A Brief Summary of the Patent Process
Whenever we meet with a new client who has not gone through the patent process before (and even when they have), we make sure to give them a brief summary of what they can expect. The patenting process involves multiple steps. Depending on the invention, the prior art landscape, and the client’s goals, this process can be shorter or longer. Consider that there have only been about ten million patents issued over the entire history of the United States. There are about 330 million people living in the US today, and countless more millions have lived and died throughout our history. Thus, obtaining a patent puts one in very rarefied air. It is no small feat!
Generally, we begin the process with a patentability search and analysis to determine if an invention is patentable. This analysis involves searching the US Patent Office records, as well as a number of foreign patent offices (foreign patents can prevent the issuance of a US patent) and the market as a whole. Based on these search results, we prepare a detailed report analyzing if the invention is “new” and “non-obvious” and provide an opinion on the best next steps.
Assuming the patentability analysis indicates that filing a patent application could yield promising results, the next step is to prepare the application itself. For a utility patent application (which is what most people think of when they think of a patent), this involves preparing a detailed write up of what the invention is, how it works, all of its possible variations and embodiments, as well as drawings, and a claims section which carefully sets out the scope of the invention. This document is then reviewed with the client, edits are made, and then the application is filed. Once filed, the invention is “patent pending.”
In a typical case, the application will work its way through the United States Patent Office and we will not hear anything back for about 18-24 months. When we finally do hear something, it is almost always some sort of rejection. Rejections happen in about 90% of cases, at least. We always counsel clients to expect them and plan for them. Because rejections are so common, responding to them is a large part of what we do and we have a great track record of overcoming them. We view the rejection “phase” of the patenting process as a negotiation. We go back and forth with the patent examiner and seek to find a scope of coverage that works for both the client and the Patent Office. Once this agreement is reached, a notice of allowance is issued. Once the issue fee is paid, the patent issues. Soon after, we receive an official copy of the patent bearing the Patent Office’s seal.
The US Patent Office does not exactly make it easy to obtain a patent. However, we here at Lambert Shortell & Connaughton have a wealth of experience navigating the process for our clients so that they too can join the very select few in this country’s history who hold a patent for their invention.