To get a patent approved by the U.S. Patent & Trademark Office (USPTO), you have to do your homework before filing the application, carefully prepare the application, and then file it.
Before you prepare the application: determine if your invention has commercial potential, make sure that it meets the requirements for patentability, and do a thorough patent search. To learn about the requirements for patentability, see Qualifying for a Patent FAQ. To learn about patent searches, see Patent Searching Online.
Once you are confident that your invention is a good candidate for patent approval, you are ready to begin the patent application process.
The Patent Examiner: What to Expect
Each patent application filed with the USPTO goes through a rigorous examination process. The application is assigned to a "patent examiner" who inspects it to make sure that:
- the invention meets the requirements for patentability, and
- the application itself follows the required USPTO format and language.
You and the examiner will exchange letters or phone calls until you reach an agreement about which parts of your invention the patent will cover, if any. This process typically takes between one and three years.
Don't be discouraged by the examiner's rigorous scrutiny of your application. Virtually no patent application, even if filed by a top-notch patent attorney, gets approved on the first go round. To reduce the number of problems, however, you need to carefully prepare your application, dotting your i's and crossing those t's.
The Parts of a Patent Application
The key elements of a patent are:
- the specification
- the claims
- the abstract, and
- the drawings.
The specification, with the help of the drawings, explains how to make and use the invention. The claims define the scope or boundaries of the patent. The application must also include an abstract that summarizes the invention.
The specification is constructed of several elements. Collectively, these elements form a narrative that describes and distinguishes the invention. Every specification must describe the invention so that someone knowledgeable in the field of the invention can make and use it without any further experimenting.
The specification must also disclose the "best mode" of creating and using the invention. If the inventor knows of a better way (or "best mode") to create the invention and fails to disclose it, that failure could result in the loss of patent rights.
The particular parts of the specification include:
Title of the invention. Your title should be brief, but also technically accurate and descriptive.
Background of the invention. You must include the field or subject matter of the invention and a description of all relevant prior inventions. Here's where thorough research pays off. When you refer to earlier inventions, point out specific problems that your invention solves.
Brief summary of the invention. This is an overview of what you claim your invention can do. Show how your invention solves the problems you described in the background section.
Detailed description of the invention. Provide a thorough description of the structure and operation of the invention. It must be complete enough that persons of ordinary skill in the field could follow it to make and use the invention.
These are detailed statements of exactly what your invention covers. Because the scope of your patent rights are based on what you declare in the claims, they are the most important section of the application.
You will also need to include drawings with your application, if they are necessary for showing how the invention works. Some applications (such as for pure chemicals) don't include a drawing, unless a process can be diagrammed by a flowchart.
Your drawings must illustrate every aspect of the invention specified in the claims. The USPTO has strict requirements for both claims and drawings, so be sure to study other patents in your field to become familiar with the format of these sections. All patent applications must include a drawing if the subject matter permits.
Filing Your Application
You can file your application by mail or electronically.
Filing by Mail
To make sure that your documents arrive safely at the USPTO, do the following:
- Make one or two copies of every single page you send.
- Obtain a receipt by attaching a stamped self-addressed postcard to the first page of the documents. The postcard should identify in detail every document you submit. List how many pages and how many items each document type includes -- just saying "drawings" or "claims" won't help if an item is missing later on. Include the application filing date, the title of the invention, and the inventor's name.
The USPTO will stamp the postcard with a receipt date and an application number. Carefully check the returned card to make sure the USPTO received all the documents you sent.
The PTO has implemented an Electronic Filing System using the Internet (EFS-Web) that enables patent applications, amendments, and other documents to be filed electronically. It replaces the former EFS, which was difficult to learn and use.
The EFS-Web represents a considerable improvement though it still requires some time to master, as well as time for conversion of documents to the Portable Data Format (PDF). If you're filing just one application, it will probably be easier and faster for you to mail a paper copy of the application to the PTO.
Keep in mind that EFS-Web also has some practical advantages. Using it, you can:
- file an application anytime and from anywhere that has Internet access
- obtain instant confirmation of receipt of documents by the PTO
- send an application to the PTO without having to go to the Post Office to get an express Mail receipt or having to wait for a postcard receipt, and
- file an application without having to prepare an application transmittal, a fee transmittal, receipt postcard, or check or Credit Card Payment Form (CCPF).
If you are ready to begin the patent application process, get Patent It Yourself , by David Pressman (Nolo). It takes you through the entire patent process, providing scrupulously updated information and clear instructions on how to fill out and file your patent application.