How to Start Your Utility Patent Application Process in 4 Steps

The process for applying for a patent is known as patent prosecution.  Here are some things you should do before starting the application process.

Step One: Document the invention process.

While you can use electronic records as inventor’s notebooks, the golden standard is still a bound notebook with consecutively numbered pages.  You use this inventor’s notebook to detail when you envisioned your invention and when you started constructing it.  

This is important because inventor’s notebooks, along with corroborating evidence, have been central in proving who was first to invent. Even with the first-to-file system, inventor notebooks are still important to show derivation. 

A typical lab notebook will include such items as:

  • a description of the invention;
  • testing and results;
  • prior art research; and
  • drawings of the invention.

After each entry you make in the notebook, be sure to insert the date you made the entry and sign it.  Entries should be chronological, and made as soon as you complete each step of the invention process.  

Separate print-outs, photos and other documents should be permanently pasted into the notebook.  You should also write a caption describing what the document is, along with dating and signing it.

Additionally, be sure to have a trusted witness sign each entry you make in the notebook.  Again, this is helpful if someone brings suit.  Though you only need one witness, it’s preferable to have at least two just in case one is unavailable to testify later at trial if that’s necessary.  The witness should be knowledgeable about the invention’s field because he/she must testify that he/she understands what’s written in the notebook.  

It is recommended that witnesses also sign a confidentiality agreement prior to reading your notebook.  This may help protect the trade secrets in your notebook as long as you meet the statutory requirements, which were discussed previously, to prove the notebook contains trade secrets.

In the Congressional Record dated March 3, 2011, Congress said inventors can file a provisional patent application to bypass some of the issues associated with the inventor’s notebook. This application has the same function as the inventor’s notebook because it requires an invention’s description, including what the invention is and how it works. It is also a dated government document so one cannot easily tamper with it. Furthermore, this does away with expensive discovery if a claim is later challenged.

Step Two: Search for prior art

A patent search can be beneficial at various stages of the inventing process. An initial patent search at the time of conception and formulation of an idea helps you assess the depth and extent others took in solving similar problems. Moreover, for brainstorming, the patent search can help refine your idea and stimulate further inventive thinking. Furthermore, a comprehensive awareness of the prior art can aid you when you draft claims.  You’ll learn how to write claims with the appropriate scope so you can obtain patents that are as broad as possible, yet defensible.

To search for prior art, sometimes known as a patentability search, you can use a professional patent researcher , or you can go directly to the USPTO office in Alexandria, the USPTO’s patent and trademark depository libraries nationwide, or visit online databases. Click to learn how to do patent search yourself the right way

Note:

Though you may believe your search to be good, whether you do it yourself or hire a professional, it is probably not as in depth as what a patent examiner will do.  For example, that’s because:

  • you won’t find pending applications that aren’t published,
  • there’s erroneous patent classification in the databases that can’t be discovered via keyword searches,
  • recently issued patents won’t be in the system immediately, or
  • U.S. patent searches won’t bring up foreign patents.

Step Three: How to deal with multiple inventors

When you have co-inventors or joint inventors, all of you share patent ownership.  To qualify as such, each inventor must’ve contributed to an idea that became a part of at least one of the invention’s claims.  You must have a concept of the invention as a complete and definite whole, as well.  

You are not a co-inventor if you come late to the project and the others have already formed a complete, though scientifically uncertain, concept of the invention.  If that’s the case, you only help clear up the scientific uncertainty.

  1. how to prove joint inventors

   Each inventor should have his/her own inventor’s notebook.  You don’t need to all work together, at the same time or at the same place, however.

  1. legal issues 

a. patent application fails to list an inventor

If the patent applicant does not list an inventor intentionally, the USPTO may strike down any resulting patent rights or limit what rights the applicant can enforce.  

b. dividing revenue

It is up to the inventors to decide how to split any joint revenue.  There are some basic rules, however.  

  • If trying to assign all patent rights somewhere, all joint owners must agree on the assignment.  Hence, one inventor can’t assign all patent rights by him/herself.
  • Any one inventor can use, make or sell the invention without permission from the others or paying them.
  1. how to protect inventors

a. Consultant’s Agreement

If someone is just assisting the inventor, he/she should sign a Consultant’s Agreement.  This agreement means the person assigns all of his/her rights to the invention to the inventor.  

b. Joint Ownership Agreement (JOA)

A JOA can prevent problems resulting from shared finances, such as who owns which financial shares to the invention.  A JOA typically:

  • Prevents one inventor from exploiting the patent without the others’ consent.  Though a majority of the inventors can act if all of them cannot reach a unanimous agreement;
  • Includes a method for resolving disputes;
  • Includes details about how to divide any revenue, which is usually proportional to expenses incurred by each inventor; and
  • Guides the course of action when one inventor wants to manufacture and sell the invention, including how to divide royalties.

Step Four:  How to deal with employers.

If inventing is part of your job, then you may be obligated to transfer your invention rights to your employer.  To determine if this is your situation, look at whether:

  • You signed an employment agreement prior to the invention.  Sometimes this is known as a preinvention agreement.  The agreement usually contains a provision in which you surrendered your invention rights.  This can include inventions you create in your spare time or at home so read this carefully;
  • You were hired or employed specifically to invent.  Under U.S. Supreme Court precedent, your employer doesn’t even need to have you sign a separate agreement for this; 
  • Your employer acquired shop right, which is a nontransferable, limited patent right to use the invention for his/her own use and for business purposes only.  To claim this, you must’ve used your employer’s resources, such as time or supplies, to create the invention; or
  • You work for a college or university, and you’ve granted the school rights to all inventions you make when you use its resources.  

 

  1. what your employer may require

If you are associated with an employer, he/she may require you to divulge all of your inventions so he/she will know what’s worth patenting or assigning.  Your employer may also have you sign a power of attorney so he/she can file a patent without your help or if you leave the company.  Furthermore, your employer may request that you testify or keep good records of your invention process even after you leave.

 

  1. what you may get in return

In return for your invention, an employer may reward you via a salary bonus, he/she may set up a subsidiary entity that is partially owned by you so you can also gain from your invention, or your employer might give you a certain percentage of your invention’s royalties.

 

  1. if your employer isn’t interested

If you’ve told your employer about your invention and he/she isn’t interested in it, you can apply for a release.  A release is a document that has the employer return the invention back to you.