Sullivan: Overview of the Patent Process: What Inventors Need to Know

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David M. Sullivan

Inventors are tasked with not only building a better mousetrap, but also protecting their ideas by filing patents. Although the patent process can seem daunting, it can also lead to new innovations.

The first step towards a patent for many inventors is to file a provisional patent application. Although a provisional patent application lasts only one year and cannot itself become a patent, it is a relatively inexpensive way to obtain “patent pending” status. Although costs vary greatly 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 generally files the corresponding non-provisional and foreign patent applications during the 12-month life 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 benefit from the provisional filing date. Obtaining and maintaining an early filing date is important, especially for competing technologies.

In many cases, the cost of converting a well-drafted and thorough provisional patent application to a non-provisional application will cost between $4,000 and $5,000. Since a comparable non-provisional application can cost between $7,000 and $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 non-provisional “conversion” application.

Once the non-provisional application is filed, it usually takes 3-4 years to pass the first round of examination at the United States Patent and Trademark Office. Since the term of a patent is based on the filing date of the non-provisional patent application, it is helpful to go through the patent review process as soon as possible. In most cases, the patent has a term of 20 years from the date of filing of the non-provisional application.

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

Patent laws can be unforgiving when it comes to the speed of a patent filing. In general, the inventor must file a patent application before the invention is described in a printed publication, used in public, offered for 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 12 months of the patent application filing date, it is best to obtain the patent application within the file before taking steps to publicize or market the invention. – in particular if the inventor wishes to obtain patent protection in foreign jurisdictions.

The foregoing should not be construed as legal advice or considered a substitute for it. For specific requests, please contact David M. Sullivan or another licensed attorney.

David M. Sullivan is an associate at Crowe & Dunlevy, crowdedunlevy.com, and chair of the firm’s Intellectual Property Practice Group.

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