Patents and the (new) land of the free Pt. 2

Ladies and gentlemen, last time we spoke about provisional patent applications and described how to enter your invention in to the United States Patent Office so that you can benefit later off of it whilst obtaining a priority filing date. This week we’ll speak about what to do after you’ve filed for your provisional so that you can take your patent and enforce it in the real world.

As a quick review; provisional patent applications are used to hold your invention in the USPTO for one year while you sort out the details and file for a real utility or design patent. You can use this time to expound on how your invention is going to work and go ahead and file the real patent. Now I’d definitely suggest that you hire a patent attorney if at all possible since they’d have industry experience in drafting this document. Yet still, It’d be beneficial to understand how everything works at least on a high level so that you can converse intelligently with your attorney to get the best patent filed.

If I could summarize the nature of patents, I’d boil it down to two things: a description and claims. The description would generally describe everything about your invention including any diagrams and details about how each mechanism works — the meat of your application. It would be as descriptive as possible and expound on every possible permutation and iteration one could think of. After this, the major key points that are the epitome of the patent prosecution and litigations process as a whole — are the claims. Claims narrow or summarize your description — the details of your application in to specific points that are actionable by a litigator when they are enforcing your patent. For example, your patent could describe mechanisms for how to create a red tie but your claims will take all of those details and will bring to surface those things that you want to enforce. Generally speaking, your claims are the public face of the underground details described in your patent body.

While this is a high level explanation, I’d still want you to get into the details of these topics to get a more thorough understanding. You can do this with the book: Patent It Yourself. https://www.amazon.com/gp/product/1413320449/ref=pd_sbs_14_img_1?ie=UTF8&psc=1&refRID=3TVP7DWQE3V01VTRCEHW

This book explains the nature of claims in more detail. With this, you’d be able to iterate with your attorney and draft claims that make sure to detail the essence of your application. What you don’t want is have too narrow of a claim or have your attorney draft claims that don’t really capture what your original idea is. So you’d definitely want to make sure that you stay close to your attorney in the draft process.

Once you have the description and claims done — given that your lawyer has created this, now it’d be time to file the application. The normative fee would be only a few hundred dollars, but to expedite it (which I’d highly suggest) you’d pay a little bit more.

In all, you’d spend about $1,000 to file and expedite your applications and cut the time that it takes to get to review in half. This is something I’d definitely do, especially if you believe that your invention is likely to have benefit in the world sometime soon. But once you get that patent filed you’re good to go (for the most part).

Next they’ll pick up your application out of the queue (depending on your filing date and if you’ve expedited your application) and review it and issue office actions based on any discrepancies that they find. Although, you could definitely be on the individuals whose patent goes right through the system, there’s a chance that you’ll receive an office action. It’s definitely not the end of the line here, since the office action process is actually put in place to help you refine and hone your application so that it can be properly documented and actionable once it is issued.

If do you receive an office action, it will basically ask you to elaborate more and to define/ narrow the specifics of the claims of your application. It would be highly beneficial to work with an attorney on this, but if you’d need to do it yourself — you can check out the details in the book patent it yourself. Another piece of advice is to do your research in the real world once you receive your office action, because it could allow you strengthen your application by preparing it for future litigation (as it is supposed to do).

Now that you have your application sent off and keep diligent in your response to the office actions, hopefully they’ll issue your patent. Success!

Next time, we’ll go in to the economics and details about how patent licensing and litigation works so that you can actually benefit and profit from your invention.

-Marcus