I have an idea. What is the first step toward getting a patent?
The
first step to consider, but not mandatory, is to have a patent
search performed. Upon receipt of the search results
and the patent attorney’s opinion letter, if you feel
that it makes sense to go forward, you should have your patent
attorney proceed with the drafting and filing of a patent application. Contact
us to schedule a free initial consultation.
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I’m pretty good with a computer; can’t
I just perform the search myself?
You
certainly could. Everything you need to physically perform
the task is available via the Internet. However, there
are some areas for concern. The first is whether or not
you have performed a successful search. It’s possible
(but unlikely) that you have, but how would you know? Most
likely, you wouldn’t. Unless you are an experienced
patent attorney, chances are you will not be able to properly
analyze any of the patents that you may have successfully found. This
doesn’t mean that you are ignorant, it just means that
you don’t have the same background as an experienced
patent attorney who performs these types of searches on a day
to day basis. Feel free to contact
us if you would like
further information.
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Should I
have a patent search performed, and is it mandatory?
A
patent search is absolutely not required at all. Whether
a search should be performed is completely up to the client. However,
it makes sense to consider the following in order to make a
well-educated decision.
A
patent search may provide the answer that it does not make
sense to go forward with the filing of an application. If
the prior art discovered during the patent search is very close
to your invention, you can expect rejections from the USPTO. If
you also consider that a domestic patent search typically costs
between $500-$1,000, and the drafting and filing of a patent
application typically runs between $4,000-$10,000; and that
the total cost of patent prosecution from filing to issue can
climb to $20,000 and beyond, the initial investment of the
patent search cost would seem to be well worth the relatively
small investment.
In
addition to providing a “Do Not Pass GO” answer,
a patent search also may help your patent attorney draft a
better application. A patent attorney with prior art
patents in hand has a number of advantages. First, the
attorney has the benefit of a great educational tool. All
patents are required to enable those of ordinary skill in the
art to understand and make the invention (at least theoretically). Therefore,
the attorney, who may or may not be an expert in the particular
field of your invention, gets a primer in that field. Even
if the attorney is already well-schooled in the field of art
concerning your invention, the attorney still benefits by seeing
what the current “state of the art” is, as reflected
by the prior art. Also, the patent attorney is able
to forego frivolous claims that are much too broad in light
of the prior art. This allows the patent attorney to
focus on the heart of the invention; claiming the embodiments
that will provide the best scope of protection.
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Is there anything else about searches I should know?
So
are there any drawbacks? Well, you and your attorney
are under a continuing obligation to disclose anything that
might materially relate to the patentability of your invention. Therefore,
you must disclose all of the patents found during the search
to the USPTO. But this is not really a disadvantage,
because you are not likely to pull one over on the Examiner. The
Examiner is going to perform an independent search, so with
or without your disclosure, the relevant prior art is going
to be discovered.
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Can you give me a simplified version of the patent process?
The
patent process might be summarized as follows: First
invent something that is useful and new, and not an obvious
modification of an existing invention or inventions (hence,
it wouldn’t be considered “new”). Second,
file, or have your patent attorney file on your behalf, a patent
application at the United States Patent and Trademark Office
(USPTO). Third, survive the rigors of the application
process (called “prosecution”)
and a patent is issued, giving you the right to exclude others
from making, using, importing, selling and offering for sale.
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What
does “prosecution” mean in terms of patents?
The
prosecution phase of a patent application’s life includes
everything that happens after your application is filed. It
usually includes rejections by the patent Examiner, and responses
to those rejections by your attorney in an attempt to overcome
the Examiner’s rejections. Most rejections result
from the determination that the invention submitted is not
new, or is obvious based on the prior art. The Examiner
who is assigned to your application will conduct a search,
and compare the structural elements (or steps of a method)
with the structural elements (or steps) of previously issued
patents and published applications discovered during the Examiner’s
search. If the Examiner can match up all of the elements
in your invention with what is disclosed the prior art, a novelty
or non-obviousness rejection likely follows.
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What is a rejection, and what happens when I get one?
A
rejection is typically part of a communication from a patent
Examiner to you as the Applicant. It usually means that
the Examiner has determined that your invention is not new,
or is obvious, in light of the prior art. There is often
the opportunity to respond to any rejections through argument,
amendments, submission of evidence or affidavits, or any combination
of these responses. The goal is to overcome the Examiner’s
rejections and receive allowed claims.
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