Filing for patent protection may be a critical step in securing the exclusive right to obtain revenue from third-party use and commercialization of an invention. The patent application process is complex. This overview walks through the main steps involved in protecting an invention

Determine Whether Patent Protection is Appropriate 

Patents, copyrights, trademarks, and trade secrets are different types of intellectual property. It is important to understand the different types of intellectual property rights in developing a protection strategy.  

Determine the Type of Patent You Need 

Once it is determined that patent protection is appropriate, the next step is to determine the type of patent to apply for. There are three types of patents:

1. Utility patents protect new and useful processes, machines, articles of manufacture, or compositions of matter. They are the most common type of patent. Under the umbrella of utility patents, there are two types of applications that can be filed – a provisional application or a non-provisional application. Click here to learn more about the differences between a provisional application and a non-provisional application.

2. Design patents protect the ornamental designs of useful articles.

3. Plant patents protect distinct and new plant varieties.

The type of patent to file depends on the nature of the invention and what aspects are being protected. For example, if protection is sought on the functionality of a new technological device, utility patent protection may be most appropriate. If protection is sought on the ornamental design of a product, a design patent would be most appropriate.

Conduct a Patent Search 

A patent search involves investigating existing patents, published patent applications, and other publications to determine whether an invention is already publicly disclosed or obvious in light of other inventions publicly disclosed. This step, while not required, could be useful because the U.S. Patent and Trademark Office (USPTO), as well as other global patent offices, will not grant a patent if the invention is not novel and non-obvious.

Complete and Submit the Patent Application

There is a specific format in which a patent application must prepared. Failure to prepare an application in the correct format will result in objections. One of the most important sections of the patent application is the claims section. Claims need to be carefully worded to ensure adequate protection. Crafting claims that are broad enough to protect your invention but specific enough to be granted by the patent office requires expertise. A patent attorney can provide strategic advice on how to best protect your invention.

Once the application is prepared, it is filed with the United States Patent and Trademark Office (USPTO). The application can be filed online via the USPTO’s EFS-Web system. After filing, an electronic filing receipt is immediately provided that confirms the submission and includes the application filing date. 

Await Patent Application Approval or Denial

More than a year after filing, a patent application will be assigned to a patent examiner. The examiner reviews the application and formulates an opinion on whether the invention meets certain requirements, including eligibility for patent protection, novelty, and non-obviousness.

This step in the process is called patent prosecution. During patent prosecution, letters from the examiner called “office actions” may be issued where the examiner may raise objections to and/or rejections of certain elements of the application and invention. In response to these objections and/or rejections the application may be amended (with certain limitations) and rebuttal arguments may be submitted. In many instances, meetings with the examiner (“examiner interviews”) could be helpful.

This process may continue for a number of months and multiple office actions may be issued before an application is allowed. 

If a final rejection is issued, there is an option to appeal the decision to the Patent Trial and Appeal Board (PTAB) or consider making further amendments.

Once an application is approved, a Notice of Allowance will be issued, indicating that the patent will be granted once payment of the issue fee is submitted.

Work With an NYC Patent Attorney Throughout the Application Process  

The patent process is a complex process. An incorrect submission or an improperly drafted application can potentially result in a lost opportunity to secure protection for your invention. Working with an experienced team of New York City patent lawyers who can guide you through the process of protecting your inventions in the United States and in foreign jurisdictions is the first step toward success.