What is the Patent Process?

Before filing a provisional patent application or a utility patent application at the United States Patent and Trademark Office, our first step is to perform a patent search and do our due diligence.

The patenting process is us giving you legal advice, so we need to make sure that your invention can be protected by a patent.

At Verna Law, we approach patent drafting with a meticulous deep-dive into the invention. This rigorous scrutiny helps us fully comprehend the innovations of our clients and facilitates discussions about the novelty of their creations.

Focusing on Prior Art in the Patent Search

When embarking on the invention process, conducting a patent search is crucial for uncovering prior art. But what exactly constitutes prior art? It’s more expansive than many realize.

Prior art isn’t confined to physical products or commercial availability. It encompasses anything that has been previously described, shown, or utilized in a similar technological manner to your invention. This could range from ancient artifacts like a prehistoric cave painting to ideas that were theorized but proved unworkable. In essence, prior art includes any evidence of technology use, regardless of its practical application or success.

The most straightforward type of prior art is an existing product. However, inventors often err by assuming that if they cannot find a commercial product identical to their invention, it must be original. This overlooks the reality that many concepts are documented or experimented with but never commercialized. Such documentation, wherever it exists, qualifies as prior art.

Legal Foundations of Prior Art

Under 35 U.S.C. §102(a), any patent or published literature by someone else that predates the applicant’s invention is considered prior art. This section underscores that the inventive entities must differ. For instance, if two inventors, X and Y, file a patent, and previously X, along with C, had publicly disclosed the invention, this earlier disclosure counts as prior art against X and Y’s application.

35 U.S.C. §102(b) expands this by including any public disclosure made more than one year before the U.S. filing date by anyone, including the inventor. This “statutory bar” means that no prior art reference falling under this category can be disregarded, compelling the applicant to differentiate their claims if such prior art is cited by an examiner.

An interesting nuance in U.S. patent law is the “grace period” under 35 U.S.C. §102(a), which allows an inventor’s own publication to not be used as prior art, provided a patent application is filed within one year of this publication. This contrasts with laws in many other countries where any public disclosure before filing jeopardizes the patent’s novelty.

35 U.S.C. §102(e) specifically addresses U.S. patents, published U.S. patent applications, and PCT applications that designate the U.S. and are published in English by WIPO. These documents are prior art from their respective U.S. or PCT filing dates.

The Significance of Comprehensive Patent Searches

Conducting thorough patent searches is not just about ensuring an invention is patentable. It’s also about minimizing potential legal challenges and clarifying the path to patent registration. Understanding the full scope of prior art can significantly streamline this process, ensuring inventors are fully informed of the landscape surrounding their inventions.

By recognizing the broad nature of what can constitute prior art, inventors can better navigate the complexities of patent law and increase their chances of securing patent protection.

In short, if a new invention is already disclosed in an issued patent or other medium, then there is a possibility that selling the new invention could bring patent litigation for patent infringement and filing a patent application for the new invention would be futile.  The key of a patent search is to know what key features have been disclosed and what key features are new and novel to this invention and can be patented.

Focusing on Patent Claims

Drafting a patent focuses predominantly on the claims section. While inventors are inclined to detail the invention as it was originally created, it’s crucial to consider variations that hold commercial potential or might be susceptible to imitation. The challenge lies not just in describing the invention precisely but in crafting the description to capture both specific and potential broader implementations.

A patent’s claims focus on the unique elements of the invention. For example, let’s consider a piece of prior art, whether it’s another patent or some document, which might describe elements A, B, and C of an idea. A new and novel invention includes elements A, B, C, and a new element D. The firm’s task now is to determine the uniqueness of element D. This additional component could potentially make an invention patentable, provided it’s not obvious. Taking a classic example from a training course for patent practitioners: initially, pencils were just wooden sticks with lead for writing. Erasers existed separately. The innovation came from combining these existing elements — incorporating the eraser on top of the pencil. By doing so, it created something new from existing components. This simple yet effective modification exemplifies how new configurations can achieve patentability

Design Patent Searches

Generally, we do not perform patent searches before filing a design patent, because what is protected is the new and novel design.

Provisional Patent Application Searches

​Because provisional applications are only placeholders to extend a filing date of a utility patent application, we do not generally perform searches for provisional applications.

What Constitutes Patentability?

For an invention to be patentable, it must be both novel and non-obvious. This means the invention cannot simply be a combination of known ideas but must represent a significant step beyond existing technology. Importantly, patents are not issued for abstract ideas but for tangible applications, like new machines, processes, or compositions.

Key Questions to Uncover Invention Details

To understand an invention thoroughly, we explore various aspects:

• What is the invention’s purpose?
• Are there visuals, such as drawings or photographs?
• Can you describe all components of the invention?
• How is the invention operated?
• What novel features does the invention have?
• What advantages do these features offer?

While some questions may appear repetitive, each one is aimed at elucidating different facets of how the invention operates in practice.

The Pitfall of Marketing Language

Inventors often describe their inventions using marketing jargon. Although this is a natural result of a marketing-focused culture, it’s essential to steer the conversation towards the technical and functional aspects of the invention to ensure it is thoroughly understood.

The Role of Prototypes in the Patent Process

Although not mandatory for filing a patent application, prototypes can provide valuable insights into how an invention works and its potential for reengineering. While creating a prototype can be resource-intensive, it is a worthwhile endeavor if it can be done cost-effectively.

Assessing the Competitive Landscape

Before filing a patent, it’s crucial to understand the existing technological landscape:

• What are the closest competing technologies?
• Who are the key players in this field?
• Has the technology been publicly disclosed, and if so, when?

This information not only informs the patent strategy but also helps identify how the invention can improve upon current solutions.

The Criticality of Timely Patent Applications

A patent must be filed within a year of an invention’s public disclosure. Understanding the timeline of any public disclosure is crucial to navigating the patent process successfully.