Are You Ready to File a Patent?

Assess Where You Are in the Patent Process:

Are you ready?

          Each client and each case is different, but the brief explanation below may help you to determine where you and your invention are in the process that takes place between conceiving an idea and being granted a patent. We can offer much more detail, specific to your case, in the Initial Client Conference. If you think you are ready, call us or fill out the Contact Us form on this website.
          Patents are about the “how to” of the invention. Enough detail must be included to enable “one skilled in the art” (that is, one reasonably well versed in the field of your invention) to make and use the invention by following the details disclosed in your patent. If all you have is an idea of a goal for a product, a “wouldn’t it be nice to have an anti-gravity machine!”… you’re not ready to file a patent application.

Searching

          You may, however, be ready to begin to search the prior art (that is, what’s been done in the field of your invention along the same lines as your idea) so that you can find out whether there are products that provide the features you have in mind or if it has already been patented by someone else. If so, you will probably want to move on to your next idea.
          Although that’s not always the case, because even if patented, why isn’t the product available in the marketplace? In turn that gives rise to two other alternatives:

  1. Your solution, your “how-to” accomplish the function, is far better, easier, cheaper to manufacture, or
  2. The patentee doesn’t have the time, the money, the knowledge or the interest in commercializing the product.
Thus, if the answer is:
  1. Yours is better, it still might be worth going for a patent. After all, how many patents were granted on different versions of barbed wire? (You would be surprised—over a hundred!)
  2. The patentee does not have the interest, time or money to commercialize it, and you have an interest in the exciting process of bringing new products to market, then we can counsel you on buying or licensing the patent, and, provide business development consulting.
          In any event a search is an important step to help you better distinguish your invention from what has already been done. There are three main kinds of searches at this stage. The first two can be done by you; the third is best done by patent search professionals.
          The first two are what we call first and second-stage knock-out searches. That is, are we “out” before getting to first base? They are:

          1. Internet Search - First Stage Knock-Out:

          Get on the Internet and use search engines like Google, Yahoo, etc. to search for anything that is similar to your invention. Print out information about them, and see products you find. This search will give you a sense of the products that are actually being made, but not of those that have been patented but never commercialized.
          In addition you will be starting on your first stage marketing analysis. You will see whether it is possible to sell via the Internet, who your competition is, how the products are positioned (features, prices, packaging, product marketing strategy), and by what is NOT said, what features are missing. You will also see if the products have catchy trademarks. And, look for patent notices and business ownership information and location.
          Even if you find nothing, and nothing is “good news,” you are not done. Nothing on the market doesn’t mean the product or its functionality is not patented. You need to go on to steps 2 and 3, below.

          2. Patent Office Word Search - Second Stage Knock-Out:

          Go to www.uspto.gov, and under Patents, click Search. On the Search page, click Quick Search. Select words that describe your invention as closely as you think others might describe it. Select either “abstract” or “specification” in the drop down “field” menu so that the search engine will scan through the patent Abstracts (150 word synopses of the invention) or Specifications (the lengthiest part of a patent application describing the invention) to match the words you have chosen. Look at each patent that comes up, to see if it is similar to your invention. If you find other words used to describe parts or methods included in your invention, search again and again.
          With the results of both #1 and #2, if you find a “knock-out” (that is, a product that is exactly like your idea), you may decide there is no point in continuing. (But, see the comments above in option 2 about the possibilities of licensing a patent from someone who has never commercialized their idea.)
          If you find several similar ideas, but that are not exactly the same as your idea, we recommend that you make a chart of features to help you distinguish your invention from the prior art. This information will be very valuable later, when we are writing the patent application, and it will help you gain clarity about what makes your idea novel.

          3. Classification Search in the U.S. Patent and Trademark Office:

          Neither search method #1 nor #2 is as accurate as the Classification Search, because word searches (as in #1 and #2) rely on you being able to guess correctly what words previous inventors used to describe their ideas.
          Once we have sufficient disclosure from you (that is, you have been able to distinguish your idea from the prior art you have found so far), we recommend engaging a search professional firm to physically search through the patent files in the U.S. Patent Office in Alexandria, Virginia. We write them a search authorization letter describing the details of your invention, and highlighting the features to be searched.
          Issued patents are classified in groups of related technology; vehicles in one class, cancer drugs in another, etc. This classification system has evolved over a hundred years into over 500 classes and 30,000 sub-classes, and has proven to be a very effective way to organize technical knowledge. Accordingly, our searcher first reviews the disclosure we send and then determines, often in consultation with us and/or a patent examiner, what is deemed to be the best “home” for patent information, called “prior art” relating to the invention.
          Then the searcher reviews the issued patents and patent publications in the class(es) and sub-class(es) determined to be the most likely home, and pulls patents showing or teaching the inventive features. The searcher usually searches in the Public Search Room Archives, but may seek permission to search in duplicate archives in the Examiners’ Group Art Unit.
          Since every patent is classified according to a class and sub-class, it makes no difference what words were used to describe the invention – searching in the appropriate class has a much higher likelihood of finding similar prior art than any word search you can do.
          The turn-around time on Classification Searches is typically 2-3 weeks, depending on complexity. Costs vary and we can get a quote at the time of search. The search service typically returns to us 10-15 patents; more tends to contain duplicate or very peripheral teachings.
          To keep control of costs, ILG typically does a preliminary review, organizes the patent references into a rough order from most to least pertinent, and sends them to the client for detailed review. Then we set up an office conference to discuss results and determine whether the client could like to proceed with a regular or provisional application.

          Why Search? Patent Office Surprises!

          Too often, inventors opt not to have us do a Classification Search, because they believe that they are familiar enough with the field of the invention to predict that no patents have ever been granted. Unfortunately, there is a huge difference between “what is available in the marketplace,” (with which the inventor may be quite familiar) and what has, in fact, been patented over the past nearly 200 years. Recall, over 7.2 million U.S. Patents have issued since the recount began in 1836.
          Many patentees never commercialize their inventions, but the fact that their patent exists in the public records is enough to prevent the same invention from being patented later. And if your invention is similar, but different from the existing patents, having search results allows us to draft your patent application in a way that specifically distinguishes your invention from such prior art.
          Before spending the money to file a Regular U.S. Patent Application, it is generally well worth the cost to search the U.S. Patent and Trademark Office’s archives for similar inventions. The out-of-pocket costs ordinarily run $600-$1,800. Attorney’s services in connection with preparing a search letter, reviewing the references found in the search, and advising the inventor should be budgeted between about $1,000 and $2,000. Thus, a classification search and consultation should be budgeted in the range of about $1,600-$3,800.
          At the same time, be aware that the fact that a patent exists may not prevent you from commercializing your invention (without a patent).

  • The life of the earlier patent may have expired. In this case, you can manufacture and sell the product, but you cannot protect it with a patent.
  • The patentee of a patent which is still in force may or may not be willing to license the invention to you. If they are, we can help draft such licenses.

          Provisional Applications

          Generally, once inventors have searched deeply enough to believe that they in fact have a novel invention, and it is essentially in commercial form, they can file a Regular U.S. patent application. Typically, however, the invention needs more work to convert it from prototype to commercial form. In order to establish an early date (i.e., to get his or her invention on file as early as possible), the inventor can file what is called a Provisional Patent Application.
          For more details on Provisional Applications on this site, click on Publications, and then Provisional Applications. Here is a summary:
          A Provisional Application is an informal document filed with the U.S. Patent and Trademark Office reserving for one year the right to file a Regular U.S. and foreign patent application. A Provisional application will never be examined to issue as a patent. What it does is establish an early “priority date,” (that is, the date you first filed) so that anyone who files on the same idea after your Provisional filing date would be refused a patent (if your patent is, in fact, granted). In addition, it allows you to “go public” without losing your rights to file a foreign patent application.
          Provisional Applications are relatively informal, compared to Regular U.S. Applications. They can include photographs, and do not require claims (the legal description of what you are claiming you invented). The more detailed they are with respect to background, and detailed descriptions of any photos or illustrations, the stronger they will be.
          Filing a Provisional Application also permits you to label all of your products and literature “Patent Pending.”
          However, you must file a Regular U.S. application within one year of filing the provisional, or your priority date is lost. Assuming that you do file a regular application within the year, your priority date will extend backwards to the date you filed the Provisional Application.
          We recommend that you make good use of the one year period between the Provisional and the Regular filing. With the protection of “Patent Pending” and the use of a Non-Disclosure Agreement signed by anyone to whom you reveal your invention, we encourage you to explore manufacturing possibilities for the invention, determine what raw materials you will use, find suppliers and producers, establish costs, and perfect the details of the invention, so that by the time we are ready to convert and update the Provisional into a Regular U.S. Application, it will include all of the detail that was developed (if any) in the interim since you filed the Provisional.
          Some inventors choose to file a Provisional Application after doing the preliminary first and/or second knock-out searches in order to establish the earliest feasible priority date. Then they have a classification search done during the year’s time, typically 3-6 months before they are required to file the Regular Application.

          Regular U.S. Applications

          You are ready to file a regular application when you are convinced that you will be making no further changes to the invention, and you have sufficient details to disclose how the invention is made and how it works so that it will be clear to one skilled in the art. Once the application is filed, any changes you make will require you to file a new application – no new matter can be added to an application once it is filed.
          Regular Applications are more formal than Provisionals and include: Field of the Invention, Background of the Art, Summary, Objects and Advantages, Brief Description of the Drawings, Detailed Description of the Invention including the Best Mode Industrial Applicability, Claims, Formal Drawings and Abstract. We also find preparing a Parts List is helpful for the Examiner. A Declaration of Inventorship, Transmittal, Data Sheet and optionally an Assignment complete the Regular Application Package.
          Because the application will be examined by an Examiner who is skilled in the art, it will be scrutinized by one who knows a lot about the field of your invention. Very few patent applications are approved on first examination review. It is the Examiner’s job to refer to similar patents and issue an Office Action asking the inventor to further distinguish the new invention from the prior art. This process can go back and forth for months or years, making it impossible for attorneys to predict the duration or the cost of patent prosecution.

          PCT and Foreign Applications

          If you think you might want to obtain patent protection in other countries, you will have to file either direct National Applications in selected countries, or a Patent Cooperation Treaty Application, which reserves your rights to apply in 146 countries for an additional 18 months (in much the same way that a Provisional reserved your rights to file a Regular Application for one year). The application is filed in a centralized International Bureau, where it is held until you decide which countries you might want to apply for patent protection. You then file National Stage Applications in those countries within the prescribed time limits.
          We then arrange with our patent associates in those countries to shepherd your application through the process in each country you select. The standards for patentability differ in each country and, in some countries they do not recognize inventions in some fields as patentable, primarily genetically modified animals or plants, computer programs and Internet-based business methods. Costs vary around the world, so we obtain National Phase quotes for you long before your deadline arrives, and can counsel you on the potential benefits of filing in various places where your invention might be made or sold.
          The PCT Application can be filed at the same time as the Regular U.S. Application, if you know in advance that you want to file internationally.
          This is an extremely complex process, and ILG is here to help. If you would like to set up a face-to-face conference, call us or fill out the form by clicking on Contact Us.


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