Patents: Patent Strategy, Invention Disclosure & Patent Application Process

In my prior posts about patents, I described what they are, how they’re useful, and how to decide whether to file. I also discussed the 3 types of patents, requirements for patenting utility patents, and how long patent protection lasts. Today, I’ll describe patent strategy, invention disclosure process, and patent application process so you can smartly allocate time and resources when preparing to vet inventions and file an application. 

Creating a Patent Strategy

Ideally, for a company that anticipates some R&D in their product development, it will first work with a patent attorney to create a patent strategy, based on budget, product roadmap and anticipated inventions, and the desired use for the granted applications (licensing, sale, litigation). Usually, the strategy will outline the types of inventions that are suited for initial patent filings and subsequent patents for embodiments and related inventions. This will provide leadership and the engineering team with guide posts for thinking about patentability as they work on building the product. 

From there, the company will work with the patent attorney to create an invention disclosure process and communicate it to all employees so they understand the process of disclosing new inventions. Creating and sticking with this process is about educating company leadership and employees and creating a culture of rewarding and discussing innovation, with many companies providing employee bonuses for patent filings or patent grants, or some other recognition. 

The Invention Disclosure Process

The invention disclosure process usually involves filling out an invention disclosure form that asks detailed questions about the invention and prior art. It should be filled out when the invention is fleshed out enough to be described in some detail. You’ll share the completed form with your in-house counsel who will engage with your patent attorney. If you don’t have a Legal Department, you’ll share with your supervisor or your patents outside counsel directly. Your patent attorney will determine whether the invention is developed enough to merit a further discussion. 

If so, your attorney will then have a meeting with you and any other inventors to discuss various embodiments of the invention and understand the prior art and potential for commercialization. If they think the invention fits within the patent strategy of the company and patentability requirements, they will move forward with the patent application process, described below.

Keep in mind that your patent strategy will evolve as your company grows and product evolves, and your attorney can help you adjust it as needed. Similarly, your invention disclosure process may be casual when the company is small, but will likely become more formalized as the company grows and roles and teams become more structured. 

Patent Application Process 

The patent application process follows this general timeline: 

• Freedom to operate: If applicable, your attorney will look through existing patents in your industry and specialty, and determine whether patenting or using your invention may result in infringement of another company’s patents. It will also inform how they write the claims for your patent application. 
• Provisional patent application: Often, attorneys file a provisional patent application because it’s much cheaper than filing a full patent application and is a placeholder in line at the USPTO. Provisionals require less disclosure to the USPTO, thereby buying time for the company to collect all relevant info and continue R&D. Provisionals don’t require any claims and expire after 1 year, so if you want to patent that invention, you’ll need to file a full patent application before that year is up. You should discuss with your patent attorney whether to file provisionals or nonprovisional applications for your inventions. 
• Nonprovisional patent application: A full patent application requires detailed disclosure of the following info: specifications, at least 1 claim, drawings to understand the invention, inventor oath, and a filing fee. Nonprovisionals are more costly for companies as they require considerably more disclosure, drafting, and research.
• Publication: The USPTO requires all nonprovisionsal applications to be published 18 months after the earliest filing date in the US. 
• Examination process & grant: The USPTO will assign a patent examiner in your invention’s technology area (called the “art unit”) to review your application and respond. They will usually respond with an office action within 1 year of your application filing date, either allowing your patent fully or rejecting your application based on certain grounds they describe. Often, a patent application will go through 2 office actions before being granted. For each office action, your attorney will respond with an argument or modify certain aspects of the application to get it granted.
• Maintenance fees post-grant: To keep your patent active for the full patent term, you’ll have to pay maintenance fees at 3 different times during your patent term. Make sure you’ve budgeted for these to avoid early expiration, and speak with your patent attorney to track and discuss whether these patents still work with your current strategy, so you only pay fees on patents you want to keep in your portfolio.