1. Utility Patents
2. Characteristics of Inventions
3. Searching Prior Art
4. Preparing to File

Why patent an invention? Taking this step legally prohibits others from making, using, selling, or distributing the invention without your authorization. Once you receive a patent, the rights to use the invention can be bought, licensed, and sold just like any other asset. For this reason, intellectual property is a valuable investment for many businesses.

Utility Patents

Although several types of patents exist, most awarded patents are utility patents. These protect rights to:

  • New matter compositions, such as a prescription drug.
  • Machines.
  • Manufactured items.
  • Steps, methods, and processes.

If your creation doesn't fit into one of these four categories, it likely does not qualify for a utility patent and is still in the idea stage.

The filing fee for a patent is $75 for individual inventors and $300 for larger businesses and organizations. Independent inventors may be able to file for free thanks to an income-based program established by the 2011 America Invents Act.

Characteristics of Inventions

Inventions must be concrete, not abstract. They must have real-world utility. For example, if you have created a math formula, it cannot be considered an invention unless it has a critical part in an application or process.

Natural discoveries, such as new animal and plant species, are also not inventions. Just finding something isn't enough; you would have to then modify or incorporate it into a patentable invention.

Inventions must be limited and defined in scope. For example, if you invent a new compound that treats acne and you think it might also treat heart disease, only the first use can be patented if you have not done scientific research on the second claim.

Searching Prior Art

One of the most important steps in determining whether an invention is patentable is a search of the prior art or previous inventions in the field in question. Patents must be non-obvious and novel, which means they are different than any invention that has been made in the past. Something that has been previously described in a patent application or publication cannot be patented. Non-obvious means that a person with typical skill in the associated industry would not easily be able to come up with the invention.

Publications in your industry, patents issued, and patent applications are all considered prior art. If you find your creation described in these documents, it is not novel and thus cannot be patented. This is even true if the entire invention is described over several documents but not synthesized into one document.

It's best to examine prior art before investing money in the patent process. If you do find that a similar invention exists, you can take one of the following routes:

  • Challenge the prior art by arguing that it is outside your field or substantially different than your invention.
  • Narrow the scope of your own invention to differentiate it from prior art.
  • Expand your invention to include additional elements that make it distinct.
  • Accept that your current invention is not novel and shift focus to more promising ideas.

You can search for prior art on the database maintained by the U.S. Patent and Trademark Office (USPTO). You can also hire a patent attorney to conduct a prior art search on your behalf.

Preparing to File

If you find that your invention does not already exist in prior art, you may be able to qualify for patent protection. The next step is to build a prototype of your invention so you can test its functionality and make necessary changes. It should be as close to final as possible before you apply since you cannot change any aspects of the invention as submitted on the application.

Conduct market research to determine whether a need exists for your product. If you don't have enough customers, your invention will be unprofitable. Even if the potential market is sizable, make sure that it doesn't cost more to produce your invention than the price you can command.

If you have a marketable invention, consider whether a patent is the best route for protection. A product doesn't have to have a patent to be sold publicly. Depending on the specific invention and situation, a trademark or copyright may be more appropriate and less expensive.

If you need help with patenting an invention, 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, Menlo Ventures, and Airbnb.