4. APPLY TO THE U.S. PATENT AND TRADEMARK OFFICE (USPTO)

Up until now, we've been talking about your "invention" as if you're sitting there with a gizmo in your hand and you're just waiting to patent it. That might be the case, but we think it's more likely that you just have an idea for a gizmo, and you want to find out how to patent it before you bother to do any work on it. Smart move. Whether you've completed the invention or not, if you already know exactly how it will work, you can then apply for a provisional patent or a regular patent.

Provisional patent application
Regular patent application

Provisional patent application

A provisional patent application allows you to protect your idea from being stolen while you take it around and gauge the interest of investors and manufacturers. You can also file one of these if you don't have the time or money to do a regular patent application but you are concerned that someone else might come up with the same idea.

Important: You must file a regular patent application within one year of filing the provisional patent application, or they throw out the provisional patent and you're just an average schmuck again.

You must include a detailed description with your provisional patent application that tells exactly how to make and use the invention. And when you file your regular patent application, your description must not contain any new technical information that was not in the description submitted with the provisional patent (no fair changing the product midstream). So you have to know exactly what you're doing before you file either application.

To file a provisional patent application, you must submit the following items to the USPTO:

  1. A cover page.

  2. A detailed description of the invention that explains how to make and use it.

  3. Drawings that show how to make and use the invention (and not crayon drawings, but technical drafter's drawings with exact specifications and measurements).

  4. A $150 fee, unless you wish to send in a declaration that you are a small entity (e.g., a workshop inventor as opposed to Hewlett Packard), which allows you to pay the small entity fee of $75.

To get more information and to download the forms go the USPTO's website. They have specific details that would bore us to tears, so go on over and poke around.

Regular patent application

There are two main parts to the regular patent application: the specification and the claims.

  1. The specification must be a written description of how to make and use the invention in sufficient detail that a reasonably skilled person in the field could reproduce it from the description. If necessary, drawings or diagrams can be attached. These specifications must be absolutely precise; much more precise than the provisional patent application's.

  2. The claims are those aspects of the invention that you claim are new and inventive. Once you get a patent, what it protects will be defined by the wording in the claims, so you must be extremely careful and extremely precise when you write the claims. In your claims, you should include everything that you think is unique to your invention and, more importantly, what you want to have rights to make, use, and sell such that you can exclude others from doing so. This is the hardest part of filing a patent, because you must take great legal care or you might accidentally screw yourself over.

As we said with provisional patent applications, you must go to the USPTO's website and get more information and some forms. They provide extremely detailed, step-by-step explanations of how to complete and submit the applications.

We should mention here that you must be scrupulously honest and candid in your application, meaning you can't choose to omit little inconvenient facts here and there. The USPTO imposes a "duty of candor" on all applicants, which means that if they determine that you held back some relevant information when you were applying, they can flat out deny your patent on that ground, or deny you patent protection in later litigation. No fun. No money.

So what's the difference between a provisional and regular patent application?

  • A provisional patent is much easier to fill out. Your drawings and descriptions don't have to be quite so legally perfect, and you don't have to fill out the claims, which is the trickiest part of a regular patent application.

  • A provisional patent does not really give you a patent. So if someone uses your idea, you have NO recourse. You can't sue or get any money. Until you get a regular patent, all you can do is cry. BUT a provisional patent will protect your patent so that when you do try to get a regular patent, no one can sneak in and take it from you first.

  • You can get a provisional patent just by submitting an application. The USPTO will sit on it for a year until you send in a regular patent application. It's not judged on merits; it's just a place-holder. However, to get a regular patent, your application will be assigned to an examiner who determines whether your invention is patentable or not, so quality will matter.

If the examiner decides to give you a patent, you've got it made! If your application is rejected, all is not lost: there are loads of tedious appeals processes where you can complain and beg. You'll be told how to go through the appeals process on the unhappy day you receive your rejection.