The Lay of the US Patent Land: From application to expiration (Part 1 of 2)

Photo credit: Pavel Novak.

For many inventors, engineers, and emerging technology companies, condensing a flash of genius into a new invention or engineering a solution to a problem is the easiest, most familiar step in the patenting process. The climb up the US Patent Mountain, as it were, can be a long, treacherous one. Or it can be a quick sprint, if you’re willing to pay the Patent Office extra fees. With that in mind, let me be your patent Sherpa, explaining the process and walking you through the general steps.

The patent process extends from before an application is filed until the patent expires. We can think of the patenting process as a mountain climb where the patent issues once we reach the summit. But just like an Everest climb, where most deaths occur on the way down the mountain, more than 50% of issued patents expire before the end of their 20 year term. What does the rest of the journey look like? Read on!

A prior art search: your map up Patent Mountain

First you invent, then we search! A prior art search is an examination of publicly available patents, patent applications, and other information which may be relevant to your invention. Typically, the inventor fills out an information disclosure form which describes the invention and a searcher operates off the information provided.

The objective of the search is to figure out what the lay of the land in your particular area of technology is. We look to see if someone has already invented your invention (sometimes called “anticipation”) and to see if it would have been legally obvious to others in your field to make your invention.

A word of caution, here: something almost always comes up that is vaguely related. We’re not going to be able to patent rocket flight. But we might be able to patent your new monopropellant or fusion-powered turbopump and its uses in rocket flight!

Like some travelers who simply set out on a trek with no particular destination in mind, you too can skip the prior art search and go straight to patent drafting but it leaves you blind until at least a year later when your patent is examined. Just like hiking with a map, having a prior art search in hand is an invaluable tool in later creating a strong, informed patent application which covers your invention and nothing else.

You can do some searching on your own. In fact, it’s probably a great idea to! Many of my clients have been inspired to go down a different development path because of what they’ve found in old patents.

Having a more complete search done and an opinion given by a professional ensures a better understanding of how strong any issued patent may be. The search can be done on a budget of under $2,000, depending on the complexity of the technology. This may go up or down, depending on the scope of the search and the technology involved. The search and opinion can take 2-4 weeks to have performed once the searcher receives information about your invention.

No searcher can guarantee that they have found all the relevant technologies because patent applications do not publish for 18 months from filing. The key here is, where possible, identifying similar technologies so that your application clearly describes how to make and use your invention!

Drafting and filing the patent application: the good, the bad, and the ugly

What drafting patent applications for The Empire might look like.

Patent applications are the most visible portion of the patenting process. They usually represent the single biggest expense for an inventor, are eventually published for all the world to see, and (hopefully) end up as part of an issued patent!

A patent application can be broadly broken into two different parts: the specification and the claims. The specification is essentially a technical paper describing what the invention does, how it does it, and how to make the invention (if not apparent to people in the field). The specification also includes pictures! On the other hand, the claims are essentially a legal document, precisely defining what the inventor considers his invention. Terms in the claims are defined via their usage in the specification and their meanings are parsed very finely by the patent office, patent attorneys, litigators, and technology blogs the world over. In the claims, there are very real, sometimes costly, differences between the words “having”, “comprising”, and “consisting”.

Patents are required to be written so that other people having similar skill in your field can make and use your invention, based on the patent. Notably (consumer electronics press, take note!), this does not mean that laymen have to be able to understand the patent. That would be pretty difficult for some advanced technologies like robotics and medical devices—imagine having to include enough material to teach a high school student enough electrical engineering to build a self-driving car! Rather, much like a technical paper, patents (and patent applications) are written by technically-minded people for a technically-minded audience.

As the inventor, you can draft your own patent application, though this is not recommended. If you have a patent agent/attorney draft your application, they will likely have a preferred way of learning about your invention and drafting the application. Personally, I like to have inventors fill out an information disclosure form and then talk it through with them, if possible. After I draft the application it is reviewed by the inventor and any required changes are made before it is filed.

I can’t speak to all patent practitioners but, depending on how busy things are, it typically takes 2-6 weeks for me to draft a full patent application. Based on the complexity of the technology, a patent application costs between $6,000 and $12,000 (excluding patent office fees, see below). Personally, I prefer to set a flat fee initially, though some clients (and a lot of lawyers) prefer to “roll the dice” with hourly billing.

Click here for the conclusion of “The Lay of the US Patent Land” where we’ll discuss what happens after you file, how long it takes, and the life of a patent after it issues!

Happy creating!