There are three main steps in getting a patent from the United States Patent and Trademark Office (USPTO). If you do these steps in this order, then you will maximize your chances of getting a patent. If you skip any steps or do them out of order, you will experience trouble. Looking at published statistics from the USPTO, the chance that a random patent will be allowed after it goes through the process ranges anywhere from 40% – 70% depending on the year. This includes patents filed with and without attorneys. That means that there is plenty of room to either do it right or make mistakes and fail. However, if you are careful and plan ahead, you can improve your chances quite a bit.
1. Due Diligence
This step is critical in giving you enough information so that you have a good chance to succeed at the rest of the steps. Doing due diligence means to looks around, online, in trade shows, catalogs, patent databases, and etc. to see if someone else has already taught everyone how to do your invention. If you look around and cannot find anybody doing that, then it is a good sign that you might be able to get a patent.
There are four main requirements to check off for an invention to deserve a patent. during your due diligence stage you should be thinking about how you will check these off:
a – Utility: Is the invention useful?
b – Patentable Subject Matter: Is it the sort of thing we give patents on?
c – Novelty: Is the invention new?
d – Obviousness: Is the invention obvious?
Utility is easy to check off. Your invention needs to only be barely useful to somebody to qualify.
Patentable subject matter is usually easy to check off if your invention is a gadget, machine, some physical device, a chemical composition, electronic circuit, or etc. If it is a business method, game, legal arrangement, genetic invention, or similar you will have a harder time, but there are often ways to make it work. If your invention is a new mathematical formula, discovering a new law of physics, time travel, breaks the laws of physics, or etc. then you will have a really rough time checking this off.
Novelty means that the invention is new. As long as nobody has ever done/made/sold your exact combination of features/structures/steps then it is probably new. A good way to try and find out is to go on the internet and search for someone selling your invention. The internet is optimized to help people find what they want to buy even if they are horrible at searching. If you can’t find it for sale on the internet, that is often a good sign. Having an attorney perform a basic patent screening search at that point is a very good idea.
Obviousness is a complicated requirement. There are literally thousands of pages of opinions, rules, factors, exceptions to the rules, and etc. that all come into play when deciding if something is obvious or not. One thing to realize though, is that it doesn’t matter if the invention is obvious to the inventor (of course it would be, otherwise the inventor would not have thought of it). So, don’t get worried about this just because you think it is obvious. This is one area where it really helps to have an attorney on your side.
2. File a non-provisional patent application
Once you are comfortable with the results of your due diligence, it is time to prepare and file a non-provisional patent application with the USPTO. To do this, you need to describe the invention following the rules at the USPTO and do it well enough to meet at least the following criteria. On top of that, you need to do it well enough so that later when the patent is being enforced, your words can’t be used against you by opposing attorneys:
a. Written Description: Describe the invention well enough that when people read it they believe that you actually conceived of the invention. One way of thinking about this is the difference between science fiction and science. If it is written without enough facts and details, then it looks like science fiction and will not meet this standard.
b. Enablement: Describe the invention well enough that someone could actually go out and build it. You don’t have to (and usually shouldn’t) give exact measurements of parts or lines of software code, but you need to include at least enough information so that others could make and use it.
c. Best Mode: Describe and don’t hide what you believe the best ways to carry out your invention might be.
d. Doctrine of Equivalents: Describe enough variations of your invention so that it is hard for someone to just change it a little bit and get around your patent.
e. Good Claims: The Claims section is where you describe what you believe you should own. The rules about format are very strict here. The rules about interpreting words are even more strict. This section is where your attorney writes the least and thinks the most.
Sections 200 – 600 of the Manual of Patent examining Procedure (MPEP) are the most useful for this part of the process ( http://www.uspto.gov/web/offices/pac/mpep/index.htm )
3. Negotiate with the US Patent Office
After you file your application, expect to wait a while. Generally the office takes about 1 – 3 years before they respond to your request for a patent. They most often respond with a long letter explaining all the reasons why you should not get your patent. This starts the negotiation process.
In the negotiation process, it is your responsibility (with the help of your attorney) to convince the USPTO by convincing the Examiner assigned to your application that you deserve the patent and that you have done everything that you need to do correctly in order to get it.