How to File a Patent Application - Resource on UpCounsel
Learn more about how to file a patent application4 min read
Want to File a Patent?
You'll need a patent application for that.
Once you have determined that you have a patentable idea, you must create an application to apply for a patent via the U.S. government.
1. Determine what type of patent you need
There are several types of patents you can file for. Determining what type of patent your idea is relevant for is very important.
Here are some common types of patents below:
Utility patents are the most common type of patents that cover a wide range of categories. A utility patent protects the way something is used and how it works, such as a process or article of a process, a machine, product, or composition of matter.
Utility patents are exactly what they seem in that they literally are meant for an invention that has a useful function or purpose such as a new power hand tool, a new car engine, etc.
A design patent has to do with the visual shape or design embodied in or applied to an article of manufacture. When you create a design patent you are creating a new ornamental feature to an item. This means that if you have manufactured a new computer with a design that no one else has thought of you would have a claim at two different patents.
A person could obtain a utility patent for the computer (a machine), and on the other hand, if you think the invention lies on the new ornamental feature of how the computer is shaped then you would need a design patent.
Plant patents may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant. The plant cannot be found in an uncultivated state. Asexual reproduction is the propagation of a plant to multiply the plant without the use of genetic seeds to assure an exact genetic copy of the plant may be employed.
Several accepted modes of reproduction are labeled on the United States Trademark and Patent website that can give more information on the topic. The grant of a plant patent will last for 20 years from the date of filing the application, which will allow the patent holder to exclude others from reproducing, selling or using the plant in any way.
Patenting is becoming the method of choice for effective protection of original computer software. A software patent must have the same criteria as all patentable material.
The software must be novel, useful, and non-obvious to someone of ordinary skill in the field of computer software. Because computer software is a fairly new process it is difficult to specifically define what the non-obvious element of a software patent is going to be.
Additionally, a software must fall into one of the following patent classes: utility, design or plant. A utility patent is either a machine, article of manufacture, process or composition of matter. Increasingly a software is being described as a collection of processes or as a machine.
2. Determine what type of patent application you will need to file for
Do you need to file a provisional patent, non-provisional patent, or international patent?
Filing for a provisional patent in the U.S.
The distinction between a provisional patent application and a non-provisional patent application became necessary in 1995 when the United States Trademark and Patent Office first allowed the filing of provisional application. A provisional application has several differences that are now allowed from a non-provisional patent.
One of the biggest differences is from the fact that you do not need all of the formalities that you do for a non-provisional patent. A provisional patent application merely states what you would like to patent, which allows you to put a “patent pending” label on your invention and saves your spot in line to file a non-provisional patent.
Essentially you file to hold your spot in line for a time frame (one year), to figure out if you would like to move forward and file a full non-provisional patent or not. A few smaller differences have to do with specific parts of patents such as trade secrets, which will not be released when applying for a provisional patent.
Filing a non-provisional patent in the U.S.
A non-provisional patent is a standard patent that protects an invention within the U.S. for 14-20 years, depending on the type of patent. A lot more detail is required for this application, including a description that would allow another person of ordinary skill to recreate your invention.
Drafting the specification and the claims are what makes creating a non-provisional patent application a challenge. Stronger patent applications have professional lawyers draft the details as well as create patent drawings to give a better idea of the invention.
Filing for an international patent
Under the Patent Cooperation Treaty (PCT), an international agreement with several countries, an inventor may file a single international patent application in order to seek protection for an invention across any country that has signed the agreement. The World Intellectual Property Organization has a list of every country that has signed this agreement.
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