Chapter 6: How Do I Apply for a Patent?
Patent law is highly complex, and drafting patents is among the most difficult of all legal writing. That's why experts caution that preparing and filing patent applications on your own may result in patents that don't give adequate protection. Hiring an attorney can save you grief and money in the long run; in some cases, patent attorneys can also provide guidance in licensing and marketing. You can, however, cut your expenses by drafting the patent application yourself and having the attorney proof your final application.
A patent is granted to the owner/assignee and usually includes:
- All of the names of the invention’s inventors. Any patent can be invalidated if any inventor’s name is missing. A qualified patent attorney or agent can best determine if there is a question of inventorship—conception of the invention is the touchstone of inventorship, in conjunction with having “reduced to practice” the invention.
There are two types of reduction to practice:
- “Actual” reduction to practice: This occurs when the invention is actually made and used, as described in the application’s “specification” and included in the application’s “claims.” A small or pilot scale example of an invention can suffice for actual reduction to practice
- “Constructive” reduction to practice: This occurs upon the filing of a patent application in which the application covers, in all of its categories, the ultimate actual invention, as claimed and described in the application and any ultimate patent. Patent practitioners often refer to this kind of patent as a “paper patent,” until the invention is “actually” reduced to practice.
Contents of a patent application:
- An abstract
- One or more drawings
- The invention's name, background, purpose, and advantages
- Brief descriptions of the drawings The specification: a written description of the invention and an explanation of how to make and how to use the invention in the best mode at the time of filing the patent application
- Claims defining the invention. Claim drafting is extremely complex and important, because the claims—what an inventor claims to be their invention—are the most indispensable element of a patent application.
Note that the USPTO posts the entire patent application on the Internet 18 (eighteen) months after the initial filing date.
In the absence of a separate assignment on file at the USPTO or a private contractual arrangement, the inventor owns the patent application and any subsequent patent. Two or more inventors—those who generated the ideas, not simply implemented them—may apply jointly. In such an instance, absent a separate contractual arrangement, each inventor owns an equal, “undivided” portion of the patent application and any subsequent patent. By owning an undivided portion, an inventor’s ownership interest is that of the whole invention, not a specific part of the invention. For example, if three inventors apply for and receive a patent, each inventor shares an equal undivided ownership of the entire invention. Notably, in the absence of private contract, each single inventor has independent rights to practice and/or license the whole invention, irrespective of which of the three inventors are responsible for which claims and material in a patent. Thus, if a patent contains fifty claims, and one inventor is responsible for only one of the patent’s claims, that inventor could practice or license the entire invention in the absence of private contract stating otherwise. This has actually occurred and been validated by the federal courts. The law of patent ownership highlights the necessity of inventors agreeing on equitable ownership percentages, in writing, prior to filing a patent application. This is of course absent a pre-existing contractual obligation of an inventor to assign rights in an invention to an employer, such as a corporation or a university.
Patent filing fees can change yearly. Once a patent is issued, maintenance fees come into effect. For current fees consult the USPTO
It will likely take up to a year-and-a-half or more for the USPTO to respond to your application and a year-and-a-half to three years for a final patent grant or rejection. Once you file your patent, the term “patent pending” may be applied to the invention until your application is accepted. Although a number of patent applicants use this term, the federal patent statute does not contain the term “patent pending.”
Provisional patent application: Another option to consider is a provisional patent application, which allows the term "Patent Pending" to be applied to the invention for one year. It can be filed at a lower cost, but the patent office does not review the content of a provisional patent application during its first year. Rather it expires after its one-year lifetime. Therefore, the provisional application must be replaced with a conventional patent application, such as a utility application, within one year of its filing. A provisional application does not have to satisfy the same legal requirements as a utility application, such as the necessity for patent claims. Nonetheless, the relationship between a provisional patent application and a utility patent application is very complex, especially if an invention changes before the provisional patent application is converted to a utility application. In this case, a reputable patent attorney or agent should be consulted.
Patent Cooperation Treaty: This treaty allows inventors to obtain patent protection simultaneously in a number of countries by filing an "international" application. The inventor must be a resident of a contracting nation to file. He or she can then file an application within his or her country of residence, indicating in which member States he or she would like the patent to have effect. Currently there are about 148 contracting States. More information is available at the World Intellectual Property Organization's website
The Inventor Handbook is written as a preliminary guide for inventors and where legal rights are concerned, the reader should consult a qualified attorney.