The process to patent an invention is relatively simple. An inventor files a document, a ‘patent application’, with the patent office that describes an innovative product or process. A patent office “examiner” determines whether the invention described in the patent application is “new and useful.” If so, the examiner “allows” the patent application and the inventor is “granted” a patent.
The most tortuous path to patenting begins with filing a provisional patent application, or simply a “provisional” one. This document is best characterized as a priority document rather than a patent application because the US Patent Office does nothing more than receive and register the application. The content of a provisional is not examined to determine its patentability. Instead, the patent office uses the provisional as proof that an inventor was in possession of a particular invention on a specific date.
The costs of preparing and submitting a provisional application are often lower than those of a utility application. Furthermore, a provisional does not commit the inventor to a full-blown patent process. Therefore, inventors often use provisional filing as a convenient and cost-effective mechanism to preserve patent rights while publicly disclosing an invention.
Public disclosures of an invention may be necessary to gauge market interest, solicit capital from investors, negotiate joint ventures, participate in licensing programs, retain technical expertise to refine a design, etc. A submitted provisional application allows an inventory to notify third parties that exclusive rights to an innovative product or process have already been reserved. Furthermore, many commercially important jurisdictions, such as the European Union, require an invention to be ‘absolute novelty’. Public disclosure of an invention without at least one provisional application filed can destroy “absolute novelty” and prevent an inventor from obtaining patent rights in those jurisdictions.
Whether or not a provisional application has been filed, the formal patent process begins with the preparation and filing of a utility application. A utility patent application generally has three sections: (a) drawings, (b) a written specification, and (c) claims. Together, these sections describe the technical characteristics of an invention and define the aspects that are considered proprietary.
There are two critical points that every inventor must consider about a utility patent application.
First, it is the claims and only the claims that define patent rights. Simply illustrating a design in drawings or describing a process in the written specification is not enough to acquire patent protection. Rather, the claims must expressly define the design or process by identifying the essential technical characteristics or “limitations”. Generally speaking, a patent claim is a description of the invention in one sentence. Claiming a patent begins with a “preamble”, which sets out the context of the invention, and then a list of the characteristics (or limitations) that define the invention. The imprecise wording of the claim language could lead to a patent not providing the scope of legal protection desired by the inventor.
Second, the patent office prohibits an inventor from adding technical details to a filed patent application. Often times, the patent office will uncover patent documents or other publications that were previously unknown to the inventor. The patent office can rely on these documents to show that the patent application did not reveal an innovation sufficiently different from what is already available. The main way to counter the conclusion of the patent office is to point out the technical characteristics that are unique to the described invention. However, these technical characteristics must appear in the application as it was originally submitted. Therefore, an inventor must be sure that a patent application fully describes all important aspects of an invention before filing a patent application at the patent office.
Once filed, the patent office initiates an examination process in which the claims of the patent application are compared with the “state of the art”. More commonly, the prior art includes references to patents, industry publications, and other published works that were available prior to the filing date of the utility application. However, if a provisional application was filed, then the utility application may “take precedence” from the provisional application filing date for any issue that is common between the provisional application and the utility application.
Generally speaking, the patent office makes a determination, which is communicated in an “office action”, as to whether or not the utility application claims are sufficiently different from the prior art. The patent office rejects any claim that it concludes that it encompasses the “teachings” of the prior art and / or that it is not sufficiently different from the prior art.
In a few rare cases, the patent office allows all claims at the first action of the office. In most cases, however, one or more of the claims is rejected. The inventor has the opportunity to respond to the action of the office. In the response, the inventor can present arguments as to why the conclusions of the patent office are incorrect and also, if necessary, “modify” the claims to clarify the technical differences from the state of the art. If the patent office finds the answer convincing, the patent office can “allow” the patent application. Otherwise, the patent office mails a “final office action” and “closes” the process. The options are few at this time. If any claim is allowed, the inventor can accept that claim. However, if claims are not allowed, the inventor generally has three options: (1) resign and abandon the patent application, (2) appeal the rejection of the claims, or (3) request an ongoing review (RCE).
This exchange of office actions and office action responses can take years. In addition, patent fees and associated attorney fees could eventually dwarf those of patent application preparation and filing. Unfortunately, there is no guarantee that the patent office will grant a patent even after an inventory has presented the best possible case for an invention. Therefore, the decision to patent an invention should not be taken lightly.
But in cases where an inventory has concluded that seeking patent protection makes business sense, the adage “well started is half done” is worth remembering. Spending time and effort preparing a technically complete patent application will put the inventor in the best position to prevail in the patent office and obtain a patent.