Recent changes in U.S. patent laws stemming from the America Invents Act have made the filing process for a patent a much more competitive and challenging process for the average American inventor. Detractors of these changes claim that they stifle innovation and threaten individual inventors to claim and monetize their inventions, while proponents argue that the new patent laws will strengthen patents due to a more extensive review process.
Regardless of the new patent laws, filing for a patent is no simple task and is certainly not to be taken lightly. Inventors can spend hundreds of hours and many sleepless nights to be certain that they are as thorough, accurate, and correct as they could possibly be. For many inventors, however, the process is absolutely worth it.
This past July, the team here at EquityNet was thrilled to learn that we were granted our fourth and fifth crowdfunding patents, so we’ve become familiar with the patent application process. If you have considered filing for a patent, here are five tips on how to get yours approved.
1. Know what can be patented.
Patents don’t protect ideas; rather, they protect inventions that fall into five categories:
Furthermore, a patent must be novel, have utility, and must not be obvious. For an invention to be considered novel, it must never have been made public in any way, even outside the U.S. Also, should you publicly disclose your invention, you must file your application within one year after doing so. For it to have utility, it must physically accomplish something. An invention is considered non-obvious if it would not be obvious to experts who operate in the field you plan for the invention to operate.
2. Search for prior art.
Prior art refers to any publicly available information that could be relevant to a patent’s claim of originality. Prior art can be, but is not limited to, prior patents or applications, news or journal articles, college theses, web pages, or public knowledge of a product. Inventors in the U.S. aren’t required to conduct a search for prior art; however, they do have a duty of disclosure, meaning that they must submit all relevant prior art that they are aware of the United States Patent and Trademark office (USPTO). Failure to do so could render a patent invalid.
Even though you’re not required to conduct your own search for prior art, it’s still important to do so. Patent examiners often conduct their own searches; however, they are often limited due to time constraints and may miss relevant prior art.
The most common reason a patent is deemed invalid is that the inventor submitted little to no relevant prior art to the USPTO. It’s uncommon that an invention does not have any sort of predecessor, especially in software and other tech related industries. If your patent is granted, but you or a patent officer missed any relevant prior art, it could haunt you when you go to enforce your patent against infringers. The infringer’s attorney will likely use that prior art against you.
3. Hire a patent attorney.
There’s no law that requires you to hire a patent attorney when filing for a patent; however, most inventors who opt to go it alone seldom see their patents granted. Patent law is an ever-changing, highly complex field that requires a high degree of skill to navigate, so having someone who is familiar with the landscape is good practice. Sure, there are several online templates available to help structure a patent filing for an inventor without council, but even simple patents, like the one for the common paperclip, had to comply with a myriad of rules and regulations.
A patent attorney will make sure all aspects of your application (abstracts, specifications, drawings, etc.) are complete, clear, and concise and will also suggest other ways to reduce the risk of having your patent rejected. The attorney can review any correspondence you have with the USPTO so you don’t unwittingly make any mistakes that can hurt your patent’s value. This could include making changes to the scope of your claims, which could complicate any infringement rights you would hold should your patent become granted.
4. Consider applying for a provisional patent.
A provisional patent allows you to establish priority and an earlier filing date if your non-provisional patent is granted. In the U.S., you have one year from the filing date of a provisional patent to file for a non-provisional patent. Many inventors file for a provisional patent to protect their inventions prior to public disclosure, or to protect their inventions during development stages. Filing for a provisional patent also rules out any prior art that may arise during the one-year period you have to file for a non-provisional patent. Provisional patent applications are much less formal than filing for a non-provisional patent, and are also much less expensive to file.
A provisional patent application must include the following:
The USPTO does not require that you submit drawings or claims of your invention in a provisional application; however, it is strongly advised to do so as you cannot introduce any drawings essential to the understanding of the invention to the application after the filing date.
5. Be as detailed as possible.
A vague claim description of your invention is not enough to have a patent granted in the eyes of the law, and almost guarantees that you will find prior art that is identical to what you describe. Furthermore, a vague description of your invention can provide someone else an opportunity to file an application that describes what you left out, thereby making your application less valuable. Also, anything you leave out of your application specification cannot be added after you filed, so if you want to add claims about your invention at a later date, you would have to file a new application and would ultimately lose your prior filing date.
Being as detailed as possible also helps you reduce costs when you decide to hire a patent attorney. It will aid greatly in the search for prior art and will give the attorney a solid framework to develop a strategy to best get your patent approved. Since most attorneys charge by the hour, the less research and work they have to do, the more money you save.
Judd Hollas is founder and chief inventor of EquityNet, which has helped entrepreneurs raised over $245 million in equity crowdfunding to date. EquityNet was one of the first Title II crowdfunding platforms for accredited investors and will soon be adding Title III non-accredited investor capabilities to the site. Judd has more than 20 years of experience as an independent technology analyst and investment manager in the private and public domains. He has been featured in The New York Times, Wall Street Journal and Forbes.