Menlo Park Patents Blog:

Filing your first patent can feel like navigating uncharted waters. Afterall, the patent process is never known to be easy and does require specific knowledge of the USPTO laws, rules, and procedures.  Whether you’re an entrepreneur, an independent inventor, or a startup founder, understanding the patent filing process is critical to protecting your intellectual property, growing your business, and making the most informed business decisions.

Understanding Patents

A patent is a legal document granted by the U.S. Patent and Trademark Office (USPTO) that gives the inventor exclusive rights to their invention for a specified period. Specifically, a patent prevents others such as your competitors from making, using, or selling the invention described in the patent.  They have become requirements by several venture capital and angel investing groups which ask the question: “What is proprietary?”.  Patents are the best way to protect your secret sauce and make it yours and yours alone.  In order to understand how to file your patent, you will need to know the different types of patents and make a determination on which one will provide the best protection for your invention.  There are three primary types of patents:

1. Utility Patents: Cover new and useful processes, machines, manufactures, or compositions of matter.  Utility patents can be used to protect how an invention functions.  Some examples of inventions that use utility patents are medical devices, artificial intelligence, manufacturing processes, or mechanical inventions.  Utility patents provide 20 years of protection. Check out some of our provisional patent applications and nonprovisional patent application packages!

2. Design Patents: Protect the ornamental design of an invention or the outer appearance of an invention.  The design patent can be utilized to protect how the invention looks. A few examples of typical design patents are for jewelry, clothing, outer housing of consumer electronics, or toys. Design patents provide 15 years of protection. Check out our design patent application packages!

3. Plant Patents: Granted new, asexually reproduced plant varieties.  Plant patents are the least popular patents filed whereas utility and design patents see more filings from inventors.

It is important to understand that patents are all about timing and choosing the right strategy from the beginning.  Our experienced team of licensed patent agents at Menlo Park Patents can help you determine the best strategy forward and help you avoid costly mistakes which can hurt your business.

Every founder needs to ask the question: Why do I want to protect my invention? The answer should be clear that there is a huge industry dedicated to stealing unsuspecting inventors’ innovations and selling the counterfeit products on internet sites. In order to build a successful company and profit from your hard work then you will need to own the invention.  The only way to secure a title to the invention is to obtain a patent with allowed claims.

During the process every entrepreneur or founder needs to be mindful of the requirements for patentability of an invention which are:

·      Novelty: The invention must be new and not previously disclosed to the public

·      Utility: The invention must be useful and work

·      Non-obviousness: The invention must not be an obvious change to something that already exists

·      Enablement: The invention must be described in enough detail so that it can be made and used

Transforming your idea into a patent involves executing specific steps to secure a patent with valuable claims. The first step Menlo Park Patents normally recommends is filing a provisional patent application. This is a low cost-effective option that grants inventors “patent pending” status for 12 months. A provisional patent application in most cases has lower USPTO fees and lower patent agent fees. They are not published, and not examined, providing startups the stealth they want at a much less lower cost of investment.

This article will guide you through how to identify the unique features of your invention, how to conduct a thorough patent search, how to choose the right type of patent, how to prepare the application, and how to file it.

The objective is to empower you, the innovator, inventor, founder, entrepreneur and provide you with an easy-to-follow road map to turn your idea into a patent and protect your invention.

What are the steps to protect your invention?

1. Identify your invention’s unique attributes and create drawings or flowcharts that describe the invention and then write detailed documentation as to how the     invention works, what it does and how to make it. This will be the foundation for a strong patent application.
2. Conduct a thorough patent search to confirm that your invention’s novelty.  This will help you determine if someone else has already created your invention and it will help you avoid filing for something that someone already invented.
3. Choose the appropriate type of patent.  There are a number of options including utility, design, or plant patents which all have specific benefits and limitations.  It is a good practice to review the patent types and how they can be used to protect your invention. You may want to file for a utility patent and a design patent.  As a reminder, a utility patent protects how the invention works, and a design patent  protects the ornamental appearance of your invention where by filing both you can maximize the value of your intellectual property.

Step 1: Identify Your Invention’s Unique attributes‍

Determine what are the distinctive and advantageous attributes of your invention. For a successful patent application, one must provide a reason for why your invention is novel and not obvious in terms of its characteristics and uses. You should consider the various applications and possible modifications that are possible so that you can disclose the various advantages of your invention. A patent agent can help you  assess the commercial and unique characteristics of your invention. A good patent application will have a detailed description that corresponds to the illustrations. This helps focus the examiner and the public as to what is different about your invention and the prior art.  Good drawings are essential to any patent. These include mechanical, electrical, flowcharts, state diagrams, system diagrams and other drawings that help describe your invention. The drawings should highlight the key differentiating aspect of your invention. The key to being granted a patent depends on the claims. How well claims are drafted will make all the difference to how valuable the patent will be. The claims form the legal boundaries of the franchise awarded by the patent office and define what the franchise covers which limits what the patent holder can restrict others from making, using or selling in the United States. The best claims are broad in scope while being precise.  Each claim must be only one sentence that will encompass what is unique to your invention. By creating a detailed disclosure, you ensure that the invention is completely defined so as to protect the critical elements of your invention and therefore the scope of your patent rights.

‍Step 2: Conduct a Patent Search

‍Ensure that your invention is novel and non-obvious by conducting a comprehensive patent search, which is essential for satisfying the requirements for patent eligibility. A patent search can be helpful when evaluating how novel your invention is through a comparison with what is available in the public domain such as publications and prior art patents. The USPTO website and Google® Patents have excellent resources that an inventor can use to locate existing patents. Both databases will help you to identify prior patents thereby allowing you to revise your invention to achieve novelty and non-obviousness. Alternatively, you can also hire a search firm or a patent agent to conduct the search for you. A detailed patent search requires the searcher to look at existing and pending patents,  scientific articles, technical documents, presentations made within industry circles and marketing materials relevant to your field or product line. While these searches are helpful in determining the state of the prior art with respect to your invention there are some issues that limit the benefit. First there is at minimum an 18-month blind spot in the search because patent offices do not publish pending patents until 18 months after their priority date. In a new technology area this would mean that the current innovations are unavailable to the search and that the invention could have already been disclosed but you nor anyone would be able to find it.

Looking for an affordable prior art search? Check out our patent search packages here!

This is a sever limitation on the validity of the search results in new technology fields. Therefore, in many cases the best solution is to file your provisional patent application as quickly as possible to secure an early priority date  and then do your search. Anything determined from the search can be used to generate a second provisional patent application, but you still have the earlier priority date from the first provisional patent application. If you use a seasoned patent agent who has several years of experience in the field of your invention they can  provide valuable insights into the novelty requirement for patent protection thereby ensuring your invention meets that criteria.

‍Step 3: Choosing the best Type of Patent

‍There are many theories on what the best strategy is when it comes to selecting which type of patent to pursue when starting a new product. As mentioned previously, there are three patent types:  utility, design, or plant patents. A utility patent or plant patent can claim the benefit from an earlier filed provisional patent application, but a design patent cannot. A provisional patent application is a document filed with the U.S. Patent and Trademark Office (USPTO) that establishes an early priority date for an invention, allowing an inventor to claim priority over others while they further develop their concept before submitting a full patent which we know in the industry as a non-provisional patent application. Think of it as a reservation for filing the utility/non-provisional patent application or plant patent application. The reservation is good for 12 months and then expires.  Filing a provisional patent application is crucial to the  utility/non-provisional patent application process as it allows you to claim ‘patent pending’ status, which can provide credibility and attract investors.  In our experience as successful tech. entrepreneurs that have built startups from the ground up, one of the common questions we found investors asked were always concerning patent protection. A utility/non-provisional patent application is a formal request to the United States Patent and Trademark Office (USPTO) to review an invention for patentability. It is also known as a utility patent application.

A non-provisional patent application is the standard way to get a patent for an invention. The claims captures how the invention works. If granted, the franchise for the patent gives the inventor exclusive rights to make, use and sell their invention without permission. The utility/non-provisional patent franchise is limited to 20 years from the filing date. A design patent application is a request to protect the visual appearance of an invention or product.

Design patents protect the shape, configuration, or surface ornamentation of an item. If granted, the franchise for the patent gives the inventor exclusive rights to make, use and sell their invention without permission. The design patent franchise is limited to 15 years from the filing date.

A plant patent application is a request to the United States Patent and Trademark Office (USPTO) to protect a new variety of plant. The application is limited to only plants that meet certain criteria such as:

1. Novelty: The plant must be new, or not previously created

2. Non-obviousness: The plant must not be a simple change to something that already exists

3. Asexually reproducible: The plant must be able to be reproduced without sexual reproduction

4. Genetically identical: The plant must be genetically identical to the original

5. Invented or discovered in a cultivated area: The plant must have been invented or discovered in a cultivated area, not in the wild. The types of plants that are eligible include cultivated species, mutants, hybrids, transformed plants, newly found seedlings, algae, and macro fungi.

What does a plant patent application protect?

1. The right to prevent others from reproducing, selling, or using the plant

2. The right to prevent others from importing the plant into the United States

3. The right to protect the plant's parts, including harvested material, genes, proteins, and other molecules. The plant patent franchise is limited to 20 years from the filing date.

Inventors should be aware that more than 90% of submissions to the United States Patent and Trademark Office consist of utility/non-provisional patents. These cover inventions’ functional characteristics. To be eligible for a utility patent, your invention must fall into one or more classifications like a process, machine, or substance composition. Conversely, design patents safeguard an invention’s ornamental aspect instead of its practicality. For example, a design patent can protect the unique design of a pair of breast pump, but it cannot protect the utility of how it works. It is vital to understand the distinction between different types of patents and select the one that meets your needs and ensures the best protection for your invention in the marketplace.

‍Step 4: Prepare a Detailed Patent Application

‍To receive claims that will protect your invention you will need a well-written and well-designed patent application with claims that describe your invention. A good place to start is to create an abstract that is both comprehensive and captures the essence of your invention. You need to do this in no more than 150 words. The abstract is an essential part that lays the ground work for the detailed specification. The specification is a detailed description of the invention and  tells the reader how to make and use your innovation. It is critical to ensure that the description of what will bein your claims is captured in your specification and corresponding drawings. Ensure that each drawing has a clear explanation and that the specification provides a complete description of what is captured in the drawings.

‍Step 5: File Your Patent Application‍

The USPTO is moving towards digital filing and has made filing by mail more expensive. The easiest way to file electronically is to use a patent agent to file your application. Navigating through the five fundamental stages of the patent application process is vital for achieving a successful patent. If you diligently address each step you should create a patent application that has ahigh likelihood of being granted and will meet your needs in the marketplace to protect your invention.

‍Get Help Starting The Patent Process! Ready to take the next step in securing patent protection for your invention? Schedule a free IP strategy call with our expert team today!