How to Patent an Idea

Filing a Provisional Application

Confirm that your invention is patentable. To be patentable, your invention must be something tangible that exists — it can't be a mere untested idea that you had. Beyond that threshold, there are 4 basic standards your invention must meet: Useful: your invention works and is capable of performing its stated purpose. New: your invention isn't in public use, hasn't been previously disclosed in any publication anywhere in the world, and hasn't been patented before. Non-obvious: the difference between your invention and any prior inventions isn't something that would be obvious to a person with ordinary skill in that area of technology. Adequately described: you must describe your invention in your patent application with enough detail that a person with ordinary skill in that area of technology could make it and use it themselves.Warning: You can never get a patent for laws of nature, natural phenomena, or abstract ideas.

Classify your invention using the Manual of Classification (MOC). While a specific classification isn't necessary for a provisional patent application, selecting a classification will help you determine if your invention is patentable. Although provisional patent applications aren't examined, there's no point in going any further if a preliminary search shows that your invention clearly couldn't be patented. You can download a basic guide to the MOC at https://www.uspto.gov/sites/default/files/patents/resources/classification/overview.pdf. It will help you understand how to find the appropriate classes and sub-classes for your invention. Once you have a basic understanding of how the classification system works, go to https://www.uspto.gov/web/patents/classification/selectnumwithtitle.htm and select the class that corresponds to your invention.Tip: Your choice of classification may affect the patentability of your invention. There may be a similar invention patented in one class but not in another.

Conduct a basic patent search. Although you don't have to distinguish your invention from similar inventions that have already been patented (known as prior art) in a provisional application, a basic patent search is still valuable. If your invention has already been patented or disclosed in public by someone else, there's no value in proceeding beyond this point. To start a basic search, go to https://ppubs.uspto.gov/pubwebapp/static/pages/ppubsbasic.html. From there, you can search the USPTO's online database, which includes all patents issued since 1976. If you were applying for a non-provisional patent, it would be better to have an experienced patent attorney conduct this search for you. However, you don't need to disclose prior art for a provisional application. You're just doing this search for your own knowledge to make sure you aren't wasting your time and effort on an invention that isn't patentable.

Complete your provisional application. The USPTO doesn't have a specific form you can use to file a provisional patent application. Rather, you must submit a document that contains the following information: A title for your invention A written description of your invention Drawings of your invention, if necessary to understand how it worksTip: You can find templates online for provisional patent applications that you can adapt to suit your needs. Just do a search for "provisional patent application template" or "provisional patent application sample."

Download and fill out the provisional application cover sheet. All provisional patent applications must be accompanied by a cover sheet, which you can download at https://www.uspto.gov/sites/default/files/documents/sb0016.pdf. The provisional application cover sheet must include the following information: The names of all inventors Residential addresses for all inventors The title of the invention The name and registration number of your patent attorney, if you have one The address for correspondence regarding your application The names of any US government agencies that have a property interest in the application

Determine your application fee. You must pay the application fee when you submit your provisional patent application. As of 2019, the undiscounted fee for a provisional application is $280. This amount is reduced to $140 if you qualify as a small entity or $70 if you qualify as a micro entity. Generally, you qualify as a small entity if you are an individual or small business with fewer than 500 employees or less than $2 million in annual profits. To qualify as a micro entity, you must have a gross income less than 3 times the median household income in the US for the preceding calendar year. You must also generally meet the requirements for small entity status. You cannot qualify as a micro entity, regardless of your income, if you are listed as an inventor on more than 4 patent applications. To find the official US median income, go to https://www.census.gov/topics/income-poverty/data/tables.html and check the table for the applicable calendar year.

Submit your application to the USPTO. When you've completed your application, you can submit it to the USPTO online or you can mail in the paper forms. Include payment of your application fee. If you want to submit your application online, use the EFS-Web, available at https://www.uspto.gov/patents-application-process/file-online. You don't have to register with the USPTO to file your provisional application. However, if you decide to create an account, you'll have access to enhanced features, including the ability to save incomplete applications and submit amendments to applications you've already filed.

Start working on your non-provisional application. Your provisional patent application is active from the date you file your application. However, a provisional application, by itself, doesn't give you any rights to prevent others from making or selling your invention. Rather, it buys you another year to complete and file your non-provisional application. If you don't file your non-provisional application before your provisional application expires, your provisional patent application will be considered abandoned and you won't get the benefit of the earlier filing date. On the other hand, if you file your non-provisional application within a year of the date you filed your provisional application, when your non-provisional application is approved, you can sue for unauthorized use of your invention before you filed your non-provisional application, while you still only had a provisional filing. This is what it means to take advantage of the earlier filing date. With a provisional application, you also have the opportunity to explore the commercial viability of your invention before you incur the expense of a non-provisional application. You can use the phrase "patent pending" in connection to your invention if you want to put the public on notice that you are protected your intellectual property rights.

Completing Your Non-Provisional Application

Consult an experienced patent attorney. Non-provisional patent applications are complicated documents with many technical specifications and formatting requirements. While you could try to do one on your own, you'll save a lot of time if you get your application drawn up by an experienced patent attorney. Go to https://oedci.uspto.gov/OEDCI/practitionerSearchEntry to find a registered patent attorney near you. If you're an independent inventor with limited resources, you may be eligible for free representation. Visit https://www.uspto.gov/patents-getting-started/using-legal-services/pro-bono/patent-pro-bono-program to learn more about the Patent Pro Bono Program. If you don't qualify for free representation, you might also be able to get affordable help at a law school clinic near you. Go to https://www.uspto.gov/learning-and-resources/ip-policy/public-information-about-practitioners/law-school-clinic-1 and scroll the list of participating schools to see if there's one near you. EXPERT TIP Harish Chandran, PhD Harish Chandran, PhD Machine Learning Engineer & PhD in Computer Science, Duke University Harish Chandran is the Engineering Site Lead and Senior Staff Research Engineer at DeepMind, where he leads the engineering efforts to integrate AI research results into Google products. Harish received his PhD in Computer Science from Duke University in 2012. While in graduate school, he worked as a Teaching Assistant, helping undergraduate students learn about algorithms and data structures. He has experience in DNA self-assembly, evolutionary algorithms, computational neuroscience, complexity theory, computer architecture, and super-computing. Harish Chandran, PhD Harish Chandran, PhD Machine Learning Engineer & PhD in Computer Science, Duke University A lawyer will help make sure you can enforce your patent. Anybody can file for a patent, but in order for that patent to have value, it has to be enforceable. That's why it's useful to have a law firm help you file, because you need to be able to win a case against someone who's potentially violating your patent. Otherwise, the patent won't be worth much.

Conduct a more thorough patent search. A prior art search for a non-provisional application doesn't just look at patent records, but at other inventions that may not be patented as well. If there's something that has been disclosed to the public that is similar to your invention, it can preclude your invention from being patented. A complete non-provisional application discloses all relevant prior art and distinguishes your invention from those other inventions that are similar or are designed to solve similar problems. Generally, it's better to let your attorney handle the prior art search. They have experience with classifications and patent terminology and may find prior art that you would miss. Expect the prior art search to take several months. Your attorney will likely maintain an ongoing search while your application is being prepared in case something comes up later.

Fill out your application data sheet. The application data sheet is a summary of the information contained in your application. This sheet must accompany all non-provisional patent applications and must be signed by all inventors. You can download the form at https://www.uspto.gov/patent/forms/important-information-completing-application-data-sheet-ads. Generally, the data sheet includes the names and addresses of all inventors, information about your attorney, and information about your provisional application, if you have one.Tip: If you have one or more non-expired provisional patent applications on file, you must provide the application numbers and filing dates. Otherwise, you won't get the benefit of the earlier filing date if your non-provisional patent application is approved.

Provide a title for your invention. The first page of your non-provisional patent application, also known as the specification, lists the names and residences of each inventor along with the name of the invention. Your invention can have a title of up to 500 characters. Make the title of your invention as short and specific as you possibly can. Your attorney will help you come up with the best title that represents the purpose of the invention and how it works.

Draft the background and summary of your invention. The background and summary section is a bit like telling the story. As the inventor, you are the hero of this story. Describe the problem you observed and the invention you created to solve that problem. Start at the beginning, with the initial observation of the problem and the inspiration you had that led you to your invention. Then, explain the steps you took to create, test, and perfect your invention. Along the way, you can discuss the prior art you discovered in your search and describe how none of those things solved the problem the way your invention does. This helps distinguish your invention from that prior art. Describe people who are likely to use your invention and how their lives will be improved by it.

Include a detailed description of your invention. Use clear, descriptive terms to describe the process of making and using your invention. Your description should be detailed enough that someone with average skill in the field could make and use your invention without having to go through a lot of trial and error. Specifically distinguish your invention from any related inventions that came before it or any other inventions used within your invention. For example, if your invention includes a wheel, you would need to be able to distinguish your invention from the wheel and explain how your invention is not simply an obvious improvement on the wheel. If your invention is an improvement on another invention, keep your description solely to the improvement itself, not to the original invention (other than the description that might be necessary to explain how your improvement works).

List your distinct claims that identify your innovation. The claims are the heart of your patent application. Each claim lists a distinct thing that you are identifying as new, original, and patentable. Taken together, your claims define the scope of protection your patent provides. You can have independent claims, numbered consecutively with Arabic numerals. Each independent claim may have dependent claims that refer back to it. Dependent claims typically act to limit the independent claim to which they refer. The general format involves labeling the thing you're claiming, followed by the word "comprising." After that, you list the parts of the thing, then explain how they are connected. For example, if you were claiming a sandwich, you might write: "A sandwich comprising: (a) 2 pieces of bread, and (b) peanut butter, and (c) jelly, wherein the peanut butter is spread on one piece of bread and the jelly is spread on the other, and then they are smashed together."

Supplement your description with drawings of the invention. The drawings are often the most important part of your specification. The USPTO has strict requirements for drawings, which are typically created by a professional draftsman. Your attorney likely has draftsmen they use on a regular basis. The drawings depict each of the distinct claims you make about your invention and must show every feature of your invention that you lay out in the claims. Most specifications contain many drawings showing many different angles or portions of the invention. Make sure you have all the drawings that you need for the patent examiner to understand the invention. While you can amend your application later on, you won't be able to add new drawings because these are considered "new matter."

Sign your oath or declaration. The oath or declaration is a statement that you are the original inventor of the invention for which you've filed a patent application. An oath must be signed in the presence of a notary public. A declaration, on the other hand, does not have to be notarized. You can download the declaration form at https://www.uspto.gov/sites/default/files/documents/aia0001.pdf. If you want to use the oath form, go to https://www.uspto.gov/sites/default/files/documents/aia0008.pdf. If you don't understand English, include a version of the oath form in your native language. The USPTO provides translated versions of the form in 10 different languages, including Chinese, Dutch, French, German, Italian, Japanese, Korean, Russian, Swedish, and Spanish.

Calculate your application fees using the fee schedule. When you submit a non-provisional patent application, you must pay the basic filing fee, search fee, and examination fee. There may be additional fees depending on the length of your application and the number of claims you make. For example, if you qualify as a small entity, you would pay a basic filing fee of $150, a search fee of $330, and an examination fee of $380, for a total of $860.

File your completed application with the USPTO. You can file your application online using EFS-Web, through US mail delivery, or by hand-delivering it to the USPTO office in Alexandria, VA. However, if you choose the mail or hand-delivery option, you must pay an additional $400 non-electronic filing fee ($200 for small and micro entities). If you have an attorney, they likely will file your application electronically for you. EFS-Web allows you to check the status of your application, respond to USPTO office actions, and file amendments to your application.

Working with Your Patent Examiner

Wait to receive an office action. If your application is accepted and determined to be complete, it will be assigned to a patent examiner for examination. Because patent examiners examine applications in the order in which they've been filed, and because a single examination can take months (if not years, depending on the complexity of the application), it may be more than a year before you first hear from the patent examiner. This is known as your first office action. If you want to get an estimate of how long it will take for you to receive your first office action, go to https://www.uspto.gov/learning-and-resources/statistics/first-office-action-estimator and provide the necessary information.Tip: Typically, your first office action will be adverse — even if you have an experienced attorney. Don't take this personally or think that your attorney didn't do their job. This is just how patent examinations work.

Reply to the first action with a specific request for reconsideration. You (or your attorney) will receive a written notice listing the reasons for any adverse action, requirements of the USPTO, and objections by the examiner. If you disagree with any of these, you can request reconsideration of your application. The notice includes a deadline for your reply. The examiner may reject some or all of your claims. If you're okay with a more restricted patent, you may choose to go forward without the claims the examiner disallowed. If you disagree with the examiner, you must show how the specific claims are patentable.Tip: You can request a meeting with the patent examiner to discuss the office action. However, you're still responsible for getting your written reply in by the deadline.

Make amendments to your application if required by your examiner. If you can make amendments that would overcome the examiner's objections or fulfill requirements the examiner did not believe you had met, you are generally free to do so. In your written reply to the examiner, explain how the amendments you made took care of the concerns they listed. When making amendments to your application, you are not allowed to add "new matter" to the application. For example, you can't add new drawings that explain how your invention works, even if those new drawings would overcome the examiner's objections.

Continue until your patent is issued or the rejection made final. Typically, the examiner's second action is final. The examiner's notice will let you know whether your patent has been allowed or rejected. If the examiner makes the rejection of your patent final, you can appeal to the Patent Trial and Appeal Board. You can also appeal claims that have been twice rejected, even if your patent was allowed without those claims.

Pay the fee for the issuance of your patent. If the patent examiner allows your patent, they will send a notice either to you or to your attorney. This notice includes the amount you must pay for your patent to be issued. You must pay this fee within 3 months of the date on the notice or the USPTO will regard your application as abandoned and you'll have to start all over again. As of 2019, the issue fee for utility patents is $1,000 ($500 for small entities, $250 for micro entities).

Wait to receive your patent. Once your patent is granted, the USPTO will mail the certificate to you or to your attorney. On the day the patent is granted, it becomes searchable to the public in the USPTO's patent database. For your patent to stay active, you must pay maintenance fees at 3.5, 7.5, and 11.5 years from the date the patent is granted. There is a 6-month grace period for paying your maintenance fees, after which your patent may expire. As of 2019, a small entity would pay $800 after 3.5 years, $1,800 after 7.5 years, and $3,700 after 11.5 years. To find out how much you owe in maintenance fees check the most recent fee schedule on the USPTO website.