Have you ever had an idea for an invention, be it in the eye care arena or elsewhere, that you wanted to claim as your own, make available to the marketplace, and benefit financially from? If you answered, “yes,” this article is for you.

Specifically, it discusses the main action steps involved in obtaining a utility patent, or the property right to, “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof,” for a limited term of exclusivity.¹ (The current basic term of a United States utility patent is 20 years from the date of filing the application, with some exclusions. For example, up to a year of priority gained by filing a provisional patent application in advance of a utility application will not shorten the term.)

A caveat: Variations in these action steps may occur depending on invention type, the patent examiner (someone who scrutinizes a patent application to see whether a patent can be granted for the claimed invention), and additional actions by the patent office.

1 Conduct a search

Visit the United States Patent and Trademark Office website at www.uspto.gov , which includes pages on how to search and some search strategies you can use to see whether the invention you seek to patent is likely to be patentable. Additionally, you could hire a patent searcher, or check out the World Intellectual Property Organization (www.wipo.int/pat entscope/en/ ) for help.

Searching the prior art, or “references or documents, which may be used to determine novelty and/or non-obviousness of claimed subject matter in a patent application,”² can save you time and expense, as this search can reveal whether your invention, or something very close to it, already exists.

2 Determine a budget

Seeking patent protection is expensive. Attorney’s fees are variable and can be upwards of $8,000 to prepare and file a U.S. utility patent. Other factors, such as associated government fees, can increase the cost to tens of thousands of dollars. The patent office fee schedule includes filing fees, examination fees, fees for extensions of time to file responses, and petition fees, among others that change from time to time. The fee schedule can be found at bit.ly/OM2308USPTOFeeSchedule .

3 Detail the invention

Describe the invention in as much detail as possible in writing and in drawings or other depictions, such as charts or photographs. Doing so often helps to determine where more research and more detail may be needed to increase the likelihood of obtaining the patent. The more detail you can provide, the more efficiently an appropriate patent application can be prepared.

Of note: A patent application is not simply a form to be filled out. It is an original document that describes the invention in detail and in compliance with the law and the patent rules. The patent statute can be found in section 35 of the US code (35 USC) at bit.ly/OM2308PatentStatute . The patent rules are listed under section 37 of the Code of Federal Regulations (37 CFR). The examination of patent applications is governed by the Manual of Patent Examining Procedure (MPEP), available at bit.ly/OM2308MPEP .

4 Consult a patent attorney

Patent law is complex, often arcane and, thus, may cause you to lose some or all of your patent rights if you fail to comply with it when submitting the patent application and claims.

A patent claim is a word-based description of the invention that has a rather strange syntax and structure. A patent claim might recite “a human-powered conveyance having a frame coupled to two ground engaging wheels, including a first wheel and a second wheel, the first wheel being fixed coplanar with the frame, and the second wheel being rotatable about a substantially vertical axis to deviate from the coplanar with the frame.”

In the context of an issued patent, a claim describes the patented invention and that to which the patentee has a right to exclude others from practicing.

One client I had, a surgeon, successfully filed his own patent application with the help of a friend. While the client and I were eventually able to patent some aspects of the medical device, the potentially valuable item he invented, a method of treating a body organ, was not described in the application at all. As a result, we had no basis on which to claim the method of treatment, so his right to exclude others from using it was lost. This scenario highlights the importance of hiring a patent lawyer to assist you with preparing and filing a patent application. Additionally, you and the patent lawyer should carefully review the draft of the patent application before it is filed to make sure it fully and accurately describes the invention in all its detail.

Along with, or shortly after, the patent application is filed, a variety of supporting documents, including an inventor’s declaration (www.uspto.gov/sites/default/files/documents/aia0001.pdf ), possibly assignments of patent rights to parties other than the inventor, and powers of attorney, must be filed. These items must be reviewed and signed by you as rapidly as possible and returned promptly.

5 Be prepared to wait

It typically takes about 18 months for the patent office to assign a patent application to an examiner, and for that examiner to issue a first Office action. An Office action is a written response to the patent application prepared by the patent examiner. It may cite prior art and provide reasons the examiner has allowed (approved) the applicant’s claims, and/or rejected the claims.

Sometimes, the first Office action can be a Restriction Requirement, in which the examiner asserts that the application includes more than one invention and, thus, requires you to select one for initial examination. For example, if the patent application includes claims directed to an eye treatment device and to a method of treating the eye using the device, the examiner may seek to “restrict out” one from the other. Other times, the first Office action can be “on the merits,” meaning the examiner is considering the patentability of the invention claimed and the compliance of the application with the patent law and rules. The ultimate decision as to patentability can take months or even years, and multiple further Office Actions and responses.

6 Embrace rejection

Rarely, will you receive a Notice of Allowance right off the bat, which indicates the claimed invention is patentable and that the application is in the required condition for allowance. The typical first Office action “on the merits” rejects all the patent claims and informs you that the claims are unpatentable over whatever prior art references that the examiner identified. Don’t let this rejection upset you. Instead, analyze whatever rejections and objections have been made with your patent attorney, and decide how to respond to them. Rejections on the basis of prior art, for example, are generally based on either anticipation or obviousness.

The former is when the examiner asserts that the invention is not novel; that it preexists in prior art. You can respond to anticipation rejections by explaining to the patent examiner the differences between your invention and the cited prior art. Additionally, you can respond to this rejection by amending the patent claim to state limitations not disclosed or suggested by the cited prior art reference.

Usually in an obviousness rejection, the patent examiner cites several prior art references, alleging that a person of ordinary skill in the art (not the inventor) would have taken various teachings from the prior art references and combined them to make the invention before the filing date of the patent application.

In some cases, obviousness rejections can be overcome by arguing that even if the references were combined, they still would not disclose or suggest all the limitations of the claimed invention. “In other cases, an argument can be made that the references teach away from the invention or from one another and, accordingly, a person of ordinary skill in the art would not have combined them as the examiner suggests.”

Many other factors, such as that modifying the primary prior art, as suggested by the examiner, would render it unsuitable for its intended purpose, or so-called secondary indicia of non-obviousness may come into play. Obviousness rejections are complicated, so a more detailed discussion of them goes far beyond the scope of this article.

In addition to rejections based on prior art, sometimes, the examiner will assert that the patent application claims nonpatentable subject matter (i.e., laws of nature, physical phenomena, or abstract ideas). Such rejections can sometimes be overcome by amending the patent claims to recite a more physical structure.

The patent examiner may respond to your amendment by issuing a Notice of Allowance or by issuing a final Office action. If a Notice of Allowance is issued, there will be formal matters (e.g., filing better quality drawings, or filing a summary of a telephone interview that was had with the examiner) to attend to and fees to be paid. But if all the legal requirements are met, ultimately, a patent will be issued. Contrary to its name, a final Office action is not the final word. Rest assured, further opportunities exist to obtain the patent.

Making an idea tangible

Converting an idea to a property right takes time, effort, and perseverance. This article is a condensed discussion of the process of obtaining a utility patent, as space does not allow for a deep dive into the many side steps involved. A patent attorney can assist you with the process. OM

Nothing here should be construed as legal advice. Please consult with a qualified patent attorney to assist you with specific questions.

References

1. The United States Patent and Trademark Office. An agency of the Department of Commerce. 2106 Patent Subject Matter Eligibility [R-10.2019] https://www.uspto.gov/web/offices/pac/mpep/s2106.html . Accessed June 19, 2023.
2. The United States Patent and Trademark Office. Uspto. Understanding prior art and its use in Determining Patentability. Office of Innovation Development. Fenn Mathew. Office of Patent Training. https://www.uspto.gov/sites/default/files/documents/May%20Info%20Chat%20slides%20%28003%29.pdf .

DR. ONDERICK is a partner at DeWitt Law Firm’s Minneapolis office and is a member of the firm’s Intellectual Property Group. He helps clients protect, develop, and manage their patent portfolios, while enforcing their intellectual property rights. Prior to becoming a patent lawyer, he practiced optometry as president and owner of Professional Eye Care, Ltd, in the greater Minneapolis/St. Paul area of Minnesota for nearly 20 years.