Safeguarding Your Intellectual Property With a US Patent

What Is a US Patent?

A US patent is an intellectual property right issued by the United States government that provides legal protection for inventions. The United States Patent and Trademark Office (USPTO) defines intellectual property (IP) as “creative works or ideas embodied in a form that can be shared or enable others to recreate, emulate, or manufacture them.”

There are four types of IP:

• Patents
• Trademarks
• Copyrights
• Trade Secrets

While a patent is a form of IP itself, it is also a form of protection against infringement. US patents provide the owner with the right to prevent third parties from making, using, offering for sale, or selling a patented invention in the US or importing a patented invention into the US. Importantly, patents allow the owner to seek legal action in the case of infringement.

Is a Patent Appropriate for Your Situation?

Prior to starting the patent application process, it is important to ensure that you are pursuing the appropriate form of IP. The USPTO’s ’IP Identifier’ tool can be useful to confirm whether patent protection is right for your needs.

Once you’ve determined to proceed with the patent application process, it is necessary to identify which patent type applies to your invention. The USPTO offers three patent types, which cover distinctive elements of invention: utility patents, design patents, and plant patents.

• Utility patents are the most common type of patent. Utility patents protect new or improved and useful processes, machines, articles of manufacture, or compositions of matter.
• Design patents protect new, original, and ornamental designs for an article of manufacture.
• Plant patents protect distinct and new varieties of plants.

Utility and plant patents can be valid for up to 20 years, while design patents are only valid for up to 15 years.

Pre-Application Considerations

Due Diligence

Once you’ve identified the appropriate patent type, you should consider whether to conduct due diligence to attempt to determine if the invention you are seeking to protect has already been patented. For instance, a prospective patent applicant may query previous public disclosures, including patents and publications, to see if the invention has already been disclosed. The Patent and Trademark Resource Center (PTRC) is a useful resource for beginners or those without professional assistance. While there is no legal requirement to perform due diligence before filing a patent application, performing searches can save you significant time and money. Although this research can be done by non-professionals, it is highly recommended that the services of a registered patent attorney be enlisted.  Once a patent application is received, the USPTO examiner assigned to review your application will conduct a thorough search of his or her own.

Enlisting Professional Assistance

Patent applications can be prepared and submitted with or without professional assistance. Because the patent application process requires knowledge of patent law and USPTO procedures in addition to technical knowledge of the invention, it is typically recommended that applicants enlist the services of a patent attorney or agent. Those who choose to apply for a patent without professional assistance are referred to as ‘pro se’ applicants. For inventors who cannot afford to enlist professional assistance, pro bono services may be available through the USPTO Law School Clinic Program or Patent Pro Bono Program.

International Protection

Patents are territorial rights. US patents are only enforceable within the boundaries of the US. Inventors who wish to seek IP protection beyond the US can apply for protection via the Patent Cooperation Treaty (PCT), an international patent law treaty that provides a unified procedure for filing patent applications in over 150 nations. This treaty makes it possible to seek protection simultaneously in several countries by first filing a PCT or ‘international’ patent application. Following submission of a PCT application, you would then still need to pursue rights in each individual country per their laws and regulations.

Cost

In addition to any costs incurred through the patent application preparation process, there will be a number of fees required to successfully submit your patent application, including but not limited to filing, search, and examination fees. These fees can vary depending on the type of patent application that you submit. The USPTO Fee Schedule provides a comprehensive list of the application fees you can anticipate.

The Patent Application

Preparing and Submitting Your Application

The contents of your patent application will depend in part on which of the three patents you’ve decided to apply for. The USPTO’s Patent Application Guides outline the legal requirements for filing by patent type.

In addition to determining which patent type is best for you, you will also need to decide whether you would like to file a provisional or nonprovisional application:

• Provisional Application: A provisional application is a cost-effective way to establish a filing date for your invention that can be claimed in a subsequent nonprovisional application. After filing a provisional application, you will have 12 months from the filing date to file your nonprovisional application. Provisional applications cannot be filed for design inventions, are not examined, and do not lead to patents by themselves.
• Nonprovisional Application: A nonprovisional application will be examined and can lead to a patent if all requirements are met. Nonprovisional applications must be submitted in a standardized format along with all the required documentation, forms, and fees.

Once you have compiled all the necessary documentation and are ready to submit your application, you will need to do so through the USPTO Patent Center.

Pre-prosecution

Once your application has been received by the USPTO, it will undergo an initial review to ensure all necessary elements are present. If your application is incomplete, you will receive a notice that outlines what content is missing or what is needed to correct the errors. The Manual of Patent Examining Procedure (MPEP) § 506 provides more information on what deems an application complete.

Note that if your application is incomplete and returned to you, there will be a deadline for returning the application. If the application is not corrected by the stated deadline, the application will be abandoned.

Once a non-provisional application is deemed complete it is then sent to a patent examiner for review. This examiner will determine patentability.

The Application Review Process

The length of the application review process will vary as applications are prioritized and assigned by the USPTO office using its internal methodology. Depending on the circumstances, it can take years for a patent to be examined and granted. The Patents Data Visualization Center is a useful tool for gauging average processing times for several key milestones in the application process.

Application Prosecution

Patent applications are reviewed at a designated USPTO technology center (TC). Each oversees particular fields of technology. The TC your application is sent to will include staff who specialize in the broad and specific subject areas that are most relevant to your application. The examination includes a thorough search to ensure your proposed invention is, in fact, patentable and that your application is compliant with all legal requirements.

Following review, typically an ‘office action’ will be sent to your designated patent attorney/agent (or you personally in the case of a ‘pro se’ application). If your application is deemed not to have met all requirements necessary to grant the patent, you must provide a response requesting reconsideration in writing. This response is often a detailed rebuttal prepared by your representative  that responds to each and every objection and rejection listed in the office action. Note that there will be a deadline given for responding to the office action.

In due course, your response will be reviewed by the examiner and a subsequent action will be rendered. If the examiner is unpersuaded by your arguments in favor of patentability, the examiner may send further office actions. If  an office action is labeled as ‘final’ there will be an opportunity to respond, however, further restrictions will apply. These will be outlined in the office action.

Receiving Your Patent

In the event an application is approved, a ‘Notice of Allowance and Fee(s) Due’ will be sent to your representative. All fees outlined in the notice will need to be satisfied within three months in order to receive your patent.

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[Editors’ Note: To learn more about this and related topics, you may want to attend the following on-demand webinars (which you can view at your leisure, and each includes a comprehensive customer PowerPoint about the topic):

1. Intellectual Property 101 / Leveraging & Protecting Trade Secrets in the 21st Century
2. Corporate Risk Management / Corporate Risk Management Basics
3. Intellectual Property 101/ Copyrights, Patents, and Trademarks…Oh My!

This article was originally published on March 19, 2025.]

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