2) Determining whether the Invention Comprises Patentable Subject Matter
Once the structure of the invention is defined, a determination should be made whether the invention comprises patentable subject matter. Patentable subject matter comprises "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof..." 35 U.S.C. §101.
3) Determining whether the Invention is Novel and Non-Obvious
Patents may be granted for inventions which are novel and non-obvious as compared to an existing body of knowledge defined at the time of the invention. This existing body of knowledge is often called "Prior Art." A Patent Novelty Search is usually performed to discover relevant prior art patents to which the combined features of the invention are compared to make an initial determination of novelty and obviousness. A Patent Novelty Search does not review discovered patents for infringement and does not search for patents which may be infringed by a product made according to the invention.
4) Determining which type of Patent Search to Perform
A Patent Novelty Search is directed toward discovering relevant prior art references which disclose features of the invention, such as to prevent the invention from being considered novel and non-obvious. For most Patent Novelty Searches, only US patent publications are searched. A Patent Novelty Search is not directed toward discovering patents which may be infringed by a product made according to the invention. A different type of patent search is directed toward finding patents which may be infringed. A Patent Novelty Search is always advisable prior to filing a patent application.
A Patent Clearance Search is directed toward discovering patents owned by others for which there is risk that a product made according to the invention may infringe. A Patent Clearance Search typically costs 3 to 4 times the cost of a Patent Novelty Search. A Patent Clearance Search is always advisable prior to making, using or selling a new product made according to the invention, or making significant investment in preparations for production of the new product.
5) Determining whether to file a Patent Application for an Invention
Once an initial determination is made that an invention is patentable subject matter, and is novel and non-obvious, a determination should be made whether to file a patent application for the invention. The costs for patent applications vary depending upon complexity of the invention and other factors which affect the amount of time required to draft the application. It should be noted that a patent application is not a standardized form, but is instead a document drafted from virtually blank pages, preferably by a patent attorney or a patent agent. The costs should be weighed against the expected benefit from obtaining a patent for the invention.
6) Determining the Type of Patent Application to file (Design or Utility)
There are two basic types of patents. The first type is a Design Patent, and it protects ornamental designs for articles of manufacture, such as a pattern on china, etchings on silverware, or the shape of a product, such as the body style for an automobile. The second type is a Utility Patent, and it is concerned with the structure to define an operative device or process, such as that discussed above in the section on defining the invention.
7) Determining whether to file a Provisional Patent Application or a Regular Utility Patent Application
An application for a Utility Patent may be filed as a Provisional Patent Application, or as a Regular Utility Patent Application. A Provisional Patent Application expires one year after the date it is filed, and prior to the end of the year a Regular Utility Application must be filed to maintain the priority filing date of the Provisional Application. A Provisional Patent Application may cost significantly less to prepare and file than Regular Utility Patent Application, but increased risks usually accompany the lower costs. The costs to prepare and file a Provisional Patent Application followed by a Regular Utility Patent Application are greater than filing those for initially filing a Regular Utility Patent Application, but the filing of a Provisional Patent Application allows for delay in payment of the increased costs for a Regular Utility Patent Application for up to one year.
8) U.S. Patent & Trademark Office Examination of Patent Applications
Approximately six months to thirty-six months after a Design Patent Application or a Regular Utility application is filed, a Patent Office Examiner will review the claims for the application, conduct a patent search, and then issue an Office Action which either rejects or accepts particular claims of the application. If at least some of the claims are rejected, a Response to the Office Action will be required within a certain period of time to prevent the application from becoming abandoned. It is not uncommon for several subsequent Office Actions to be issued, which requires several Responses to Office Action. If all the claims of a patent application are finally allowed, or approved, a Notice of Allowance will issue which will require an Issue Fee to be paid. After payment of the Issue Fee, the application will issue as a patent. This entire process typically takes from 12 to 16 months for a Design Patent, and from 18 to 40 months for a Utility Patent.
9) Maintaining a Patent
For U.S. Utility Patents, maintenance fees must be paid approximately every 4 years for the life of a patent, as measured from issuance of the corresponding application as a patent. The official deadlines are at 3 1/2 years, 7 1/2 years and 11 1/2 years after issuance of the patent, and may be extended for 6 months with payment of a nominal surcharge fee. Design Patents are exempt from maintenance fees. A Utility Patent has a term of 20 years from the initial priority date for the patent, provided maintenance fees are paid. A Design Patent has a term of 14 years from the date of issuance. Most foreign countries require payments of annual annuities to maintain issued patents.
10) Licensing Rights in a Patent
A License is often used as a means for granting rights to others to make a product which infringes a patent. A License is an agreement by the patent owner to not sue a person or entity to whom the License is granted, provided certain contractual provisions are met, namely the payment of a royalty. Licenses may be exclusive or non-exclusive, and may contain performance requirements to maintain the license, such as minimum annual royalty payments. Other license provisions may include rights to ownership of improvements made by the parties, payment of expenses to maintain the licensed patents, duties to enforce the licensed patents against infringers, and warranties regarding licensed product not infringing the patents of others and/or agreements to indemnify and defend against liability for infringement. Please carefully note that significant liability may result from obligations to file lawsuits to enforce licensed patents against infringers, to defend against lawsuits for infringement, or indemnify for damages for patent infringement, and individuals without significant means should avoid agreeing to such terms.
11) Disclaimer and Several Caveats
Please note that regardless of the results of an initial patent search, the granting of a patent for an invention cannot be guaranteed. The Examiner may find prior art references which are more relevant than those discovered in the initial patent search, or may consider that the references discovered in a patent search should be applied differently than that considered by either the patent searcher performing the search or the patent attorney reviewing the search results.
Please also note that once a patent is granted, it may later be invalidated by the later discovery of prior art references which come closer to disclosing the combined features of the invention set forth in the claims of the patent than the prior art considered by the Examiner during examination of the application which issued as the patent.
For a Patent Clearance Search, a patent owner and his attorneys may consider that the claims of a discovered patent should be applied differently to a product to find infringement, even though a patent attorney reviewing the search results considered the claims as not infringed.
Most independent inventors do not make a profit from patents, primarily due to difficulty in marketing their patented invention.