It is helpful to first perform a patent search to determine if a potential invention may be patentable. If you are a do-it-yourself inventor, a screening search may be performed online (www.uspto.gov, and www.google.com/patents) relatively quickly and easily. It is also fairly easy to research the marketplace (google search, and searching through stores and catalogues) to determine if anyone is already selling a similar product.

If you do not find any “prior art” (i.e., prior patents, publications, products for sale, etc.), a professional PATENTABILITY search may be desired. A professional searcher will be able to search much more thoroughly and determine whether the invention is patentable. A complete search will enable the Patent Attorney to write the broadest and strongest claims. A typical U.S. patentability search costs $1200, although this can vary depending upon the complexity of the invention, and the field of technology involved.

Important disclaimer: It is worth noting that no search is able to completely guarantee success in a patent application. There are many sources of prior art that can’t be searched (e.g., patent applications that have been filed but not yet published), and prior art that is too expensive to search under ordinary conditions (e.g., foreign databases, technical journals, etc.). If you need a more detailed search, discuss various additional searching options with your attorney.

In addition to a patentability search, it may also be beneficial to perform an INFRINGEMENT search, to determine if there are patents which your product might infringe. If you are launching a new product in a fiercely contested space, this may help you avoid costly infringement problems later. Infringement research tends to be fairly expensive, so it should be performed with care, but it can be essential under the right circumstances. Under most circumstances, a patentability search is the most cost-effective solution.

If you decide to move forward with a patent application, it is important that the patentee understand the basics of the patent application process. This will not only prepare the patentee for the process, it will also ensure that the patent be as broad and strong as possible, and prevent falling into any traps or pitfalls along the way.

Once you have started the application process, you will need to fill out a questionnaire that will help us gather all the necessary information needed to prepare the application. You can find the Questionnaire here.

A. Provide a Detailed Disclosure of the Invention

It is important that a patent application include all of the potentially patentable details of the invention. Some of the strongest patent claims may be based on particular details of the construction, methods of manufacture, or methods of use of the invention. Take the time necessary to fully disclose all of the details, especially details that are different than prior art devices, and details that are important to the manufacture, operation, and/or use of the invention.

It is also helpful to include different EMBODIMENTS (i.e., specific implementations) of an invention. While your focus is probably on your currently preferred embodiment (i.e., how you plan on making it yourself), it is worth disclosing and discussing alternatives. Also, ask yourself how a competitor might try to change or improve your current product, or try to design around your patent. If these alternatives are discussed, it can become much more difficult to get around your patent.

Other important details include anything done “against the teachings of the prior art,” or solutions that you have found to hurdles that have confounded others in the industry. The more detailed and specific, the better.

IMPORTANT NOTE: Many patentees mistakenly believe that being vague helps to broaden the patent, and this is not correct. The scope of patent protection is determined by the language used in the CLAIMS, not the details disclosed in the specification. Add as much detail to the specification (i.e., disclosure) as possible, and work with an attorney to make claims of suitable scope.

B. Inventorship

It is critical to correctly list inventors -- list ALL persons who contributed to the claimed invention, and ONLY persons who have made an inventive contribution.

A common mistake is to exclude a person or persons who contributed an important detail of the invention. If you want to claim this detail, that person or persons must be listed as inventors. You may need to get an assignment signed beforehand, but intentionally excluding them may be grounds to invalidate the patent in the future.

Another mistake is to include a person or persons who did not contribute to the invention – managers, business partners, investors, even a wife or children. If a person did not contribute to the claimed invention, they cannot be listed. If you want to include a certain party, be sure to have them contribute some detail that can be specifically added and claimed. Regarding family, it is best to perform your estate planning in your will, not by incorrectly listing inventors in a patent application.

So what constitutes invention? In many cases it is a single person who independently makes a jump forward, or makes a unique combination. In other cases, multiple persons may invent over the course of interactive discussions. Engineers who merely perform routine engineering tasks at the direction of the actual inventors do not become inventors. However, it is very common for engineers and product developers to make patentable improvements while working with an original inventor, and inventive details added may make the engineer a co-inventor.

Take home lessons: have engineers, product developers, and other skilled workers sign Employment Agreements or Work Agreements before filing to assign their potential patent rights, so that if they become co-inventors, they don’t acquire rights to the patent. Also, discuss any potential co-inventors with your patent attorney, so you can be sure to correctly list inventorship.

C. Entity status (large entity vs. small entity vs. micro entity)

The fees that you pay the Patent office are determined based upon the size of the person or entity that is applying for the patent application, and all inventors.

Large entity, the default status, pays the largest fees.

Small entity status is available for individuals, and companies that employ fewer than 500 people. A small entity pays fees that are ½ of large entity fees. This is obviously the large majority of applicants.

Micro entity status is allowed for persons and companies where neither the applicant nor the inventor nor a joint inventor has been named as the inventor or a joint inventor on more than four previously filed U.S. patent applications, excluding provisional applications and international applications, and who earned less than a certain income in the previous year (about $160,000 at the moment, although it changes every year).

Many attorneys recommend using small entity status (assuming you are not large entity), and avoid micro entity status because of potential dangers if not handled correctly. If you do claim micro entity status, you must let your attorney know if there is a change in your status during the patent process. If your status does change, you must update your status and pay the new fees. An error in this respect could lead to invalidation of the patent, so it is important to be accurate. To avoid potential errors, we recommend that Applicants file as small entities.

D. Assignments

When an application is filed, it is initially owned by the inventor (or inventors, if there are multiple). It is up to the inventor(s) and/or Applicant to file an Assignment to transfer rights to the invention from the Inventor(s) to a company or other legal entity, if this is desired.

If there are multiple inventors, each inventor owns rights to the patent, and can transfer or license his/her rights without any accounting to other inventors. This can lead to particular problems when there are multiple inventors. Each inventor has full rights to the invention, and can make/use/sell the invention, and license/assign the invention to other parties, with no requirement to share any income made from the use, licensing, or sale of the invention.

To avoid problems, it is usually desirable for all parties to transfer ownership to a single entity, and/or enter into an agreement as to how the patent rights are to be used. It is undesirable to have multiple parties with independent rights, and disputes can frequently arise when this situation is not handled properly. Discuss this with your attorney.

E. Information Disclosure

When an application is filed, all involved parties (inventors, applicant, attorney) have an obligation to disclose all pertinent prior art to the patent office. Failure to disclose prior art can lead to many potential problems, including invalidation of the patent.

Be sure to disclose to your attorney all prior art (prior patents, publications, products being sold, etc.), so they can be disclosed via an Information Disclosure Statement.

This disclosure obligation continues until the patent is registered, so if you find similar prior art while the patent is pending, you should immediately disclose it to the attorney.

Once the patent application has been filed, it is important to realize that this is only the start of the process. The application must be examined by a Patent Examiner, a process that takes about 1-2 years. Once the Examination is complete, there are arguments back-and-forth between the Attorney and Examiner as whether the application should be granted or rejected (a process called “Prosecution”). This usually lasts a few months, but in rare cases can take years.

Prosecution: A written response from the Examiner is called an “Office action.” The first Office action is almost always initially a rejection of at least some, often all, of the claims. So don’t be concerned about an initial rejection, and you should budget a few thousand dollars ($1000-3000) to respond to initial rejections. This process can often be resolved in a single action, but it may also take multiple rounds of argument, especially if you want to fight for the broadest claims possible. You may also end up filing multiple follow up patents at this time, to include improvements or claim additional features of an invention to just get around rejections. The stronger you want your patent, the more you should budget to fight for it. The fight can sometimes go to the Board of Appeals, or higher, if necessary.

Once the patent has been allowed, you have 3 months to pay a final government issue fee. This is also your last chance to file additional applications for further claims, to add improvements, etc. There are many benefits to keeping at least one application “pending,” so if you have the budget, and want to maximize your protection, you should discuss further patent filings with your attorney. Once the allowance is paid for and filed, we will receive the registration document in approximately 3 months.

Note: The USPTO has switched to electronic copies of registration documents meaning that hard copies will no longer be sent out

Maintenance fees are due at 3.5, 7.5, and 11.5 year intervals from patent grant. If you don’t pay these fees, the patent will expire. We docket reminders for all our clients and keep you up to date on when your fees are due. All correspondence regarding your application status and fees will come directly from Karich & Associates. Please be wary of scam notices which ask for payment for these maintenance fees. See this article here for more details.