Filing a patent application can seem like a daunting, overwhelming tasks. If you're a small business owner or private inventor you already have your to-do list full. There are several reasons to file an application for patent including attracting investors, protecting a new idea so that others can't copy it, and desire to license and/or sell your method or technology to one or more others.

There are two main issues that factor into whether your method or product could be patentable. First it must be novel or new. It must a new item, article of manufacture, composition, or non-natural hybrid plant, or improvement thereof. It cannot be an abstract idea or law of nature. Beyond being novel, the item or method must also be non-obvious based on the state of the art in the technical area. This can be a trickier issue than novelty. If you are in the business method, software, or artificial intelligence fields there are also additional considerations that require a person with experience in filing those applications to analyze your particular situation.

There are a few considerations when thinking about what type of application to file. An application called a design application covers what an item looks like, not what it is or what it does. A key may not be novel, but a key that looks like a teddy bear may be. The second type of application is a utility application that protects what something is or what it does, and/or a method of using an item. There are also plant applications which protect hybrid plant varieties.

There are several considerations on timing of filing. If you are in a hot technology area, you should file as soon as you have a clear idea of what your product is and what it does. Even if you just have half of an idea it may be advisable to file a provisional application to ensure you have a date secured with the patent office. If there is new data then you can always file a second or more provisional applications and claim priority to each of those. A provisional application is a vehicle for holding a date for one year. You must file a regular utility application within a year of filing a provisional application to proceed with the application process. Provisional applications are not available for design applications. Provisional applications are not reviewed and are secret unless you file a regular application so can give a company time to do market research or refine an idea. They also do not require a particular format or formal drawings. Pictures, photos, hand drawings, even color drawings or photos are allowed. Just be sure to have at least one claim and a full disclosure in your provisional application.

The first step in discovering if your idea is novel and non-obvious is performing a patent search. Google patent search is a great tool along with the USPTO (United States Patent and Trademark Office) site. You can find links to these and other search sites on my resources page.

The USPTO website offers electronic filing for private inventors and registered agents who are allowed to file applications for other parties. A registered agent and/or patent attorney can help with searches, patentability assessment, creating the application and drawings, and filing on behalf of an inventor or company.

If you have questions, I am always happy to help. Call me at 303 862 0862 or email me at tricia at superior patent group dot com, no spaces, for a free consultation.

Tricia Brzostowicz
Registered Patent Agent
Owner, Superior Patent Group, LLC

I get a lot of questions about being a registered patent agent and how agents are different from patent attorneys. Here is all you need to know about registered agents and patent attorneys.

A registered patent agent is someone who meets requirements established by the USPTO (US Patent and Trademark Office) to become a registered agent. These requirements include that you have completed masters level course work in a science or engineering field and that you pass a patent bar exam. The patent bar exam is equivalent to the bar exam attorneys take to become registered attorneys, but covers the rules related to patent filing.

A patent attorney would also be (or should be) a registered patent agent. They are attorneys who passed the patent bar exam and became registered agents or vice versa.

Being a registered patent agent allows you to file patent applications for others with the USPTO and prosecute those applications on behalf of the inventors and/or owners of the application. Prosecuting an application means responding to or answering office actions from the patent office. These office actions often are objections to or rejections of claims with reasons why the office feels your patent application should not be granted.

Registered agents are viewed the same as patent attorneys in the eyes of the patent office. That is why hiring a registered patent agent can be a good value for inventors and companies. Often times applicants do not need someone to file a suit or case in a court of law, they need an application written, filed, prosecuted, and hopefully granted by the patent office.

All agents registered with the patent office are listed on their website here.

Still have questions? Comment below or contact me.