PROCESS

STEP 1: INVENT

The inventing step is the first step in the entire patent process.  If you don’t have an invention, then you don’t have anything to license or a product to sell.

STEP 2; HOW WILL YOU MONETIZE YOUR INVENTION – BUILD AND LAUNCH YOUR PRODUCT, LICENSE THE PATENT RIGHTS, OR BOTH?

Early on during the patent process, you should decide how you will monetize your invention because the strategy to protect your invention will change based on that decision.  In general, you have two ways to monetize your invention:

1. Licensing the patent rights, and
2. Selling the inventive product.

You can pursue either one or both as you go through the patent process.  However, the primary means by which you plan to monetize your invention will dictate the strategy that is right for you to protect your invention

STEP 3: PROTOTYPING AND MANUFACTURING (PROOF OF CONCEPT, ENGINEERING, DRAWINGS, 3D MODELING, MANUFACTURING)

Prototyping your invention is a good idea but not required by the patenting process, but it is a good idea both for the purposes of preparing a patent application and showing proof of concept. Unless the invention is very simple and guaranteed to work, I recommend that inventors go through the prototyping process.

STEP 4: BUSINESS PLAN AND MARKETING

The business plan is an internal document that shows inventors how they will make money on the invention. It also helps you when you pitch the idea to others.  The business plan may include information on how you will market, manufacture and sell the idea, or it may have a list of potential licensees that you want to pitch the idea to.

STEP 5: CONDUCT A NOVELTY SEARCH – INFORMAL SEARCH; HIRING A SEARCH FIRM OR A PATENT ATTORNEY

A novelty search is an optional step in the patent process.  They are sometimes referred to as a patentability search or a patent search.  I prefer to use the term novelty search because it is more descriptive of what you can expect.  It determines the novelty or newness or uniqueness of the idea, not whether it is eligible for patent protection (Section 101) or non-obvious considering the prior art (Section 103).

STEP 6: PREPARE AND FILE A PATENT APPLICATION (FORMS, SPECIFICATION WHICH INCLUDING THE WRITTEN DESCRIPTION AND DRAWINGS)

When you have a patent application prepared for filing with the USPTO, you are getting reading to get patent pending on your invention.  When you file the patent application, you have formally entered the patent process within the USPTO.  The patent application consists of governmental forms, a specification that teaches others how to make and use your invention and the governmental filing fee. The patent forms and the USPTO patent fees can be found at the United States patent and trademark office website. These are the documents you will need to apply for a patent.

STEP 7: MARKET YOUR IDEA

After securing patent pending status, you are now able to market and freely disclose your idea to others. Marketing your idea is also a part of the patent process because for many inventors, the way that the market receives the invention determines whether the additional future expense of examination is justifiable.  Getting to patent pending is one of the high points in the patent process for inventors. Inventors are warned to keep their invention secret until they receive patent pending status. Inventors often feel relieved that they can now share their idea with their family and friends freely. Remember that this is only a feeling and you have a lot of work ahead of you in terms of building a business, and the patent still needs to be granted.  I want you to have the proper perspective.  Feel good about the patent pending status but be aware of the real work ahead of you.

STEP 8: EXAMINATION OF YOUR PATENT APPLICATION

If your patent application was filed without a prioritized examination request, then you will receive examination on a first-filed, first-served basis. A patent examiner at the USPTO will review your patent application.  Examination will take place about one to three years after filing. If you requested prioritized examination, your patent application at least at this time will be examined in about 4 to 6 months after the filing of your nonprovisional patent application.

STEP 9: ISSUANCE OF YOUR PATENT APPLICATION AND CONTINUATION PRACTICE

When you receive a notice of allowance, you are about to potentially end the patent process at least with respect to the examination of your patent application.  However, you could continue the patent process to broaden up your claims.

You now have a choice to:

1. Pay the issue fee and end the prosecution, or
2. Pay the issue fee, get your patent and file a continuing application.

STEP 10: MAINTENANCE FEES AND PATENT TERMS

The normal term of a patent is 20 years after filing of the earliest-filed nonprovisional patent application.  In a broad sense, you will be in the patent process because you still need to maintain the patent and communicate with the Patent Office.  After your patent is granted, you must pay three maintenance fees, one at 3 ½ years, 7 ½ years and 11 ½ years after the grant date of your patent. Otherwise, your patent will expire before its full term is up for failure to pay these required fee

STEP 11: BUILDING AN INTELLECTUAL PROPERTY PORTFOLIO

For many of my clients, after they find that the patent process has been beneficial to their business, they begin to understand the importance of securing their intellectual property.  This means getting more patents, registering their trademarks and copyrights and also protecting their trade secrets