the application itself, a professional will be very helpful.
Do not expect to hear back from the patent office for a long time, usually a year or longer. When you do hear back, the examiner may argue that your invention is not novel in light of the prior art, that your invention is not the kind of thing that you can get a patent for, or that you have failed to fully explain how the invention works. If this does happen, you might want to seek professional advice to help craft your response.
In the meantime, while you are waiting for your response, get to work. Unless inventing is purely a hobby, you are investing your time and money in intellectual property that you think may have commercial value. If you are looking to license your scissor design to a leading tool company, for example, start talking to them now—and make sure your patent protects the features they consider most valuable. Because your patent is pending and your invention is protected, you can discuss whatever you need to seal the deal you want.
Find out more about PatentsThis article is for informational purposes. This content is not legal advice, it is the expression of the author and has not been evaluated by LegalZoom for accuracy or changes in the law.
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