Registering a patent can be be a complicated process. To this end, we have written this article to help you to understand the process of protecting your unique invention.
1. Know Your Invention
The first step is to know your invention. What about your invention makes it new and useful? For instance, let’s say you made a new lid for a coffee mug that slides open and closed to better keep the contents of the mug hot longer. What is it about your lid that makes it new as opposed to what is existing in the current marketplace? How is it different from models of mug lids that came before it?
Once you have identified these aspects you need to consider the scope of your design or invention. Can your invention be made in another way? For instance, could you use a hinge instead of a slide? Could you change the length of the slide that closes the mug? In short, understand different ways someone could make your invention even if they are not as good as your way.
Lastly, consider whether your invention has a larger application. Could your new mug closing be used for something else? Would the invention – on a larger scale – be useful for closing larger devices such as an alcohol distillery? If so, would further modifications be required? Asking questions like this early on will help you to better understand your design or invention so that it can be searched and protected to the fullest extent possible.
2. Conduct Research for Your Invention before You Apply for Your Patent
A patent requires what is known in the industry as “novelty”. In short, novelty means new. One of the reasons an inventor can receive patent protection for their invention is that they have invented something new and useful for the public. But to encourage them to do so we give inventors a monopoly to their inventions for a set period of time – a patent. That’s why the invention is required to be “new” or “novel” as it makes little sense to give someone rights to an “invention” that is already in the public domain.
As such, you should have a search performed to find any relevant articles, web content, patent application or issued patents that contain your invention or some component thereof. For example, you may find a web site selling coffee mugs that have a very similar slide opening to the one you thought you had invented. This is considered “prior art” and may jeopardize your ability to patent your invention as it may establish your invention was already in the public domain.
Of note, you are required to disclose any “prior art” in publications or other written documents to the United States Patent and Trademark Office (USPTO) when applying for your patent. Failure to do so may disqualify your patent even after it is granted.
3. Select the Type of Protection for Your Invention
Returning to our example, let’s say you really like your new coffee mug lid but you think it still can be improved upon. Perhaps the hole to the slide ratio could be improved upon to allow the increased flow of liquid or a second hole added that alleviates the vacuum created by pouring of liquid for a smoother more continuous pour. In this instance, you may wish to file a provisional patent application.
A provisional application establishes your priority to the invention by proving that you are the inventor as of the date the patent application is filed. You then have a year to file or convert your provisional application to a full. During that year you can experiment with and perfect the prototype of your invention. Of note, however, you cannot add anything new. For instance, if your new prototype includes that pressure-relieving that you did not include in the provisional application then you will need to file a new patent application to get the benefit of the new addition to the design.
Also, never rule anything out when considering what forms of patent protection – as well as other protections such as trademarks – are available to you. For example, the rounded shape of the coffee lid have a real functional improvement as it closes more snugly and locks in pressure better than a design with angles or corners. It may also produce a very distinctive appearance. If so, you could file a design patent application for the distinct appearance of the coffee mug lid in addition to or in place of the utility patent application. Of note, if your coffee mug lid has a very distinctive appearance but does not have a functional purpose (i.e., locking in pressure) it is even possible to secure a trade dress trademark for the design if consumers, when seeing the lid, would associate that as your brand (e.g., the hour glass design of the Coca-Cola bottle).
Generally, a design patent protects the way an functional invention looks, while a utility patent protects the way an article is used and works. And if the design is not functional but when consumers see it they will know that is your product, trade dress trademark protection may be available. In short, overlapping patent protection (and potentially trademark protection as well) is incredibly important and makes your intellectual property that much more valuable.
4. Draft and File Your Patent Application
Drafting a patent application can be complex. Done correctly, you stand a good chance of securing your patent rights. Done incorrectly and your patent will likely never issue. Applications have several parts including specifications, drawings, and claims. Each of these, in turn, can be rejected for technical or formal reasons. This is why it is almost always recommended to seek assistance of a skilled professional when filing for protection of your invention.
But the professional cannot do it alone. Consider them as the vessel through which your idea must be placed in written form. As such, to truly capture the essence of that which you seek to protect you must work hand-in-hand with your patent professional to make sure what goes down in writing in the application accurately captures the concept and application of your invention.
Assuming you select a professional, be prepared to provide them with any written information you have, drawings, or description of your invention so that they can best understand that which you are seeking to protect. Once those have been provided it is a good idea to consult with them to discuss your application to make sure when they draft the same you are on the same page. Then, once drafted, you should have the ability to review the same and consult with your professional again on what the application will protect prior to it being filed. Then you can make any final changes prior to filing to make sure it meets with your approval. Only then should the application be filed and (hopefully) your patent rights secured.
5. Wait to Hear from the U.S. Patent and Trademark Office
Once filed, it can take a year or longer to hear back from the U.S. Patent and Trademark Office. Often you will hear that your patent has been approved. But do not be discouraged if initially it is not. Most patent applications receive some form of request for modification or initial rejection. You may receive notice that you have failed to fully explain how your invention works. Or the patent examiner may argue that your invention is not novel (new) in light of the prior art or that your invention is not the type of thing permitted under the law. When this occurs, if it happens, you should seek professional assistance to file a patent office action response as how you respond may make the difference between getting your patent and having it rejected forever.
Of note, while you are waiting for your initial response go ahead and get to work. Assuming that you are seeking protection for commercial gain, start moving towards your goal. If you believe your invention will have value to license to another company, reach out to them and begin licensing discussions. Because your patent is on file you are protected – assuming it issues – and you can discuss deals involving your soon-to-be-protected invention.