The process for patenting an invention is relatively simple. An inventor files a document, a ‘patent application’, with the patent office that describes an innovative product or process. An ‘examiner’ at the patent office then determines whether or not the invention described in the patent application is ‘new and useful’. If so, the examiner ‘allows’ the patent application and the inventor is ‘granted’ a patent.

The most tortuous path to patenting begins with the filing of a provisional patent application, or simply a ‘provisional’ one. This document is better characterized as a priority document rather than a patent application because the US patent office does nothing more than receive and file the filing. The content of a provisional is not examined for patentability. Instead, the patent office uses the provisional as proof that an inventor was in possession of a certain invention on a specific date.

The costs of preparing and filing a provisional application are usually lower than those of a utility application. Furthermore, a provisional does not commit the inventor to a full-fledged patent process. Therefore, inventors often use a provisional filing as a convenient and cost-effective mechanism to preserve patent rights while publicly disclosing an invention.

Public disclosures of an invention may be necessary to assess market interest, solicit capital from investors, negotiate joint ventures, participate in licensing programs, retain technical expertise to refine a design, etc. A filed provisional application allows an inventor to notify third parties that exclusive rights to an innovative product or process have already been reserved. In addition, many commercially important jurisdictions, such as the European Union, require that an invention be ‘absolute novelty’. Public disclosures of an invention without at least a provisional filing can destroy ‘absolute novelty’ and prevent an inventor from obtaining patent rights in those jurisdictions.

Whether or not a provisional application has been filed, the formal patent process begins with the preparation and filing of a utility application. A utility patent application generally has three sections: (a) drawings, (b) a written specification, and (c) claims. Together, these sections describe the technical characteristics of an invention and define the aspects that are considered patented.

There are two critical points that every inventor must take into account when applying for a utility patent.

First of all, it is the claims and the claims alone that define patent rights. Merely illustrating a design on drawings or describing a process in the written specification is not enough to acquire patent protection. Rather, the claims must expressly define the design or process by identifying essential technical features or ‘limitations’. Generally speaking, a patent claim is a one-sentence description of the invention. A patent claim begins with a ‘preamble’, which sets out the context of the invention, and then a list of features (or limitations) that define the invention. Vague wording of the claim language could lead to a patent not providing the scope of legal protection desired by the inventor.

Second, the patent office prohibits an inventor from adding technical details to a filed patent application. Often the patent office will discover patent documents or other publications that were previously unknown to the inventor. The patent office can rely on these documents to show that the patent application did not reveal an innovation that is sufficiently different from what is already available. The main way to counter the conclusion of the patent office is to point out the technical features that are unique to the described invention. However, those technical characteristics must appear in the application as originally filed. Therefore, an inventor must ensure that a patent application fully describes all important aspects of an invention before filing a patent application with the patent office.

Once filed, the patent office begins an examination process in which the claims in the patent application are compared with the “prior art.” More commonly, prior art includes references to patents, industry publications, and other published works that were available prior to the filing date of the utility application. However, if a provisional application was filed, then the utility application may ‘take precedence’ from the date the provisional application is filed for any matter that is common between the provisional application and the utility application.

Generally speaking, the patent office makes a determination, which is communicated in an ‘office action’, as to whether or not the claims in the utility application are sufficiently different from the prior art. The patent office rejects any claim that it concludes encompasses the ‘teachings’ of the prior art and/or is not sufficiently distinct from the prior art.

In some rare cases, the patent office allows all claims on the first action of the office. In most cases, however, one or more of the claims are rejected. The inventor has the opportunity to respond to the action of the office. In the response, the inventor can present arguments why the patent office’s conclusions are incorrect and also, if necessary, ‘modify’ the claims to clarify technical differences from the prior art. If the patent office finds the answer persuasive, the patent office can ‘permit’ the patent application. Otherwise, the patent office mails a ‘final official action’ and ‘closes’ the prosecution. Options are few at this point. If any claim is allowed, the inventor may accept that claim. However, if claims are not allowed, the inventor generally has three options: (1) withdraw and abandon the patent application, (2) appeal the rejection of the claim(s), or (3) request an examination. continued (RCE).

This exchange of office stocks and office stock responses can consume years. Additionally, patent fees and associated attorney fees could ultimately dwarf those of preparing and filing the actual patent application. Unfortunately, there is no guarantee that the patent office will grant a patent even after an inventor has made the best possible case for an invention. Therefore, the decision to patent an invention should not be taken lightly.

But in cases where an inventor has concluded that seeking patent protection makes good business sense, it’s worth remembering the adage “started well, half done.” Spending time and effort to prepare a technically complete patent application will put an inventor in the best position to prevail in the patent office and obtain a patent.