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Before You Apply for a Patent

Tags:Commercialization, Marketing

Before deciding whether to secure a patent, you must complete a series of steps, which the corporate and legal world calls due diligence. To perform your due diligence in the patent application process you must first conduct a preliminary patent search. Both the U.S. Patent and Trademark Office and Delphion have excellent Web sites with search engines for performing this task.

When searching, use generic terms (just as you did for your prior art search), not the marketing name you may have given your device. For example: If your device is a calculator for teaching children how to count money, search for a “children’s calculator” or “money calculator.” If your product or patent search comes up with a hit (your idea is already a product or is patented) you may not necessarily want to discontinue the development of your technology. This step may seem unnecessary because you have already conducted a prior art search, but it is important to continue to search the relevant databases, as new patents are introduced every day. Evaluation of the claims of any pre-existing patents and the field of use may be important in determining what can be patented in a further invention. [NOTE: Further due diligence is required further along in the process in the form of a market analysis.]

Consider hiring a patent attorney

If you don’t find any references to your innovation, it may be beneficial to contact a patent attorney at this point and have them do a professional search and patentability opinion based on issued patents and prior art. This opinion could cost anywhere from one to two thousand dollars, based on the complexity of the search. A patentability opinion is just that,an opinion based on information obtained during a patent search, not a statement of fact. However, there may be patent applications in process that are not visible to you or your patent attorney. A patent on a device identical to yours may be issued by the USPTO a day after your search had been completed. Again, if the patent search comes up with a hit and you find that your device has already been patented, the cost you incurred for the professional search may be well worth it because it stopped you from investing more time and resources in fabricating a prototype. Even if you do not immediately find a related patent, continue to search the patent sites as you move forward with your invention.

Provisional patents

Effective June 8, 1995 it became possible to file a Provisional Patent Application with the United States Patent and Trademark Office. The Provisional Patent Application is intended to be a relatively low-cost way of postponing the cost and effort of drafting and filing a full patent application. The provisional application need not contain claims, and the filing fee is modest ($200 for large entities, $100 for small entities). Once the provisional patent is filed, the applicant may then wait almost a year before filing a full patent application. The 20-year patent term that runs from the first U.S. filing date does not start with the provisional application, but instead begins only with the date of the subsequent patent application. As a result, one may postpone the start of the 20-year patent term by up to one year by the use of a provisional patent application. The provisional application may serve as a priority document for non-U.S. convention filings. Filing a provisional patent application delays any review of the information contained in it for merit or prior art for one year.

For more information about the pros and cons of provisional patents, see the USPTO Web site’s Provisional Application for Patents.

Patent claims

Since patent claims are very difficult to write, it is recommended that you contract a patent attorney to assist you in the process. A good patent attorney will be familiar with the nuances of wording that are important to the USPTO (Sperry, 2004). According to Sperry, patent applications require that you provide information in four key areas:

1. Specifications are written in narrative form. This section describes your idea and “sells” the unique nature of the product and the need for the product. It must include at least one claim; claims legally define the idea that the inventor is seeking to protect. This section will also provide a description of the drawings you use to illustrate your claim. Sperry (2004) also recommends that you include a “catchall” paragraph that will help to broaden the limits of your patent application by mentioning and including variations on the idea for which you are seeking protection. This could include wording such as: “an application including but not limited to -.”.
2. Drawings illustrate the concept for the USPTO. It must be specific enough to allow the USPTO to examine it and with the description provided in the specifications, the reviewers can understand the concept. Prototyping helps to ensure that the drawings provided in the patent application are sufficiently accurate and clear.
3. Declaration or oath declaring that you believe that this is an innovative concept not yet existing in either patent form or in the commercial marketplace. This is one of the compelling reasons why a prior art search is so important.
4. The fees for obtaining a patent are different for small and large companies. If you are a small entity, you will also be required to fill out a small entity declaration form. (Keep in mind that costs and efforts do not end once you have a patent; maintenance costs are required and there can be challenges or continuation-in-part additions to the patent, for example. For more information, http://www.uspto.gov/go/fees.)