How to Get a Patent: Steps to Protect Your Invention
Learn how the patent process works, from evaluating your invention to securing rights and navigating legal protections effectively.
Turning an idea into a protected invention is a crucial step for innovators seeking to secure exclusive rights. A patent grants the holder the legal authority to prevent others from making, using, or selling the invention without permission, safeguarding innovation and potentially increasing the value of a product or company.
The process of obtaining a patent involves several distinct stages and requires adherence to specific legal standards.
Eligibility Criteria
For an invention to be eligible for a patent, it must meet several fundamental requirements set forth in federal law. Section 101 of the U.S. Patent Act specifies four broad categories of patentable subject matter: processes, machines, manufactures (articles produced from materials), and compositions of matter (combinations of substances).1U.S. Patent and Trademark Office. 35 USC 101: Statutory Requirements and Four Categories of Invention An invention must fall into at least one of these classifications.
The courts have also established exceptions to patentability, determining that laws of nature, natural phenomena, and abstract ideas are not eligible for patents, even if novel. Landmark cases like Mayo Collaborative Services v. Prometheus Laboratories, Inc. and Alice Corp. Pty. Ltd. v. CLS Bank Int’l clarified that such concepts are fundamental tools that should remain publicly accessible.2Justia U.S. Supreme Court Center. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014) An invention based on one of these exceptions may only be patented if it incorporates additional elements demonstrating a practical application that amounts to significantly more than the exception itself. Simply applying an abstract idea using a generic computer, for example, is generally insufficient.
The invention must also possess utility, meaning it serves a specific, substantial, and credible practical purpose. This requirement, also under Section 101, prevents patents on purely theoretical concepts or inoperable devices. The utility must be plausible to someone skilled in the relevant field.
Furthermore, the invention must be novel, as required by Section 102 of the Patent Act.3U.S. Patent and Trademark Office. 2152 Detailed Discussion of AIA 35 U.S.C. 102(a) and (b) This means it cannot have been previously patented, described in a publication, or publicly known or used before the patent application’s effective filing date. The invention must be genuinely new compared to the existing body of knowledge, often called “prior art.”
Finally, Section 103 mandates that the invention must be non-obvious. Even if novel, an invention cannot be patented if the differences between it and the prior art would have been obvious to a person with ordinary skill in the relevant technical field at the time. Trivial variations or predictable combinations of known elements generally fail this test. The Supreme Court’s decision in Graham v. John Deere Co. established key factors for assessing obviousness, including the scope of prior art and the level of skill in the field. Meeting all these criteria—eligible subject matter, utility, novelty, and non-obviousness—is necessary for patentability.
Prior Art Search
Before filing a formal application, conducting a search for “prior art” is advisable. Prior art includes any evidence suggesting an invention is not new or is obvious. Under Section 102 of the Patent Act, this encompasses anything patented, described in a printed publication, in public use, on sale, or otherwise available to the public anywhere in the world before the application’s effective filing date. U.S. patents and published applications filed before your application date also count. Identifying relevant prior art early can help determine whether to proceed and how to define the invention.
A thorough search involves exploring various resources. The U.S. Patent and Trademark Office (USPTO) offers the Patent Public Search tool, providing access to millions of U.S. patents and published applications.4U.S. Patent and Trademark Office. Patent Public Search International databases, such as the European Patent Office’s Espacenet and the World Intellectual Property Organization’s PATENTSCOPE, contain patent documents from numerous countries. Non-patent literature, including scientific journals, technical publications, websites, and product manuals, must also be searched, as these can constitute prior art.
Effective searching often combines strategies. Keyword searching uses terms describing the invention, while classification searching utilizes systems like the Cooperative Patent Classification (CPC) to explore specific technology areas. Citation searching involves reviewing patents cited by or citing a relevant document. Keeping detailed records of the search process is helpful.
While valuable, a prior art search cannot guarantee completeness. The vast amount of global information, language barriers, and the 18-month delay before most applications are published mean some relevant art might be missed. The ultimate determination of patentability rests with the USPTO examiner.
Drafting the Application
Constructing the formal patent application document is a critical phase. This document discloses the invention to the public and forms the basis for examination.
Claims
The claims define the precise legal scope of the invention for which protection is sought. Section 112 of the Patent Act requires that the application conclude with one or more claims distinctly identifying the invention. Each claim, typically a single sentence, outlines the specific elements or steps constituting the invention. They must be clear, unambiguous, and fully supported by the description provided elsewhere in the application. The breadth and specificity of the claims determine the extent of patent protection.
Specifications
The specification provides the detailed written description supporting the claims, as mandated by Section 112.5Legal Information Institute (Cornell Law School). 37 CFR § 1.51 General Requisites of an Application It must describe the invention and how to make and use it in such full, clear, concise, and exact terms that a person skilled in the relevant field could replicate it without undue experimentation (the “enablement” requirement). The specification must also disclose the “best mode” contemplated by the inventor for carrying out the invention at the time of filing. It typically includes background information, a summary, descriptions of drawings, and a detailed explanation of the invention’s structure and function.
Drawings
Visual aids are often essential, particularly for mechanical inventions. Section 113 requires drawings whenever necessary to understand the invention. If the invention can be illustrated, drawings are generally expected. These must comply with strict USPTO formatting rules regarding size, margins, line quality, and labeling. Drawings must depict every feature mentioned in the claims and help clarify the invention’s structure and operation.
Filing the Application
Once drafted, the application must be formally submitted to the USPTO. Inventors can file a nonprovisional utility patent application, which undergoes examination and can result in a patent typically lasting 20 years from the filing date. Alternatively, a provisional patent application can establish an early filing date.6U.S. Patent and Trademark Office. 201 Types of Applications Provisional applications are less formal, do not require claims initially, and expire after 12 months. A corresponding nonprovisional application must be filed within that year to claim the provisional’s filing date.
Securing a filing date is crucial. For nonprovisional utility applications, submitting the specification (with or without claims) establishes the date.7U.S. Patent and Trademark Office. 2754 Filing Date For design applications, the specification (including at least one claim) and any necessary drawings are required. While claims and drawings might not be needed immediately for a utility filing date, they, along with an inventor’s oath or declaration and required fees, must eventually be submitted for a complete application.
The USPTO’s Patent Center portal is used for electronic filing.8U.S. Patent and Trademark Office. Patent Center This system allows for uploading documents, paying fees, and tracking application status. Electronic filing is standard and avoids additional fees for nonprovisional utility applications.
Filing requires paying appropriate fees, which vary based on application type and the applicant’s entity status (large, small, or micro).9U.S. Patent and Trademark Office. USPTO Fee Schedule Small and micro entities, including independent inventors, small businesses, and certain nonprofits or educational institutions meeting specific criteria, pay reduced fees. Basic filing fees must typically be accompanied by search and examination fees. Payment is necessary to initiate the patent process.
Examination Process
After filing, the application enters substantive examination at the USPTO. It is assigned to a Technology Center and a Patent Examiner with relevant expertise. The examiner reviews the application for compliance with U.S. patent laws, assessing whether the claimed invention meets the requirements of utility (Section 101), novelty (Section 102), and non-obviousness (Section 103). The examiner also checks if the application meets disclosure requirements under Section 112, ensuring the description supports the claims and enables one skilled in the art to practice the invention.
The examiner conducts an independent prior art search, comparing the claimed invention against existing patents, publications, and other public disclosures. The findings are communicated through an Office Action, which details any rejections of claims, citing specific laws and prior art, or objections to the specification or drawings.10U.S. Patent and Trademark Office. 706 Rejection of Claims
Applicants typically have three months (extendable with fees) to respond to an Office Action. The response must address each rejection and objection, often involving arguments for patentability or amendments to the claims. The goal is to persuade the examiner that the application meets all legal requirements.
If the response overcomes all issues, the examiner issues a Notice of Allowance. If issues remain, the examiner may issue another Office Action, potentially designated as “final.” Options after a final rejection include appealing the decision to the Patent Trial and Appeal Board (PTAB), an internal USPTO tribunal, or filing a Request for Continued Examination (RCE). An RCE, accompanied by a fee and further arguments or amendments, reopens prosecution, allowing the examiner to reconsider the application. RCE fees vary by entity status and whether it is the first or a subsequent request.
If the examiner determines the application is allowable, the USPTO issues a Notice of Allowance, specifying the issue fee and any publication fee.11U.S. Patent and Trademark Office. 1306 Issue Fee and Patent Term The applicant has a non-extendable three-month period to pay these fees. Timely payment results in the official grant and publication of the patent. Failure to pay leads to abandonment of the application.
Patent Enforcement Options
A patent grants exclusive rights, but enforcing these rights against unauthorized use (infringement) is often necessary. Infringement occurs when another party makes, uses, sells, offers for sale, or imports the patented invention without permission.
Often, the first step is sending a cease-and-desist letter to the alleged infringer, identifying the patent and demanding the activity stop. This can sometimes lead to resolution without litigation.
If informal methods fail, the primary enforcement mechanism is a lawsuit in federal district court. Federal courts have exclusive jurisdiction over patent infringement cases under Title 28, Section 1338(a) of the U.S. Code.12Legal Information Institute (Cornell Law School). 28 U.S. Code § 1338 Patent Jurisdiction The patent owner files a complaint, initiating complex litigation involving discovery, claim construction (where the court interprets the patent claims), motions, and potentially a trial.
If infringement is found, the court can grant remedies. An injunction, an order to stop infringing activities, may be issued under Section 283 of the Patent Act. However, following the Supreme Court’s decision in eBay Inc. v. MercExchange, L.L.C., injunctions require the patent owner to demonstrate factors like irreparable harm and that public interest favors the injunction.
Courts must also award monetary damages sufficient to compensate for the infringement, as stated in Section 284.13Legal Information Institute (Cornell Law School). 35 U.S. Code § 284 – Damages This is typically calculated as lost profits or, at minimum, a reasonable royalty. Section 284 also allows courts to increase damages up to three times for willful or egregious infringement, based on the standards clarified in Halo Electronics, Inc. v. Pulse Electronics, Inc.
Another venue for enforcement, specifically against imported goods, is the U.S. International Trade Commission (ITC). Under Section 337 of the Tariff Act of 1930, the ITC investigates unfair import practices, primarily patent infringement. To use the ITC, the patent owner must show infringement and the existence of a “domestic industry” related to the patented articles, involving significant U.S. investment or exploitation activities. ITC investigations are generally faster than district court cases.
The ITC’s primary remedies are exclusion orders, directing U.S. Customs to block infringing goods from entering the country, and cease and desist orders, prohibiting named parties from selling or marketing infringing goods already imported. The ITC does not award monetary damages but offers powerful relief against infringing imports, making it a strategic option for patent holders facing competition from abroad.