What is your invention?
Has the invention been already patented or is it known?
What type of patent is available for the invention?
Design Patent • Plant Patent • International Patent Protection
Which type of Utility Application to file?
Preparation of Patent Application
Filing Patent Application
Publication of Patent Application
Applicant files replies, request for
reconsideration, or appeals as necessary
If objections and rejection overcome,
application is allowed
Issue Fee and Publication Fee Paid
Do you have an invention to patent? (Define Invention)
- Having an idea is the first step to the patenting process. An individual or a team of individuals may develop the idea, and the idea may occur spontaneously or develop over a period of years. The idea may be an improvement over an existing device, method or composition, or may be something completely different from anything before. Regardless as to the participants or their origin, ideas can result in an invention, which in turn can be legally protected by a patent.
- For an invention to be patented, an idea must be reduced to practice so as to have some tangible form, not just an abstract concept. The invention will provide a solution to a problem. In order to obtain protection for the invention, the invention must be new and not obvious such that it has never been done before.
- The attorneys and agents at Bacon & Thomas
have extensive experience in guiding inventors through the patent process.
Please contact us here for more information on how you can get started
on the process.
What is your invention? (Invention Disclosure)
- In order to simplify the following steps, it is helpful to organize your thoughts so it can be easily explained. Some of the points to identify in the invention disclosure may include a brief description of the invention, a detailed description on how the invention works, an explanation on how the invention is different from other solutions that you may be aware of, any advantages over the known solutions, a description the current stage of development of the invention, identification of any prior efforts at disclosing or sale of the invention (for example in presentations or printed materials) and establishing the inventors.
invention disclosure will allow us to evaluate any search conducted
to determine whether or not the invention is patentable, and will further
serve as our guide if we are to prepare a patent application. From
this, it is likely that the more detailed the invention disclosure
is, the more easier and efficient both the prior art analysis and patent
drafting is. A sample of an invention disclosure is provided here.
Has the invention been already patented or is it known? (Prior Art Search)
- While the invention may not be found in the marketplace does not necessarily mean that the invention is patentable. If a patent application is to be filed on the invention, it will be carefully considered by a patent examiner to determine whether or not it is new and not obvious. During the examination, a patent examiner will search the “prior art” or all information made available to the public in any form prior to a certain date. If it is found that that invention is known in the prior art, either by a single prior art reference or a combination of references, then a patent cannot be obtained for the invention.
- In order to determine whether the invention is patentable, it is recommended to conduct a prior art search on the invention in order to assess patentability. A prior art should be considered the first step of the patenting process for if the invention is not patentable, there is no point in proceeding any further with seeking patent protection.
- The search can provide insight as to the depth and field of the invention, and allow the inventor to further refine the idea. The search will also give the inventor an understanding as to the prospects of obtaining patent protection and will allow the inventor to determine how to apply resources to the patent process.
- There are a variety of free patent searching tools including the patent search page and others found at this link here (link to resource links page) which allow inventors to conduct their own patent search.
- Bacon & Thomas has extensive experience at conducting patent searches as well as evaluating searches to determine whether an invention has been patented. We rely on our proximity to the U.S. Patent and Trademark Office to employ the same searching tools used by U.S. patent examiners, and we also use the most up to date searching tools at our office to conduct our searches. Upon completion of a search, we provide our assessment as to the patentability of the invention, without bias toward or against the invention. Indeed, because many of our attorneys and agents are former examiners, we can provide an honest assessment as to the prospects of obtaining patent protection for the invention.
- A design patent is provided for protecting the look of a particular
object. It is concerned with the ornamental aspect of the object and
not how the object functions.
- A utility patent is the most common type of patent obtained. The utility patent is concerned with how an invention functions, and typically is directed to functional improvements over existing inventions. A utility patent may cover a product, machine, process or composition of matter.
Which Type of Utility Application to File? (Provisional or Non-Provisional application)
Provisional patent application:
- A provisional application is not examined by the USPTO and will expire one year after its filing date. Its filing establishes a date before the USPTO by which the applicant can rely upon to show that the invention was created. The provisional application is only a temporary application that will not itself result in a patent. Instead, it allows for an applicant to decide over the course of its lifetime (one year) whether or not to proceed with a non-provisional application, which can claim the benefit of priority from the provisional application.
- It is common for applicants to file provisional applications if it is anticipated that further work will be conducted on the invention over during the one-year pendency of the provisional application. This one-year period may be helpful to determine if there is a viable market for the idea or if the invention merits the more substantial costs involved for the preparation and filing of a non-provisional application. If the provisional application is allowed to lapse without the subsequent filing of a non-provisional application, the provisional application will remain confidential at the USPTO.
- A provisional application cannot be filed for a design patent.
- While the provisional application is informal, it is important to note that there must be sufficient information provided in the provisional application to describe to the person skilled in the art or individual that is versed in the technology of the application how to make the invention.
Non-provisional application (utility application)
- A non-provisional application, also called a utility application, is a formal application that will be examined by an examiner at the USPTO. The utility application will include a set of claims that will be examined against the prior art for patentability, as well as a detailed description of the invention that will likely include a set of formal drawings of the invention. The utility application may rely on the filing date of the provisional if priority is claimed from a provisional application during the lifetime of the provisional application.
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- A plant patent is granted to an inventor who has invented or discovered and asexually reproduced a distinct and new variety of plant, other than a tuber propagated plant or a plant found in an uncultivated state.
International Patent Protection
- To protect your invention in other countries you will need to file an international patent application under the Patent Cooperation Treaty (PCT) or file directly into the foreign countries after you have filed a corresponding U.S. patent application.
- While, the PCT application does not provide an applicant with an international patent, it delays the expense of filing in other countries allowing the applicant more time to access the feasibility of selling your invention abroad.
- Rules under the PCT allow you to file a single international patent application that will temporarily protect your invention for filing in foreign countries for up to 30 months. Please contact us for more details regarding the PCT rules and specific countries.
Preparation of Patent Application
- A patent application is prepared after the invention disclosure and the prior art search and analysis are completed. The patent application will include a complete set if claims, background of your invention, a summary of your invention, drawings figures, and a detailed technical description of your invention. Each of these sections of the application must meet certain statutory requirements mandated by the USPTO.
- Due to the various statutory requirements and the intricacies of interpreting patents used in patent enforcement in U.S. courts, patent applications, and claims in particular, are considered difficult instruments to draft. Much consideration is given to obtain the broadest coverage possible while navigating around the prior art to assure that the claims are patentable and will withstand examination at the USPTO.
Filing of Patent Application
- After the application is prepared and approved by the inventors, the application is filed at the USPTO along with official fees. A serial number is assigned to the application.
- If the application is a utility application, assuming that the application passes initial formalities reviewed in early processing of the application, the application will then be sent to an examiner for future examination.
Publication of Patent Application
- The utility application will be held in confidence at the USPTO eighteen months from its earliest filing date (only six months after the utility application filing date if priority is claimed from a provisional application).
- Whether a provisional or non-provisional application is filed, the applicant can mark any product with “patent pending” once the application has been filed.
- The examiner will review the application for complying with formalities and patentability including making a determination on whether the invention is patentable subject matter, nonobvious, novel, and whether the description and claims comply with rules and regulation.
- The examiner will either allow the application, or issue an Office Action which includes a report of the examination of the application which includes a objection and or rejection of the application due to some matter that the examiner considers will prevent the issuance of a patent based on the application in its present form.
- The applicant files a response that may include an amendment or request for reconsideration and “prosecutes” the application.
- The examiner will evaluate the response, and may issue a final rejection or allow the application. The applicant may reply to the rejection with a response or appeal, or abandon the application. This basic process continues until the examiner allows either the application or the application is abandoned by the applicant.
Notice of Allowance of Issued
Issue Fee and Publication Fees
- The application will grant as a patent after the appropriate fees are paid including payment of the issue fee and publication fee (if the application is published prior to grant).
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- Maintenance fees are required to keep a utility or plant patent enforceable. Maintenance fees are due 3 ½ years, 7 ½ years and 12 ½ years after the grant date of the patent.
- A utility or plant patent will expire 20 years (subject to payment of maintenance fees) after its earliest filing date (not including the filing date of the provisional application). A design patent will expires 14 years after the patent’s grant date. For more information on patent term, please visit this page on Patent Term Calculator.
- The patent term may
be extended due to processing delays at the USPTO, and negated by delays
on behalf of the applicant during prosecution of the patent.
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