How to Patent a Product: Everything You Need To KnowStartup Law ResourcesIntellectual Property
A U.S. patent is a property right granted by the USPTO to protect you from others making, using, offering for sale, selling or importing your invention.6 min read
Product Patents: What Are They?
A U.S. patent is a property right granted by the U.S. Patent and Trademark Office (PTO) in order to protect an invention. A process, product, or utility patent lasts for 20 years from the date you file your patent application with the PTO, but you’ll need to pay “maintenance fees” to have rights for the full 20-year period. An industrial design patent provides production for 14 years and is used for designs and aesthetic aspects of products. Once this time period expires, the invention becomes public. There is no universal patent office, nor even a European patent office. Therefore, if you wish to have worldwide protection, chances are you will need to file multiple patents in multiple offices.
A patent entitles you to exclude others from making, using, offering for sale, selling or importing your invention. In other words, it is a type of limited monopoly granted by the U.S. government. Once your patent is issued, it is your obligation, not the PTO’s to enforce your patent against infringers. If you fail to enforce your patent, you run the risk of having a court declare your patent “abandoned” and therefore unenforceable.
A patent for a product falls within the “utility patent” category recognized by the PTO: “any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof.”
How Do I Get a Product Patent?
It’s not enough to just have an idea for a product – you can’t patent an idea. To obtain a patent for your product, you’ll need to take the following steps, and be rather strict about it:
1. Document Your Idea
You’ll need proof of when you came up with your invention, so use a notebook with numbered pages that can’t be removed to write down all of your ideas about your invention. You’ll want to include a comprehensive set of ideas about:
what your invention does
how it works
how it would be manufactured
any modifications you make to the invention as you develop your idea
how you might market it and
who might buy it or license it.
There are places that sell special notebooks called “inventor’s journals” for such purposes, but any notebook with non-removable numbered pages will work. Be sure to put dates on the pages and have two people sign them as a witness.
The goal is to secure priority of your invention, so most countries operate on a ‘first-to-file’ basis, rather than a first-to-invent. Your product will not be protected until the patent is actually granted. Informing others about potential liability if they infringe upon your invention is crucial for their own liability - therefore, if you have applied for the patent but it has not been granted, it is prudent to clearly mark the invention as ‘patent pending,’ in order to alert competitors of their potential liability.
2. Research Your Idea
You need to figure out if your invention is actually workable and profitable from a legal and business standpoint. Start by searching the patent records at www.uspto.gov to see if your invention (or something very similar) has already been patented. Then do a “prior art” search on the Internet to figure out if a non-patented version of your invention already exists. If you see something like your invention or an essential part of it in the patent records or out in the world, you likely won’t be able to patent it without making fairly significant alterations to your own invention While researching, you may also want to contact the nearest Patent and Trademark Depository Library (PTDL) for additional help.
Next, do some market research to figure out if there’s a potential market for your invention, like a similar (but inferior) product being sold somewhere. If you choose a crowded marketplace, it will make the process more difficult. You’ll also need to get a sense for whether your invention could be manufactured and how much you might need to charge for it. This will involve market research, and even thinking about the blueprint of a business plan.
3. Build a Prototype
To avoid later problems in the patent application process you’ll need to build a working model of your invention - a prototype. This will also help you figure out the flaws in your original ideas and give you time to fix them. Initial sketches in your journal can be turned into more technical drawings, mockups, and finally a 3D model. You may be able do some of this yourself, but you will probably need to hire a product designer or engineer.
4. File the Patent with the PTO
If your prototype works, it’s time to hire a reputable patent lawyer who is registered with the PTO. Although it is technically possible to represent yourself in the patent application process, an experienced patent lawyer will know how to draft a “strong” patent to maximize the scope of your exclusive rights and put you in the best position if you need to battle infringements later.
Choose a patent lawyer whose technical background aligns with your invention – patent lawyers typically specialize in chemical, electrical, or mechanical engineering. Lawyers will also be able to tell you which kind of patent you should apply for.
Utility patents will protect products and processes, design patents cover ornamental designs and plant patents cover new kinds of plants.
Sometimes inventions can be multi-faceted, so it’s helpful to consult a lawyer if you have questions on what category your invention falls into.
Most lawyers will advise filing a “provisional” patent application (PPA) to put the PTO on notice of the date you claim your invention while you and your lawyer work out the details of your “nonprovisional” patent application. The PPA gives you a year from the filing date to submit your nonprovisional patent application. Only the nonprovisional application (sometimes called a regular patent application) is examined by a patent examiner at the PTO.
Provisional patents are typically less complicated and expensive. All that is required is a filing fee, dependent upon the size of your company. Currently, the fees are $65 for micro-entities, $130 for small entities, $260 for large companies, but fees are subject to change as listed on the fee schedule of the USTPO website. Also required is a detailed description of the invention, an explanation on how to make and how to use it, and an informal drawing. If a nonprovisional patent application is not filed within a year after filing the provisional patent, you can no longer claim the provisional patent filing date. Essentially, if you file your nonprovisional application outside one year, the date you file said application determines the priority of your invention, rather than the provisional date.
Make sure your patent has the all the requirements, including a written description of your idea, drawings to illustrate it, the list of claims that actually define any novel technical features, and an abstract containing a summation of the content.
Because patents are potentially very valuable and last a long time, the standards for obtaining one are high. Your patent lawyer will need to demonstrate to the PTO through the claims in the application that your invention is “useful”, “novel” and “non-obvious,” as those terms have been interpreted in thousands of patent cases. The patent examiner will provide feedback to your lawyer during the application process – typically reducing the scope of the claims – and your lawyer will respond to the examiner’s arguments - and so on. The process can be lengthy - expect, on average, the total process to take around 3 years. If your application is rejected, you can appeal the decision, but this will take another year. The process can be somewhat onerous, but worth it in the end if you are successful.
A successful patent will be awarded on a product which is ‘novel’ (or not known to the public), must involve an inventive step (so, not obvious to a person skilled in that art or industry), and it should be industrially viable - it can’t just be a wish list - it must actually work.
Why Are Product Patents Important?
Product patents are long-term government-granted monopolies that give you exclusive rights to monetize your invention. They can be quite valuable if you can figure out how to generate sales and royalty revenue (and profits) from your patented product.
Reasons to Consider Not Patenting Your Product
The primary concern of most inventors is cost. Depending on the complexity of the invention, obtaining a patent can cost tens of thousands of dollars in search and opinion fees; professional fees paid to engineers, designers and lawyers; and filing fees charged by the PTO. If you decide to try to apply for the patent yourself without using a patent attorney or professionally prepared patent drawings, it is still likely to cost approximately $1,500 in fees to file and obtain a patent from the USPTO. Sometimes it is possible to obtain investors in your product to underwrite the development and patenting process.
Obtaining a patent can sometimes delay the introduction and marketing of the product, especially if you're trying to do the patent application yourself. If your invention may have a limited shelf life or is likely to be quickly superseded by something better in the marketplace, you may not have the luxury of waiting.
Guidelines and laws are constantly changing. It can be a challenge to stay up-to-date on the latest standards and processes for filing a patent. A good lawyer will be able to take over this burden.