How Do Inventors Go To Market? (Part 4) From Patentability Opinion To Patent Application

Second, you know what your patent claims will be and therefore have advanced your knowledge of the materials and manufacturing processes that must be involved in creating your product. That knowledge enables you to save time and money on development research.

And your attorney's discussion of how broad or narrow your claims are can (and arguably should) determine your marketing strategy. The narrower your claims are the more you will need to make a deep, wide splash with your product before the knockoffs get on the market, because it may be easier for those blame idea thieves to get around your patent, but at least you will have the timing on your side.

In fact a good patentability search and opinion will essentially write your non-provisional patent application. Your attorney will just have to rewrite his findings in the technical language and form required by the patent office and she will work with a patent artist to create your official patent drawings. While the non-provisional patent application will cost anywhere from $5000 to $25,000, depending on the field and complexity of the invention, a patent award should create much greater value to your product. Get familiar with what the non-provisional patent application entails: see A Guide to Filing a Non-Provisional (Utility) Patent Application.

Caveat: I am strongly in favor of having a patentability search and opinion done by an expert patent attorney; however, no patentability search is perfect. No matter how thorough your searcher may be, he might miss something that another searcher (hopefully not the Patent Office's) will catch. Just be aware of this when you make your decision to apply for a full patent.

Once you give your patent attorney the green light, as well as the other green stuff, for the non-provisional patent application, she will draft an application for you, you'll review and discuss it with her, she'll make changes, and with the drawings, numerable filing papers, and fees (you will have to pay those too - see Patent Fees) she'll submit the formal application to the USPTO. Except for your filing receipt, you are not likely to hear from the Patent Office for several months after you file unless you apply for the new Petition To Make Special or Petition for Accelerated Examination.

If either of these petitions are allowed, the Patent Office will give you a final determination on your patent within one year of your electronic submission. You will have to submit all discovered prior art with your application, a requirement not specified in a regular non-provisional patent application. (See the Guidelines for Applicants.)

Not knowing anyone who has experience with the accelerated patent examination process, I wonder if the Patent Office will be less adversarial than is standard. If you take the traditional route, for example, the first "office action" is often a denial. (I'm just giving you a heads up....)

In the usual rejection scenario, your patent attorney will have three months to prepare a written response to the office action. Sometimes, he will consult with the patent examiner to ascertain if certain specific changes would overcome the examiners objections. (This is a pretty helpful move.)

Then, with your participation and review, he will make whatever substantive or technical changes are necessary to fix the issues raised by the office action, or will offer a strong defense for your original case. From now until your final action by the Patent Office, your attorney will "prosecute" or argue your patent. Each round will cost you, the amount depending on what's entailed and your attorney charges. Get those approximate charges up front. (see Find The Right Patent Attorney For You! )

Usually within one or two office actions, your patent attorney will have a good idea of where the Patent Office stands. When the patent examiner is satisfied with your amendments, you will receive a Notice of Publication, letting you know when the text of your patent will be made available in the USPTO Official Gazette "for opposition." If a member of the public has information concerning why the patent should not be granted, he brings that information to the attention of the Patent Office for investigation.

If you receive a Notice of Allowance, celebrate!!! It means that you have passed public scrutiny and will receive a patent on one or more of your claims (if you pay your fees). In non-accelerated time, it takes about 18 to 24 months from your application to receive your award. Your patent will eventually be published in the USPTO Official Register and you will receive an officially stamped copy of your "baby" from the Patent Office. It's a pretty impressive document.

Ah, but you know the road is not always greener with patent protection. Come back next week when we'll talk about ways to exploit your ideas without patent protection.

P.S. Let us know your experience (so far) if you are participating in the USPTO new Accelerated Examination program!

SEE ALSO: How Do Inventors Go To Market - Part 5 -  Become An Entrepreneur


Myra Per-Lee Featured To read other columns on the Invention Process, please visit My Blog Page . The series starts with the bottom article!
Jan 26, 2007
by Alan (not verified)

Thanks for a great article.

Thanks for a great article.

Jan 26, 2007
by Myra Per-Lee

To Alan

Thank you!

Myra Per-Lee Featured Blogger

Jan 27, 2007
by Roger Brown
Roger Brown's picture

Great Info

Hi Myra,

Once again you have given a concise and informative article. I look forward to your next part in this series. Keep up the great work!

Jan 27, 2007
by Myra Per-Lee

Hi Roger!

Roger.. It's great to hear from you! I haven't forgotten a possible joint venture! Thank you for your very kind words!


Myra Per-LeeFeatured


Feb 9, 2007
by Bobby Amore (not verified)

great insite!


That should really help answer the questions about patents. It's amazing how much info you can find today on the web when you put some work into research. Thanks again for the information.

Bobby Amore

Feb 14, 2007
by bobby Amore (not verified)

it's the process that seperates inventors

Thanks for those kind words. I read your piece on "how to come up with great product ideas." It seemed like I was reading my story on how I started.

You mentioned how you solved a problem in your everyday life and created the sock. It's something we do everyday that makes it our idea playground. I solve problems like you because I looked at expensive prescription glasses and notice that people misplace them and ask myself the question. Who finds these glasses and can they return the glasses. I had a draw of glasses I found on the streets on NYC and thought about how to return them. I came up with a product called EYE-D .

Like you found while setting up your demo booth when the sales person told you she had that idea. I always tell people that it takes 100 steps to getting invention to the market and most people stop at step 3 and real inventors take it to 100.

Any time you start something you must finish it and what's the worst that could happen is that you know more about the subject then you did before!

Keep up the good work!!

bobby Amore