Our Patent Attorneys Will Efficiently Guide You Through the Patent Process
The patent process can be overwhelming. At Suiter Swantz IP, we take great pride in efficiently navigating the patent process and explaining each step of the process in transparent terms our clients understand.
There are a number of routes through the patent process and your particular approach will depend on a number of factors. The illustration below depicts a “typical” approach to the patent process and should not be interpreted as the optimal path for every circumstance. You should discuss your particular needs with a patent attorney.
Invention
Once a new technology has been invented it must be determined whether patent protection should be sought. In determining whether an invention is suitable for patent protection, one must consider whether the invention is patent eligible and patentable. The question of patent eligibility relates to whether the government allows patents for the particular type of invention. Some areas of technology, such as software and biotechnology, have particular guidelines related to patenting, which should be discussed with your patent attorney. The question of patentability involves determining whether the invention is novel and non-obvious
Patent Search
While not a requirement of the patent process, it is often useful to perform a patentability search prior to filing a patent application. The patentability search may help in identifying prior art references, which may act as an impediment to your patenting efforts. A patentability search may also assist your patent attorney in the drafting of your patent claims identifying gaps in the prior art references, which are relevant to your invention. A patentability search may be performed before or after the filing of a provisional patent application.
Patent Disclosure and Drawings
Once an inventor decides to move forward with a patent application, it is important for them to spend time developing the subject matter around their invention. This process includes developing a written description of their invention, which contemplates all of the variations of the invention. In concert with the development of the written description, an inventor should provide drawings and/or pictures of the invention. The inventor should provide as much detail as possible when writing the description and providing drawings as this content will form the basis of the patent application.
File Provisional Patent Application
The patent process may be initiated by filing a provisional patent application. A provisional patent applications is particularly useful when financial resources are limited or development of the technology is ongoing. Formal requirements for a provisional patent application are relaxed relative to a non-provisional, or “regular,” patent application and can generally be prepared for a fraction of the cost of a non-provisional patent application. A provisional application may establish a priority date for an invention, acting as a one-year placeholder for the subsequently filed non-provisional patent application. Products and services may be labelled as “patent pending” upon filing of a provisional patent application.
File Non-Provisional Patent Application
Within a year of filing the first provisional patent application, the inventor must file a non-provisional patent application in order to secure the priority date established by the provisional patent application. The non-provisional patent application will include a formalized written description, formalized drawings, and claims. The claims of the non-provisional patent application define the scope of the protection sought by the inventor and are the primary focus of examination by the USPTO. New matter cannot be added to the non-provisional patent application once it is filed, but an additional filing called a continuation-in-part (CIP) application may be used for this purpose.
File Foreign Patent Application(s)
A foreign patent application should be filed within a year of the earliest filing date, often established by the filing of the first provisional patent application, if foreign protection is desired. Foreign patent protection is commonly sought under the Patent Cooperation Treaty (PCT) or the Paris Convention Treaty (Paris Convention). The PCT and Paris Convention regimes allow for a U.S. patent application to serve as a filing basis in foreign countries party to the treaties. Due to the complexity of foreign filing, your specific foreign patent filing strategy should be discussed with your patent practitioner very early in the patent process.
Prosecute Patent Application(s)
Once a patent application is filed, the patent application undergoes prosecution. During prosecution, an examiner at the USPTO will examine the patent application to determine whether the claimed subject matter is patent eligible and patentable. In determining patentability, the examiner analyzes whether the claims in the patent application recite subject matter that is novel and non-obvious relative to the universe of published reference material available to the examiner. In the case where foreign applications have been filed, each country independently examines the respective patent application.
Patent Issues
Once a non-provisional patent application has successfully traversed the prosecution process, the patent application will issue as a patent. In the United States, the lifetime of a patent is nominally 20 years from the filing date of the patent application, subject to patent term adjustment in the case of delay in examination by the USPTO. An issued patent is a right of exclusion, which allows the owner or licensee of the patent to exclude others from making, using, selling, or importing products or services that infringe on one or more claims contained in the issued patent.
Suiter Swantz IP is a full-service intellectual property law firm based in Omaha, NE, serving all of Nebraska, Iowa, and South Dakota. If you have any questions about the patent process please feel free to contact our office and speak with one of our patent attorneys.