In the understandable excitement and inspirational fire of creation, many inventors rush into the patent process without doing their homework. Unfortunately, their zeal to push forward often comes back to haunt them in the form of longer wait times, higher fees, and more work that could have been avoided with proper planning. The purpose of this article is to steer you clear of these pitfalls and help you patent your new idea as painlessly as possible.
One of the biggest mistakes many inventors make is filing a non-provisional patent right away. A non-provisional patent is “the real patent.” To file for one, you need to fill out a bevy of legal forms, include sketches and drawings of your invention, and pay hefty fees. If your application is approved, you are granted a patent by the United States Patent and Trademark Office.
While many inventors will one day need to do this, few of them need to do it immediately. Instead, there is another equally safe but less expensive way to go: the $ 100 provisional patent application. In a provisional patent application, you do not file a formal patent claim, oath, or any disclosure statements about your invention. But what a provisional patent will do is lock in your application date and give you “patent pending” status.
If you have ever seen “patent pending” on product packaging or commercials, it is because the company in question filed a provisional patent application with the Patent and Trademark Office. It is actually unlawful to use “patent pending” unless you have done this.
What this means in layman’s terms is that you can begin to market your invention and gauge how much interest (if any) there is before deciding to file for a non-provisional patent. In the meantime, you can market your invention with the full rights and protections of a non-provisional patent. If you have ever seen “patent pending” on product packaging or commercials, it is because the company in question filed a provisional patent application with the Patent and Trademark Office. It is actually unlawful to use “patent pending” unless you have done this.
However, this grace period does not last forever. If it did, no one would spend the time or money filing for non-provisional patents. Provisional patents are only effective for 12 months after you file them. At the end of those 12 months you must either file for a non-provisional patent (which costs about $ 400 more) or forfeit all rights to your invention.
If you are smart and work quickly, you can use that 12 month period to hustle your idea and generate interest in it. By the end of that time you should have a very good idea of whether it is worth applying for a non-provisional patent.
When and if you do decide to file a non-provisional patent application, you need to ensure that you file everything you wish for the patent examiner to see. Once your application is filed, there is no way to go back and add more. What is there and only what is there is what the patent examiner will evaluate when deciding to grant you a patent.
To ensure that nothing is missing from your patent application, see our article “How to File Patents.”
It may take as long as 2 or 3 years to hear back from a patent examiner once you file. The first time you do hear back is when the examiner issues what is known as a “First Office Action.” This is when the examiner has told you what in your application they think is patentable and explains what claims of yours are lacking. You (or your attorney) must respond to each and every issue raised by examiner and file your response no later than six months after the First Office Action.
Once the examiner evaluates your response, they will issue a Second Office Action in which they either accept or refute your claims. At this point the examiner has the authority to make this a final verdict, but this is not actually the way it usually works. Your lawyer can continue to work with the examiner on resolving his/her complaints and getting your patent approved.
In closing, the best advice for 90% of inventors is probably to begin by filing a provisional patent application. Unless you are sure that your invention is a slam dunk (and such assurance is rarely justified), it will save you lots of money and give you 12 months to see what the market for your idea is.