BY DAVID A. BOAG | BOAG LAW, PLLC 

So, you’re ready to patent your invention. You already know you must act quickly to hold onto your rights. But then what?

This guide will help you maximize your chances of filing a useful, grantable patent application with the United States Patent and Trade Office (USPTO) while saving as much money as possible throughout the process.

Define Your Goal

Why are you hoping to patent your invention? The reasons may seem obvious. You probably already know that intellectual property can be among your company’s most valuable assets. But given the costs associated with filing, it is helpful to think the decision through before you leap into it.

Most companies will not file a patent application for every single new process, product, or design. Instead, they will determine an overall IP strategy in consultation with a patent attorney to be sure they are looking at where a patent fits with the company’s plans. This will save up-front costs as well as defense costs later on for patents that may not be as strategically or commercially valuable.

There are a few common reasons for filing a patent application:

  • Eliminating competition and stopping competitors from stealing your concept
  • Giving you the freedom to demonstrate and promote your product without fear of infringement.
  • Establishing your product as unique and innovative within your market; letting customers know you’ve found a new way of tackling their problem and meeting their needs.
  • Generating income streams via licensing or selling the invention to others.

Regardless of your goal in patenting your invention, you should be aware of some restrictions on what can be patented – and the timeframe you have to work with to register your patent claim.

Ace Your Timing

When it comes to patent application timing, there are no grey areas.

Rule 1: Whoever files first gets the patent, known as the First Inventor to File (FITF) rule. If someone else files an application on even a similar invention first, that application could stand in the way of your patent dreams.

Rule 2: Even if nobody else beats you to the punch, you don’t have forever to stake your claim. In the US, you have just one year from your first public use, sale, or public availability of your invention. After that, you are out of luck.

Still not sure whether you need or want a patent? In that case, you can avoid the expense and commitment of a full patent application with a provisional application. This stops the clock and gives you one year to decide if you want to submit a full application.

However, there are some significant drawbacks to provisional applications, including, most significantly, the fact that a provisional application never “turns into” a full patent. So at some point, if you decide that a patent is the way to go, you will need to file a full application. But if you need time to consider your options without fear of competition, this is one safe way to do it.

HIRE AN ATTORNEY

While it may be tempting to save money by drafting your patent application yourself (known as pro se applications), this is one area where you should not try to cut costs. Pro se patent applications have an abandonment rate much higher than attorney-filed applications and that’s often because of a lack of familiarity with PTO requirements and formalities.

This is one main reason that while the USPTO offers some support and resources for pro se applicants, they recommend using a registered patent attorney wherever possible.

While a skilled attorney will represent a cost to your business, they will also help you save money by navigating the system, conducting skilled research, and offering you a range of options to minimize your costs while maximizing your chances of success. Investing in a skilled professional to guide your patent application will help you acquire a valuable asset that will pay off for years to come.

For more information about patents and IP, visit us at www.boagip.com or schedule a no cost Welcome Call here.