Patenting an Idea

You may be wondering “what do I need to patent an idea?” if you have an invention idea. Patent of an invention with the United States Patent and Trademark Office (USPTO) legally protects an idea. The use value of an invention is the key to patent registration eligibility. Registration of a patent requires explanation of the use of invention for purposes of replication with consent of the owner. Although a blueprint or prototype of the invention is not required for patent registration, inclusion of a detailed description of the invention at time of application is recommended.

Inventors can provide a digital illustration, 3D rendering, or sketch to exhibit the utility of an invention. Without licensed patent protection, there is no guarantee that another inventor or company involved in research and development of similar innovation will not register and capitalize on the same idea. Provisional patent application on file or “patent pending” is the first step to protecting an original invention.

If a team of researchers has been involved in the development and testing of an invention, a confidentiality agreement including non-disclosure agreement (NDA), enables a provisional patent holder to enforce secrecy during the verification process. A confidentiality agreement is useful for protecting exchanged information related to research and development as well, and serves as a preliminary step to effectively outlining the terms and conditions of business contract where transfer or sale of an invention is involved. A unilateral confidentiality agreement binds a single-party to confidential information in negotiation with a potential investor or prospective licensee.

There is No Single Effective Way to Protect an Idea

The difference between a creative idea and an invention is use value or “process” and replicability. Patent is based on design or utility, yet the former must be evidenced to contribute to process rather than mere aesthetic. Unlike patent registration, copyright protects original creative expression by default where a mano (“by the hand”) of the artist has manifest. Federal registration of a copyright with the U.S. Copyright Office (USCO) verifies the authenticity of a creative work in case of an intellectual property lawsuit in response to infringement. Filing fee for copyright with the USCO is $45. Visit the U.S. Copyright website for more information about filing a copyright registration application: www.copyright.gov.

Filing a Patent Without an Attorney

The USPTO recommends that applicants consult with an attorney or patent specialist when filing for a patent. Federal law requires patent examiners at the USPTO to assist individual inventors applying for patents to determine if an invention qualifies for patent. To meet eligibility requirements, inventors must exhibit all aspects of an invention. The following are recommendations to documenting the aspects of an invention:

Keep a Careful Record of Your Invention

Record each step in the invention process. Describe and diagram all features and modifications of the invention, including the originating idea. Prototype of an invention exhibits the concept, and allows an inventor to test the reliability of an invention for replication. Document, sign and date each entry to the process, starting with conception, up to results of testing. Obtain two reliable witnesses to sign off on the process.  

Make Sure Your Invention Qualifies for Patent Protection

Check criteria to patent eligibility. The basic criteria are that an invention works, and is new. USPTO approval is based on strict adherence to rules of eligibility.

Assess the Commercial Potential of Your Invention

The commercial feasibility of an invention may vary according to type. For instance, a utility patent may be integrated as part of an existing business process. For companies, patent application is a significant business decision. Independent inventors may not be entirely aware of the commercial potential of an invention. A professional patent research firm can assist in calculating the commercial potential of an invention. Initial return on investment, an approximate $1,500 in USPTO patent application filing fees, is a business decision that may or may not be worth it.

Do a Thorough Patent Search

Conducting research on existing U.S. and foreign patents relevant to an invention will assist in the authentication of an applicant’s registration request. Review of publications such as scientific and technical journals for similar inventions will further support the research for a patent registration. The Patent and Trademark Depository Library is the federal database of existing patents and trademark registrations.

Prepare and File an Application With the USPTO

File a regular patent application (RPA) or a provisional patent application (PPA) to establish ownership rights to an invention. Provisional patent application (PPA) is not an actual application for the patent, but enables claim of patent pending status during the research and development phase of an invention. PPA is also a fraction of the fee filing cost of a RPA, depending on entity type (($65 micro-entities, $130 small entities and $260 large entities). Both PPA and RPA require a detailed description of the invention, including use value, and an illustration. Filing of an RPA must be done within a year of a PPA filing. Lapse of RPA filing will result in no claim on the PPA filing date.

Visit the USPTO website for more information about filing a patent or trademark registration: www.uspto.gov.

Steps to Follow

A patent prevents copy or sale of an invention without the permission of the patent registrant. It also protects the patent holder from importation of the same invention to the United States. If an idea is original and eligible for patent protection, USPTO PPA or RPA initiates a claim on the original invention.

Invention ideas must be an article of manufacture, composition of matter, machine, process or improvement of any of the mentioned. Abstract ideas, natural phenomenon, or those ideas lacking utility are ineligible for USPTO patent approval. Interestingly, computer software is not considered patentable despite its innate process utility. Most original software applications may however, be registered copyrights. Patented designs tend to be industrial concepts, mapped out in scientific illustration for engineering purposes. Bio-engineered substances and organisms are included in this category of intellectual property.

Determine whether your idea is new, nonobvious and useful.

The three basic criteria to patent qualification is that the invention is:

  1. New
  2. Nonobvious
  3. Offers utility for process or replication

Determine whether you are eligible to file for a patent.

An inventor, or assigned recipient of an invention idea, may apply for patent. In the case where an inventor is deceased, a legal representative (i.e. estate administrator or executor) may apply for patent. A single inventor may apply for patent of an invention conceived and developed as a joint inventor. Investors in invention are not considered joint inventors, and may not apply for patent. USPTO personnel are ineligible for patent application consideration without inheritance or the bequest of an inventor.

Conduct a patent search to ensure that your idea isn't already patented.

Search of “prior art”, previously public disclosures of patent on the USPTO’s Search for Patents Research Page, narrows the search for same or similar inventions that have already been registered.

Get Legal Help

Attorneys practicing patent law specialize in protecting the rights of a patent registrant. Take advantage of legal clinics offering patent law advice before or during the patent application process.  

Investigate Legal Options for Low Income Applicants

Inventors unable to afford a patent attorney, can seek USPTO advice at phone (866) 767-3848, or via email: independentinventor@uspto.gov.

Register for Electronic Filing

Prior to USPTO filing, an inventor must register for a customer number and a digital certificate. To obtain a digital certificate and customer number, complete the CNR Form on the USPTO website. Submit the CNR form to the Electronic Business Center, Fax: (571) 273-0177, or mail: Mail Stop CN, Attn: Commissioner for Patents, PO Box 1450, Alexandria, VA 22313-1450. Once registered an inventor can submit application. Those filing electronically will receive an authorization code, and assigned reference number.

Prepare the Specification Attachment

The Specification Attachment describes type of invention and its purpose in detail; and prior art, if an improvement. The specification attachment includes a statement of the independent claim to the invention, and must not include parentheses and quotation marks.  

Prepare any Invention Drawings

Illustrations of an invention in any form must include all feature relevant to the patent, as recited in the claim.

Include the Oath

An inventor must make a declaration or oath to the USPTO that they are the originator of the idea behind the invention. The declaration must be signed by the inventor in front of a notary public authorized to administer oaths.

Check the Formatting of Your Application Attachments

The USPTO provides that all attachments to a patent application must be in pdf, follow formatting guidelines.

Wait for your Application to be Approved or Rejected

Approved patents require payment of a fee before it is granted. Rejected applications can be appealed. Alternatives to patent are copyright or trademark of the same invention or idea.

Visit the Federal Trade Commission website

The Federal Trade Commission retains information on companies who have been investigated and/or penalized by the Commission for invention patent infringement. Visit the FTC website for more information about patent violations in the marketplace: www.ftc.gov.

Check with the Better Business Bureau

The Better Business Bureau database retains consumer complaints and records of legal actions taken against companies. Investigate an invention promotion firm on the BBB's website. Visit the BBB website for more information about consumer protections from corporations.

Consult your patent attorney

A patent attorney can provide counsel about the legal aspects of patent.

Know your rights

Patent holders working with an invention promotion firm, should be aware of legal issues related to contract duty, and disclosure. The USPTO recommends researching invention promotion firms for:

  • Number of inventions evaluated in the past 5 years, and positive/negative ratings.
  • Number of customers in the last 5 years.
  • Number of customers who profit as result of the promoter's services
  • Number of customers holding license agreements as result of the promoter's services
  • Names and addresses of all invention promotion companies the promoter and its officers have been affiliated with in the past 10 years

Turning Your Invention Ideas Into a Product

If filing a patent with the USPTO is for business purposes, turning an idea into a replicable product for resale may be the next step in the process. Having knowledge of a target market in a preliminary feasibility study prior to patent is ideal. The research and development phase allows for reliability testing of an invention prototype before it is patented. Companies that follow this strategy demonstrate the relevancy of an invention for patent. Licensing a patented invention with a trademark is the key to extrapolating monetary value from the product, model or process. Business inventions should exhibit either 1) utility, or 2) design worthy of replicability and/or distribution for sale.

If you need help with patenting an idea, you can post your legal need on UpCounsel’s marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Stripe, and Twilio.