You’ve got some innovative ideas, a technology team, or just an inventive approach to life. Now you want to know how to start the patent process. This Quick Start Guide will get you pointed in the right direction.
There’s a good chance you’re thinking about a new invention that involves a device or process using new hardware, structures, or functions. Then you want to pursue a “utility” patent application. In contrast, you could seek a “design” patent on ornamental designs (e.g., the non-functional parts of your invention) or a “plant” patent if you’ve discovered or created a new type of asexually reproducing plant.
Most US-based companies and inventors start patent protection in the United States. You can also file for protection in foreign countries. Through treaties and agreements, an inventor with a filed US patent application can seek additional protection for the same invention in other countries within 12 months of the US filing date.
Another option is to use international and regional patent systems. The PCT patent application process allows inventors to file an intermediate patent application that extends filing in foreign countries from 12 months to about 30 months (depending on the country). Similarly, many countries are members of regional patent offices that help administer patent processes common to a group of countries (or member states).
You should be very careful about when you file your patent application. In most countries throughout the world, patent protection can only be obtained for inventions that have “absolute novelty.” That means they haven’t been publicized, sold, or offered for sale at all before the patent application is filed.
In contrast to the absolute novelty requirement of most countries, the US gives inventors a 12-month grace period to file their patent application. This means an inventor could publicize, sell, or offer for sale their invention and then file a patent application within the next 12 months. This is not a preferable approach for most inventors and should not be used casually.
For utility patent applications (not design or plant), the US has an optional process of filing a “provisional” patent application. The provisional process allows an inventor to file a preliminary “placeholder” application that grants them a “filing date” but expires after 12 months. To make use of this process, the inventor still has to meet the substantive requirements of describing their invention, but can put off writing claims, creating formal drawings, or paying the full filing fees until the non-provisional patent application is filed. If a non-provisional patent application is filed and “claims priority” to the provisional patent application before the provisional patent application expires, then the non-provisional patent application can benefit from the priority filing date for anything properly disclosed in the provisional patent application. This may be a suitable approach in some situations and should be avoided in others.
When you file a non-provisional patent application in the Unites States, it will get schedule for examination. If you want the examination process to start quickly, you can request “accelerated examination” and pay a fee to get put on the top of the pile. Alternatively, some companies look for as much delay as possible during examination. There are benefits and disadvantages to each approach. If you don’t actively accelerate or delay your application, then it will proceed at the normal rate through the examination process.
Patents and trade secrets are largely exclusive to each other, but there are some situations where aspects of a technology might be patented while other technical information is reserved as a trade secret. To the extent that information is necessary to perform an invention, that information would be required to be disclosed in the patent application. Once it is disclosed, it is no longer a trade secret because the information isn’t proprietary. In contrast, if the information would be more valuable as a company secret, then options for patent protection should be scrutinized closely before including the information in a patent application.
Do you have other questions that should be included in this Quick Start Guide? Let us know.
Contact us if you want a chart that highlights the differences between patents, trademarks, copyrights, and trade secrets.
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