Patent Law

Guide to Applying for a Patent

Prove your invention is unique and get up to 20 years of protection
By Linda Tancs

Think you're the next great American inventor? Then get yourself a patent, an exclusive right to profit from your bright idea for up to 20 years, granted by the U.S. Patent and Trademark Office (PTO). But first, you need to ask yourself two questions:

1. Does your invention fit into one of the three categories of patentable things? Utility patents cover software, methods of doing business, chemicals and other compositions, apparatus, processes and manufactured goods. Design patents cover all sorts of designs, including the purely ornamental. Plant patents cover plant hybrids and varieties.
2. Can you prove your invention is truly new, useful and not something obvious that anybody could think up? You'll have to supply detailed drawings, specifications and instructions for use to back up your claim.

Action Steps

The best contacts and resources to help you get it done

Know your competition Before committing the time and money required to apply for a patent, search for similar ideas, known as the “prior art,” to ensure that the invention does not infringe earlier patents in the same field of use.

I recommend:  Search for issued patents and pending patents through the PTO database or the European Patent Office's worldwide database. PatentSearchExpress.com conducts worldwide patent searches and also evaluates your invention's patentability.

Write Your Application A patent application consists of invention disclosures, specifications, claims and drawings.

I recommend:  Most inventors employ a patent attorney or a patent agent. An attorney offers one-stop shopping, preparing and prosecuting your patent application, preparing license agreements, and representing you in court. A patent agent can file and see through a patent application but can't go to court or create contracts for you. Find an agent or attorney through the PTO's official list. For a fraction of the price, write your own application running PatentEase software on your PC or use the online services of LegalZoom.

File Your Application Plant patent applications must be mailed but utility and design patent applications can be filed online.

I recommend:  For paper filings, send your application and fee to the Commissioner for Patents, P.O. Box 1450, Alexandria, VA22313. File online using the PTO's EFS system or try the online forms from IP Intellifile. Filing fees can change so keep up-to-date at the PTO site.

Protect yourself while you wait The patent process is very slow – you may have to wait 8 years or more for a decision. In the meantime, use the term 'patent pending' or 'patent applied for' on labels or descriptions for your invention. If the patent ultimately is granted, you can then refer to your 'registered patent' along with the registration number. You can also file for a provisional patent, good for one year, if you have a hot idea you want more time to develop or shop around for investors. Before the year expires, file a formal patent application and you get to hold your earlier filing date.

I recommend:  Apply for a provisional patent online using LegalZoom.

Protect yourself after you're patented Can you afford $250,000 or more to prosecute patent infringers? Patent insurance will protect you. And don't forget to pay your fees to maintain your patent.

I recommend:  Get a patent-protection insurance policy from World Intellectual Property Insurance Services. Mail your patent fee payments to the PTO or pay online. Software from FlexTrac can help you manage payments and other events related to your patent.

Tips & Tactics

Helpful advice for making the most of this Guide

• Don't publicize an invention in any way more than one year prior to filing an application or else you'll lose eligibility for a patent.
• A U.S. patent will not provide protection in other countries. Consider additional country filings as appropriate. See The World Intellectual Property Organization Web site for details.