As with anything in life, there is a right way and a wrong way to do something. Filing a patent is no different. While filing it the right way protects your valuable invention, filing it the wrong way can mean losing its benefits. Our legal expert, a patent lawyer whose practice caters to individuals and small companies, explains the right way to handle patentability searches, prior art improvements, what goes into filing a patent application and what it costs.
Patent Attorney Russ Weinzimmer Explains the Patent Process
Russ Weinzimmer has been practicing patent law for over 30 years and his firm operates in all 50 states and internationally. He’s personally obtained hundreds of patents for clients during that time and he explained the process to us in a recent interview:
• Perform a patentability search
The first step in the process is that we do a patentability search. We want to know how close we can get to the invention by searching a comprehensive database of issued US patents and published US patent applications and foreign patent databases including patent documents from all major industrialized nations. We also search Google using what we learned from searching the patent databases.
• Create a detailed search report
After that, we provide a detailed search report that shows exactly where we searched, how we searched, what we found, what we did not find and provide copies of the most relevant references for the client’s review.
• Consult about findings / Create action plan
We provide an in-depth consultation about those search results, so the client can understand how broadly his or her invention can be protected in light of those search results. That’s because a patent can cover no more than what is not taught by the prior art. So what we end up doing is coming up with an understanding and a definition of the inventor’s invention that is as broad as possible, but no broader than the prior art that we found. One way to think of it is the prior art forms a fence around the invention and we will work to define the invention up to, but not including, the prior art fence around the invention.
If we find the invention exactly among the search results, we encourage the client to select invention features from various search results to create an improved invention, so that the improved invention is in fact different from all of the search results. There may be opportunities to improve the invention by adding, removing, and/or combining one or more features taught in the prior art found in the search. Then, if the client is excited by the possibilities of that improved invention, a patent application can be prepared and filed based on the improved invention.
• Prepare patent application
After they give us that information, we draft a patent application which would include a detailed description, a background of the invention, a summary of the invention, an abstract of what is taught in the patent application, a field of the invention, a title of the invention and a brief description of any drawings.
• File the application / Pay the filing fee
Once that is drafted and approved by the client, then the filing papers are prepared, the government fee (approximately $500) is paid, and the papers are filed.
• Wait
The government, which in this case is the United States Patent and Trademark Office (USPTO), receives the patent application and provides a receipt. Then it will sit there for 18 to 24 months before it gets reviewed.
If someone else comes along with the same invention during that time, the law in this country is that the first true inventor to file a patent application is the one who owns the invention. So if someone else comes along and invents it after your patent issues and starts selling the invention, you can approach them and inform them that they need to take a license or they need to stop making and selling it if you don’t want to give them a license.
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Read more frequently asked questions about the patent process.
