10-Step Checklist for Patent Filing and Drafting

Have you discovered that you have been sitting on an invention that is unique, utilitarian and non-obvious? Then, you mustn’t wait to patent it unless you want someone else to profit off your ingenious invention. Now, you can’t possibly fathom the extent of the hassle that precedes a granted patent. Filing a patent application is a complex process with several tasks that have ample scope for systematic errors but absolutely no mercy for them. So, it is of utmost importance that you advance towards the process of patent filing methodically. And what can be more methodical than a comprehensive checklist to make sure that you do not miss out on even the smallest detail! Here is a 10-step checklist for Patent Filing and Drafting:

Figure: Checklist for Patent Filing and Drafting

1. Conduct an exhaustive prior art search

This is the one thing that you should do before investing even a penny or a minute in the patent process. Carry out a meticulous prior art research to make sure that your invention isn’t already known in the art. Go to websites such as USPTO and WIPO, and search for your invention in their patent databases thoroughly. This step can be time-consuming and laborious. However, the result will be fruitful and can save a lot of effort as well as money. You can choose to outsource the prior art search process to an IP service provider where patent experts can get the job done.

2. Hire a patent attorney

Once it is confirmed that your invention can be patented, get yourself the best possible patent attorney. An experienced attorney will help you steer clear of oversights that can cost you your patent. Patent filing involves quite a bit of legal jargon that can be best deciphered by a patent attorney. So, find yourself a skilled attorney to make the patent process smoother.

3. Figure out the type of patent you need

USPTO grants three types of patents –

  • Utility patent for composition of matter, machines and processes
  • Design patent for ornamental features of an object
  • Plant patent for any new variety of plant that can be asexually reproduced

Determine the type of patent you will be applying for as that will affect the process through which you will apply.

4. Work out the filing strategy

Do you want your invention to be legally protected by patent law only in the US or in the whole world? The answer to this question will determine your filing strategy. If you are after an international patent protection, go to the website of the Office of International Patent Cooperation (OIPC) and do the needful.

5. File a provisional patent application

US has a first-to-file patent system such that the law grants patent protection to the one filing the patent first rather than the one coming up with the invention first. So, you must secure a priority date by filing a provisional patent application. This will give you not just a year to work further on your invention but also a priority date, provided you file a non-provisional patent application within a period of 12 months from that date.  

6. Get started with patent drafting

A patent draft requires an intricate description of your invention, your claims concerning the scope and consequences of the invention, an abstract, a background and a summary. Along with all these, the patent draft also requires you to specify the legal scope of the protection you seek. Drafting a patent is not just a technical process but also a complex one. Make sure you enlist your patent attorney and industry experts in this part of the filing process.

7. Become a registered eFiler

Even though it is possible to file a patent application via fax or email, the simplest way to go about it is through the USPTO website. They have a plethora of online filing resources. Read up on those and get registered as an eFiler to make use of them.

8. Review the formal patent application

You can’t possibly do this enough number of times. Given that the smallest error can cost you the patent, review your patent application more than once to spare yourself not just the heartbreak but also precious time and funds. And even if the type of error leaves some scope for amendment, an amended application always reduces the scope of patent protection. So, you must not skip this step. 

9. Prepare to file the patent electronically

Now that you are a registered eFiler, make use of the Electronic Filing System (EFS) of the USPTO to save documents for submission online and to file successive documents. 

10. Initiate your patent filing process

USPTO will assign you one patent examiner. You can facilitate the filing process by being constantly in touch with your patent examiner. Be diligent about attending to any correspondence from the patent office. Also, keep in mind that if your patent attorney applied on your behalf, the USPTO will send any correspondence to them.

USPTO takes two to four years from the filing date to grant a patent. 30-40% of the filed patent applications are rejected after such a considerable time mostly due to some error in patent drafting or lack of prior art research. Businesses spend not only valuable time in quest of a patent but also billions of dollars on the patent process. So, you must leave no stone unturned to make sure that your patent application is enough to overcome all checks and balances, thereby resulting in a granted patent. The 10-step checklist for patent filing and drafting will help you in accomplishing exactly that.

-The Editorial Team

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