Getting a Patent – Basic Patentability Requirements
Relevant patentability requirements are novelty, usefulness, and non-obviousness. The exclusive right granted to a patentee in most countries is the right to prevent others, or at least try to prevent others, from commercially making, using, selling, importing or distributing a patented invention without permission. Under the World Trade Organization’s (WTO) Agreement on Trade-Related Aspects of Intellectual Property Rights, patents should be available in WTO member states for any invention, in all fields of technology, and the term of protection available should be a minimum of 20 years. Nevertheless, there are variations on what is patentable subject matter from country to country.
In order for a product to qualify for patent eligibility, it must cover subject matter that the US Congress has defined as patentable. According to USPTO, this means the subject matter should be any “new and useful” process, machine, manufacture or composition of matter.
So before applying for a patent make sure:
- The innovation is useful (called ‘utility’) – This requirement does not relate to whether the new product, process or invention is ‘useful’ in terms of whether or not someone would buy it. Instead, it relates to whether the invention is capable of being made in accordance with the claims and information in the patent.
- The product is “novel”- This means that the subject matter of the patent must not have been publicly disclosed prior to the date of the filing. This requirement is strict. Inventors have been denied patents because the invention was previously disclosed to the public, the invention was made available for use to the public, or the invention was disclosed in a prior patent application.
- The innovation is inventive. This requirement of an inventive step relates to the ‘obviousness’ of the new product, process or invention. If it is ‘obvious’ to a skilled person, it is not patentable.
- The product is “non-obviousness” – The product must not have been disclosed to the public prior to the application for the patent.
From April 2013, there has been a requirement to disclose a specific, substantial and credible use for the invention in the patent specification.
- The innovation is patentable if it is a new product such as toys, appliances, tools, medical devices, pharmaceutical drugs.
- A new process, such as a manufacturing process or an industrial method or process, Software, Business methods, some types of biological materials
NOTE: If you have been selling the product, using the process in your business, or if you have licensed it, this prior use disqualifies it from being patentable.
To make sure the products are novel I do some research and scroll through articles, journals, historical libraries, and art to make sure your product is truly original.
Using the Patent and Trademark Resource Centers – a nationwide network of public, state and academic libraries designated as Patent and Trademark Resource Centers authorized by 35 U.S.C. to:
- Disseminate patent and trademark information
- Support diverse intellectual property needs of the public
- Hire an experienced patent attorney.
- Determine whether you should consider a design patent, a utility patent, or both.
- Conduct a patentability search.
- File your application with the USPTO.
- Respond to Office Actions by set deadlines.
Hire an experienced patent attorney for Patentability check
Partner with an experienced patent attorney that can file your application, respond to important Office Actions, but the most helpful thing you can do is explain the unique features of your product in detail. It also helps to provide context on any existing products (i.e., prior art), and how your product or idea differs from what is already out there. This will not only decrease your to-do list, but it will also increase your likelihood of approval, as well!
Determine Which Type of Patent Application(s) to Pursue
Before you begin the patent process, you will need to first determine which type of patent to pursue, i.e., a design patent and/or a utility patent.
Design patents protect the non-functional, ornamental shape of a product, (that is; how the product looks). E.g the unique design of a running shoe. The design or shape of the shoe will not affect the performance of the shoe, but simply the aesthetics. Consider a design patent if you are concerned with competitors who will copy the appearance of your product. This type of patent is easier to obtain than utility patents, and their protections last fifteen years from the date of the patent grant.
While a design patent protects how your product looks, a utility patent will protect how it works. A utility patent will generally last twenty years from the earliest priority date, although there are other considerations such as patent term adjustments and extensions that can impact the duration.
You may consider filing one or both types of patent applications to protect your product in different ways depending on the content of your invention.
File Your Application with the USPTO
Now that you have had a patentability search conducted, and you know whether you want to proceed with a design application or a utility application, the next step is to have your patent attorney begin preparing that application for filing with the U.S. Patent & Trademark Office.
If you have decided to pursue a utility application, there are two options, at least initially – a provisional application or non-provisional application. Provisional applications are often considered placeholder applications in that they will be assigned a filing date and will allow you to use the “patent pending” language, however, they will not issue as a patent without subsequently filing a non-provisional application. More specifically, a provisional application will automatically expire exactly one year from its filing date without ever being examined by the USPTO. In order to continue the patent process, and have your application examined for patentability, you must file a non-provisional application before that expiration date.
Provisional applications are often used to obtain a quicker filing date or when an inventor is continuing to develop the invention but wants to obtain a “patent pending” status as early as possible. In other words, in some cases, a provisional application may be used to allow an investor to enter the queue with a priority date as he or she continues to fine-tune the product.
Unlike a provisional application, however, a non-provisional application will be reviewed by an examiner at the USTPO to determine whether the invention has patentability potential.
Due to the detailed nature required for either provisional or non-provisional patent applications, it is always best to work with an attorney throughout the entire process.
Respond to USPTO Office Actions
As your patent application moves through the patent process at the USPTO, you will likely receive Office Actions or communications from the USPTO that require a timely response. There is a strong likelihood that you will receive at least one Office Action stating that your patent application has been rejected – do not be overly alarmed. In fact, the USPTO reports that nearly 80-90 percent of first-time patent applications are rejected. If you receive a rejection, work with your patent attorney to determine the best course of action to take. Regardless of what the Office Action states, it is important that you respond in a timely manner. Failing to respond to an Office Action by the deadline could result in the abandonment of your patent application.
Is a prototype required for filing a Patentability application?
No, but you need to be able to disclose your invention sufficiently so that others will understand what you’re trying to patent. Generally, an adequate level of information on your invention involves drawings and a detailed written description.