The process for patenting an invention is relatively simple. An inventor files a document, a ‘patent application,’ with the patent office that describes an innovative product or process. An ‘examiner’ at the patent office then determines whether or not 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 circuitous patenting path begins with the filing of a provisional patent application, or simply a ‘provisional.’ This document is better characterized as a priority document as opposed to a patent application because the U.S. patent office does nothing more than receive and record the filing. The contents of a provisional are not examined for patentability. Instead, the patent office uses the provisional as evidence that an inventor was in possession of a given invention by a specific date.
The costs for preparing and filing a provisional application are typically lower than those for a utility application. Moreover, a provisional does not commit the inventor to a full-blown patent prosecution. Therefore, inventors often use a provisional filing as an expedient and cost-efficient mechanism to preserve patent rights while publicly disclosing an invention.
Public disclosures of an invention may be necessary in order to gauge market interest, solicit investor capital, negotiate joint ventures, engage in licensing programs, retain technical expertise to refine a design, etc. A filed provisional application enables an inventor to put third parties on notice that exclusive rights to an innovative product or process have already been reserved. Also, many commercially important jurisdictions, such as the European Union, require an invention to have ‘absolute novelty.’ Public disclosures of an invention without at least a filed provisional can destroy ‘absolute novelty’ and bar an inventor from obtaining patent rights in those jurisdictions.
Whether or not a provisional application was filed, the formal patent process begins with the preparation and filing of a utility application. A utility patent application usually has three sections: (a) drawings, (b) a written specification, and (c) claims. Together, these sections describe the technical features of an invention and define the aspects that are considered to be proprietary.
There are two critical points that every inventor should bear in mind about a utility patent application.
First, it is the claims and only the claims that define patent rights. Merely illustrating a design in the 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 features or ‘limitations.’ Generally speaking, a patent claim is a one-sentence description of the invention. A patent claim begins with a ‘preamble,’ which sets the context of the invention, and then a listing of the features (or limitations) that define the invention. Imprecise drafting of claim language could lead to a patent not providing the scope of legal protection desired by the inventor.
Second, the patent office forbids an inventor from adding technical details to a filed patent application. Often, 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 disclose an innovation that is sufficiently distinct from what is already available. The main way to counter the patent office’s conclusion is to point to the technical features that are unique to the described invention. However, those technical features must appear in the application as originally filed. Therefore, an inventor should be certain that a patent application fully describes all important aspects of an invention before filing a patent application with the patent office.
Once filed, the patent office initiates an examination process wherein the claims of the patent application are compared against the ‘prior art.’ Most commonly, the prior art includes patent references, industry publications, and other published works that were available before the filing date of the utility application. However, if a provisional application was filed, then the utility application can ‘take priority’ from the provisional application filing date for any subject matter that is in 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 claims of the utility application are sufficiently different from the prior art. The patent office rejects any claim that they conclude encompasses the ‘teachings’ of the prior art and/or that is not sufficiently distinct from the prior art.
In a few rare instances, the patent office allows all claims in the first office action. In most cases, however, one or more of the claims are rejected. The inventor has the opportunity to reply to the office action. In the reply, the inventor can present arguments as to why the patent office’s conclusions are incorrect and also, if needed, ‘amend’ the claims to clarify the technical differences vis-à-vis the prior art. If the patent office finds the reply to be persuasive, the patent office can ‘allow’ the patent application. If not, the patent office mails a ‘final office action’ and ‘closes’ prosecution. Options are few at this point. If any claim is allowed, the inventor can accept that claim. However, if no claims are allowed, the inventor is usually left with three choices: (1) give up and abandon the patent application, (2) appeal the rejection of the claim(s), or (3) request continued examination (RCE).
This exchange of office actions and office action replies can consume years. Moreover, the associated patent fees and attorney fees could ultimately eclipse those for preparing and filing the patent application itself. Unfortunately, there is no guarantee that the patent office will grant a patent even after an inventor has made the best case possible for an invention. Therefore, the decision to patent an invention should not be taken lightly.
But in instances where an inventor has concluded that seeking patent protection makes business sense, it is worth remembering the adage “well begun is half-done.” Spending the time and effort to prepare a technically comprehensive patent application will put an inventor in the best position to prevail at the patent office and be granted a patent.