Patent Process Overview: What Inventors Should Know

Inventors, often with entrepreneurial aspirations, are tasked with not only building a better mousetrap, but also protecting their ideas with patent filings. Although the patent process may seem intimidating, it can also be an enjoyable endeavor that leads to further innovation.

The first step to a patent for many individual inventors is filing a provisional patent application.  Although a provisional patent application only lasts a year and cannot itself mature into a patent, it provides a relatively inexpensive way for securing “patent pending” status.  Although costs vary widely depending on the complexity of the invention, many provisional patent applications can be prepared and filed for less than $4,000.

To take advantage of the provisional patent application, the inventor typically files the corresponding non-provisional and foreign patent applications during the 12-month lifespan of the provisional application.  If the corresponding non-provisional patent application claims an invention that was fully disclosed in the provisional application, that patent claim in the non-provisional application should get the benefit of the provisional filing date.  Securing and holding an early filing date is important, particularly for competitive technologies.

In many cases, the cost of converting a well-drafted, thorough provisional patent application into a non-provisional application will cost between $4,000 and $5,000.  Given that the cost of a comparable non-provisional application might cost $7,000 to $9,000 to prepare without a corresponding provisional, it’s easy to see why so many inventors start with a provisional.  The inventor can essentially divide the cost of a non-provisional application into two parts – the provisional and the non-provisional “conversion” application.

Once the non-provisional application has been filed, it typically takes 3-4 years to work through the first round of examination at the United States Patent and Trademark Office.  The examination period can be longer or shorter depending on the backlog at the Patent Office.  Because the term of a patent is based on the filing date of the non-provisional patent application, it’s helpful to get through the patent examination process as quickly as possible.  In most cases, the patent has a term of 20 years from the date the non-provisional application is filed.

Although the words “patent pending” can be used to describe an invention covered by the pending patent application, it’s important to note that most of the rights that are associated with a patent are not available to the inventor until the patent is granted.  Although using the phrase “patent pending” may discourage someone from copying an invention, the inventor can’t actually sue for patent infringement until the patent is actually granted.

The patent laws can be very unforgiving when it comes to the timeliness of a patent filing.  In general, the inventor should get a patent application on file before the invention is described in a printed publication, used in public, placed on sale, or otherwise made available to the public.  Although there may be limited exceptions to these timing requirements for actions taken by the inventor within the 12 months leading up to the date the patent application is filed, it’s better to get the patent application on file before taking any steps to publicize or commercialize the invention – particularly if the inventor is interested in pursuing patent protection in foreign jurisdictions.

Although the patent application process can seem daunting, an experienced patent attorney can provide guidance to simplify and streamline the process.  Conversations with an experienced patent attorney will often lead the inventor to explore new embodiments and variations of the invention.  Good patent attorneys welcome the opportunity to work with talented inventors in a client-attorney relationship that presents a rewarding intellectual challenge to both attorney and inventor.

This article first appeared in The Journal Record on October 7, 2022, and is reproduced with permission from the publisher.


Associated People:

David M. Sullivan