How to Patent a Product

By Benjamin Hanrahan, Esq.

Steps to patent a product provided by a patent attorney:

1. Hire an experienced patent attorney.
2. Determine whether you should consider a design patent, a utility patent, or both.
3. Work with your patent attorney to conduct a patentability search.
4. File your application with the USPTO.
5. Respond to Office Actions by set deadlines.

Hire an Experienced Patent Attorney

As an inventor, you’ve likely invested a significant amount of your own money into developing your product, and at this early stage, the chances are you have not seen any profits, yet.  It is understandable for entrepreneurs in your position to cut costs and stick to a budget, and you might even be considering managing the process to file a patent application on your own.  It’s true that you can file a patent application without the help of an attorney, but it is not recommended.

While your DIY spirit has helped you to invent your new product, it may not be the best choice when it comes to pursuing a patent.  Intellectual property law is difficult to maneuver, and learning as you go can be incredibly daunting and time-consuming.  Rather than taking time away from product development to devote to filing your patent application, partner with an experienced patent attorney that can conduct a search, file your application, and even respond to important Office Actions.  This will not only decrease your to-do list, but it will also increase your likelihood of approval, as well!

Determine Which Type of Patent Application(s) to Pursue

Before you begin the patent process, you may first need to determine which type of patent to pursue, i.e., a design patent and/or a utility patent. Design patents protect the non-functional, ornamental shape of a product, or in other words, how a product looks. An example of this might be the unique design of a running shoe. The design or shape of the shoe will not affect the performance of the shoe, but simply the aesthetics. You should consider a design patent if you are concerned with competitors trying to copy the appearance of your invention. Design patents are typically easier to obtain than utility patents, and their protections last fifteen years from the date of the patent grant.

While a design patent protects how your product looks, a utility patent will protect how it works.  For example, the inventor of a lightweight, durable sole for a running shoe that allows the runner to go longer distances, for example, should file a utility patent application.  If granted, a utility patent will generally last twenty years from the earliest priority date, although there are other considerations such as patent term adjustments and extensions that can impact the duration.

Depending on the content of your invention, you may consider filing one or both types of patent applications to protect your product in different ways.

Conduct a Patentability Search

It is not uncommon for an inventor to try to save some money by skipping the patent search and moving straight toward filing an application.  Unfortunately, this could be a costly mistake.  A patent will only be issued on your product if you have invented something new and non-obvious.  Although patent searches can never be considered exhaustive or guaranteed, they are an important step in an effort to determine whether your product or some portion of your product can qualify for a patent application.  In particular, the results of a patent search will often include similar inventions or products that we can use to focus the patent application on certain features of your invention.

Partnering with an experienced patent attorney is essential to conducting a reliable patentability search and developing a strategy to provide the best opportunity for a successful patent application.  Foregoing a patent search is often a mistake that ends up costing more money in the end.

File Your Application with the USPTO

Now that you have had a patentability search conducted, and you know whether you want to proceed with a design application or a utility application, the next step is to have your patent attorney begin preparing that application for filing with the U.S. Patent & Trademark Office.

If you have decided to pursue a utility application, there are two options, at least initially – a provisional application or non-provisional application.  Provisional applications are often considered placeholder applications in that they will be assigned a filing date and will allow you to use the “patent pending” language, however, they will not issue as a patent without subsequently filing a non-provisional application.   More specifically, a provisional application will automatically expire exactly one year from its filing date without ever being examined by the USPTO.  In order to continue the patent process, and have your application examined for patentability, you must file a non-provisional application before that expiration date.

Provisional applications are often used to obtain a quicker filing date or when an inventor is continuing to develop the invention but wants to obtain “patent pending” status as early as possible.  In other words, in some cases, a provisional application may be used to allow an inventor to enter the queue with a priority date as he or she continues to fine-tune the product.

Unlike a provisional application, however, a non-provisional application will be reviewed by an examiner at the USTPO to determine whether the invention is patentable.

Due to the detailed nature required for either provisional or non-provisional patent applications, it is always best to work with an attorney throughout the entire process.

Respond to USPTO Office Actions

As your patent application moves through the patent process at the USPTO, you will likely receive Office Actions or communications from the USPTO that require a timely response.  There is a strong likelihood that you will receive at least one Office Action stating that your patent application has been rejected – do not be overly alarmed.  In fact, the USPTO reports that nearly 80-90 percent of first-time patent applications are rejected.  If you receive a rejection, work with your patent attorney to determine the best course of action to take.  Regardless of what the Office Action states, it is important that you respond in a timely manner.  Failing to respond to an Office Action by the deadline could result in the abandonment of your patent application.

Obtaining a Patent for Your Product

Whether you are still developing your product or you feel it is market-ready, begin the process to patent your invention now.  First, partner with an experienced patent attorney that will guide you through the detailed legal process.  Decide what type of patent may be available to protect your product, for example, a design patent, a utility patent, or both.  Then, conduct a search in an effort to determine whether the invention or some portion of it may be available for a patent application.  You can then file an application with the USPTO.  Finally, be sure to respond to Office Actions in a timely manner as they are issued in your case.  Contact a patent attorney to begin the process to protect your invention today.

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Benjamin Hanrahan, Esq.

Benjamin Hanrahan, Esq. is a Registered Patent attorney, Board Certified in Intellectual Property Law by the Florida Bar, and recognized by Super Lawyers.