How to Patent Your Invention

Written by Steve Holder

July 11, 2008

Congratulations on your new invention! We know you’re eager to get it patented before someone else steals your idea, or worse yet, thinks of it on his or her own and patents it before you! So let’s get started.

Step one is to be sure your invention qualifies for a patent. If you’re not certain, read “Is My Idea Patentable?” If you do have a patentable invention, you have a couple of decisions to make before filing your application.

Determine Your Patent Type

To be sure you submit the proper application, you have to decide whether you’re going to file for a utility patent, a design patent, or a plant patent.

Utility Patent

What we all normally think of as a patent is actually a “utility patent.” A utility patent protects an invention that does something new (the first television), or does something old in a novel new way (the better mousetrap). A utility patent gives you the legal right to prevent anyone else from making or using your invention for 20 years.

Design Patent

Many people are not aware you can also patent a design. For example, assume you built an ordinary mousetrap but replaced the plain wooden base with an ornately designed base. A design patent gives you the right to prevent anyone else from using your design for 14 years.

Plant Patent

If what you’ve created is a new plant variety, your creation may qualify for a plant patent. Because they are subject to very technical qualifications, you should read the U.S. Patent and Trademark Office’s information on plant patents before applying. If you do receive a plant patent, you’ll have the right to prevent anyone else from growing or distributing that plant for 20 years.

Decide Between a Provisional and Non-Provisional Application

The normal patent application is a “non-provisional” application. You submit your completed application with the necessary specifications, claims, drawings, specimens, fees and signatures, and a while later you find out if you’re being granted a patent or not.

In 1995, the U.S. Patent and Trademark Office devised the provisional patent application process to put U.S. inventors on an even footing with foreign inventors. A provisional application allows the inventor to quickly submit a brief application form and receive that all-important filing date much sooner than would be possible if he or she had to prepare and submit the complete application.

Advantages of a Provisional Application

The earlier filing date can be important in some rapidly expanding industries where many people are simultaneously creating similar types of inventions. If two people are claiming the same invention, the one with the earlier filing date wins.

After receiving a filing date for your provisional patent application, you have 12 months to submit your formal and complete non-provisional application. If the non-provisional application is not submitted within the time limit, the application is considered abandoned and will no longer be considered.

In addition to securing an earlier filing date, another advantage of the provisional application is that it costs less than the non-provisional application. This gives you a way to stake your initial claim to an invention without committing to the expense of a complete patent application, or gives you time to raise the money necessary for completing a formal patent application.

Disadvantage of a Provisional Application

The disadvantage of filing a provisional patent application is that you have to pay filing fees twice – once for the provisional application and once for the non-provisional application. The provisional application fees are not that expensive, however, starting from $110 depending on the applicant’s status and the breadth of the application.

Note that a provisional application cannot be filed for a design patent. A design patent application is simple and quick, so there is no advantage to a provisional application.

Filing a Provisional Application

Begin by printing the “Provisional Application for Patent Cover Sheet,” form PTO/SB/16 from the USPTO.gov website, and complete it.

When entering the title of your invention, don’t give it a cute name or try to make it into a complete description. It must be short, but as specific as possible. The title you use here will be the title you use on all forms throughout the remainder of the application process.

At a minimum, you must enclose with the cover sheet whatever drawings and specifications you have and the filing fee. Your filing date is the date the USPTO receives these items.

To see if you qualify for the reduced fee schedule offered to small entities refer to the USPTO’s definition of small entity status.

If you plan to pay the fees by credit card, you’ll also need the USPTO’s credit card payment form.

Filing a Non-Provisional Application

At this point, unless you’re filing a simple design patent, you’re probably going to need a patent agent or a patent attorney. The application requirements are very specific as illustrated in this USPTO example. Any part that’s done incorrectly or poorly could lead to your application being rejected. The cost of doing it wrong and being rejected, or the cost of doing it wrong and doing it again could well outweigh the cost of hiring an agent or attorney to do it right the first time.

On the other hand, if you’re confident you can complete the patent application on your own, or you’d like to at least give it a try, you’ll want to refer to the Patent Office’s Guide to Filing a Non-Provisional (Utility) Patent Application.

Difference Between a Patent Agent and a Patent Attorney

Both patent agents and patent attorneys must apply and be approved to act as agents for inventors submitting patent applications to the U.S. Patent and Trademark Office.

A patent agent is someone who has submitted qualifications demonstrating mastery of a technical or legal subject area and passed a test demonstrating knowledge of patent law and procedure, sufficient to effectively represent a patent applicant before the USPTO.

A patent attorney has passed the same test but is also a practicing lawyer able to provide the applicant with legal advice and serve in litigation.

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