How Do Inventors Get a Patent?

To obtain patent protection an inventor must file an application with, and be issued a patent by, the U.S. Patent and Trademark Office (USPTO) in Arlington, Virginia, a branch of the U.S. Department of Commerce. A U.S. patent application typically consists of:

• an explanation of why the invention is different from all previous and similar developments (the “prior art”)
• a detailed description of the structure and operation of the invention (called a patent specification) that teaches how to build and use the invention
• a precise description of the aspects of the invention to be covered by the patent (called the patent claims)
• all drawings that are necessary to fully explain the specification and claims
• a statement under oath that the information in the application is true, and
• the filing fee.

Patent Claims are Crucial

By far the most important part of the application are the patent claims. Patent claims--which essentially define the scope of your invention--are the heart of your invention and what makes it attractive to licensees. The claims define the boundaries of the invention in the same way that a deed establishes the boundaries of real property. Drafting patent claims is a specialized skill (as you will no doubt see from the sample claim for a baby bib below).

EXAMPLE: A baby’s bib comprising: a body portion of a first plastic material having an opening to receive a baby’s neck; and a bead formed of a second plastic material more compressible than that of the first plastic material and molded around a defining edge of the opening to be integral with the body portion and, in use, to encircle the neck of the baby, the bead being such as to permit compression of the second plastic material in a direction substantially radially of the bead but to prevent extension of the second plastic material in a direction along the length of the bead. (Patent No. 6,481,016.)

What the USPTO Does

When the USPTO receives an application, a patent examiner is assigned to it. Typically, the application process takes between one and three years.

The examiner is responsible for deciding whether the application meets all technical requirements and whether the invention qualifies for a patent. Typically, there is a back and-forth exchange between the applicant and the patent examiner regarding the scope of the patent claims. Once the application is approved, the applicant pays a patent issue fee and receives an official copy of the patent, and the USPTO issues a patent deed.

To keep a patent in effect, three additional fees must be paid over the life of the patent. At present, the total patent fee for a small inventor, from application to issue to expiration, is over $4,000. For large corporations, it is twice this amount.

When You Need a Lawyer

You can prepare and file your own patent application or you can hire a patent attorney or patent agent to do it for you. A patent agent is a nonlawyer with some technical training who is licensed by the USPTO to prepare patent applications and deal with the USPTO, a process called “patent prosecution.” A patent attorney is a lawyer with a technical background who is specially licensed to practice before the USPTO. A patent lawyer can do everything an agent can do plus represent you in patent litigation. Hiring an attorney or agent will cost several thousand dollars, depending upon the complexity of the invention.