The Patent Application Process

The Patent Application Process

by Joe Runge, Esq., March 2015

Your invention is yours. You made it. You are and will always be the expert on how your invention works, what needs it addresses and its place in your technical field. That does not mean you are the expert on the patent process for the patent that protects your invention.

There are some parts of a patent application that you have to do yourself. There are some that you should get help with. To understand how to get a patent, you need to know the difference.

Patent Search

A patent search is a great example of a part of the patent application process you can do yourself. Let’s say you invent a new method for streaming video services to optimize video to connected devices. Your new algorithm detects the processor speed of the connected device in order to quickly configure the video resolution.

You likely have a detailed understanding of how other video streaming services optimize video for streaming. You may have even read some patents that teach other methods of optimizing video. It is much easier to search for something when you know what you are looking for.

One way to capitalize on that knowledge is to conduct your own patent search. Good search terms will find the patents you already know about—and maybe even a few that you did not. Don’t just save the patents you find, save the search terms too. Those search terms will help whoever writes your patent conduct additional searches and build the language of the patent filing as well.

Choosing the Type of Patent Application to File

Your new method to optimize streaming video may be an interesting technological achievement, but how do you use it to make money? A patent attorney will likely have no idea. The inventor is almost always going to know the business of the invention better than a patent attorney. But, your method may lend itself to six different ways of video streaming—which one is the most valuable?

If you have the invention mostly ready, but still have more research to do, one solution is to file a provisional patent application. Unlike a utility patent application (what most people mean when they talk about filing a patent application), a provisional patent application is a placeholder. The applicant has one year to convert the provisional filing into a full utility application. In the year before you convert the provisional application, you can test all six ways of video streaming to find out which ones work and which ones do not.

A benefit of the provisional patent application is that it does not have to have all the formalities and fees of a utility application, so it usually costs a lot less. For your video streaming invention, for example, you would discuss all six ways it can stream video. One thing to keep in mind, when you convert the provisional application to a utility patent application, you cannot add any more—you are limited to no more than what is in the provisional application. You can’t, for example, add a seventh way that you thought of after filing the provisional application.

Suppose it turns out the real utility of your invention is that the processor speed makes it possible to display information about video quality in new ways. This new way of displaying information can be protected separately from your method of video streaming as a design patent. Should you even file a utility patent application at all?

A patent lawyer will know how to protect both the method and the interface, but a lawyer will know a lot less about which one you should protect.

Drafting the Patent Application

Your first job as an inventor is to educate your patent lawyer on how your invention works. One effective way to do so is with the drawings. For your method of optimizing video streaming, for example, you will likely display how the process works in a flow chart. Keep in mind that the first draft of that flow chart is mostly for your lawyer’s benefit.

What a patent lawyer has control over is what goes into the application and how you write it. For example, your lawyer may remove some of the steps in your method and rename several others. She may do so in order to better get around a prior art  reference or to make the invention fall more in line with the kinds of invention that can be patented.

The point is that your lawyer is an expert on how to write the patent and how to file a patent. Your goal as an inventor is to educate the patent lawyer to translate your invention into a format recognizable by patent law and the U.S. Patent Office.

When that relationship goes well, it is not a mere translation of your invention onto the application, but a collaboration. The inventor educates the lawyer on the scope and details of the invention and the lawyer recommends next steps to create the most enforceable and valuable intellectual property.

You are the expert on your invention, but you need something more than an invention: you need a patent. Work with an expert on getting a patent and make sure that both you and your lawyer do what you are best at.

If you're ready to file a patent, LegalZoom can help. A LegalZoom provisional application for patent includes, completion of provisional application for patent, digitizing and color adjustment of your technical drawings, and professional review (optional), which includes drafting one independent claim. File a provisional application for patent online now to get started with the patent process. LegalZoom also offers utility patent and design patent services.