Lesson 2: The Patent-filing Process
As we have learned, you should do your homework before you start the patent-filing process. Write a detailed specification and consider conducting a prior art search. In addition, consider things such as the scope of the patent, whether any others have contributed to your ideas, and whether and how someone could “work around” your patent and your target market. If you do a good job of getting yourself ready to file, you can save time and money.
THE FILING PROCESS
Retaining a lawyer/patent agent
If you haven’t already done so, then it will be important for you to retain a lawyer or a patent agent to support you through the filing process.
It is important to retain the right patent agent and/or lawyer.
When you retain a professional to help you file for a patent, make sure that you hire an expert who understands your industry and has the expertise to understand the nature of your particular invention as well as your strategic business objectives. Also, make sure that the expert is engaged in advising you not only on the mechanics of filing the patent but also on how to optimize the scope of your patent protection, even if this means paying a bit more for this strategic advice. Do not let cost considerations entirely dictate whether and how you secure your patents. Doing so can be perilous.
Filing a provisional/incomplete patent application
Since it is important to be the first to file your patent and to get an early filing date (called a priority date), you may want to consider filing an “incomplete“ or provisional patent application (as it is known in the United States).
There are a number of benefits associated with filing a provisional patent application, but there are certain considerations that should be factored in before you decide to proceed:
- In filing a provisional patent application, far fewer details are required, so it can be done more quickly and with less professional support.
- After you file the provisional patent application, you can take the time to do further due diligence
and decide whether you want to file the formal patent application.
- A provisional patent is only valid for a limited period of time and has to be followed with a finalized patent application that meets the specific requirements for formal patent applications.
- Before filing a provisional patent application, you should consider how the filing of such an application will affect patent protection elsewhere. For example, if you file a provisional patent in the United States and then disclose your invention, you would have to make sure to file a European application before the one-year anniversary of the provisional filing.
- There are filing fees associated with filing a provisional patent application, which increase your overall filing costs.
Filing the formal patent application, prosecution and maintenance
If you have filed a provisional patent application, you need to follow it up with a more detailed and complete patent application within a statutorily prescribed time period. Even then, filing a patent application is not the end of the process.
You have to be involved in the patent examination process. During this process, the patent examiner may issue objections to all or part of your patent application. Typically, you will need to respond to these objections. Once you have overcome all of the patent examiner’s objections, your patent will issue (in other words, it will be granted).
After that, you will have to pay periodic maintenance fees to make sure the patent remains in good standing.