How To Protect an Invention with Patents

The suggested invention protection strategy for most inventions is to: 1) conduct a Prior Art Search, and 2) determine whether to file a Design Patent Application (for the unique appearance of your invention). Alternatively, file a Utility Patent Application (for the function of your invention). For a utility invention, you can file a Provisional Patent Application or a Full (Non-Provisional) Patent Application.

These Steps do not need to be completed in this Order. Nor are all of these steps required to protect your invention. A patent attorney can help you identify the strategy that is right for you.

The prior art search is a good place to start an invention protection strategy. The prior art or patent search can help find if anything else already exists that is the same or even similar to your invention. You cannot patent something that already exists or obvious variations. Prior art is anything that has already been published. Prior art is also anything available at any time before filing your patent application with the US Patent Office. This includes items for sale (e.g., Amazon or other retailers). Also, it includes social media posts (e.g., Facebook and YouTube), other literature (e.g., industry websites, newsletters, and publications), and both issued patents and published patent applications.

Is it possible to do your own prior art search? Yes, and there may be times when you want to start with your own prior art search. For example, if you find something that is the same or very similar to your invention, you may not want to pay for a professional search. But even if you find something you think may preclude patenting your invention, it is wise to discuss the results with a registered patent attorney. A patent attorney can analyze your invention in view of the prior art. They can discuss ways you might be able to proceed with the patent application process.

TIP: Be sure to search using the free US Patent Office database. Other databases are also available, but may not include all issued patents and published patent applications.

File a Design Patent Application

Filing a design patent application can be an important part of an invention protection strategy. A design patent application protects the unique ornamental appearance of a functional device. You may want to consider filing a design patent application instead of a utility patent application, or in addition to a utility patent application. For example, you cannot apply for a utility patent for a lamp because the function is already known (unless you have a new way of making the lamp work). But you can apply for a design patent application for the way the lamp looks.

Design patent applications are often overlooked because they are limited in protection. That is, a design patent protects one design as shown in the application (and perhaps minor modifications). A design patent will not prevent others from coming up with their own design for the same thing (e.g., a different design for a lamp). However, it can be used to thwart copy-cats, and this can be an important element of your strategy.

TIP: A design patent application cannot be filed based on a provisional patent application. If your invention can be protected with both a utility (or provisional) and a design patent application, you will want to file both at the same time.

File a Provisional Patent Application

If the invention protection strategy including a utility patent, consider a provisional patent application. Filing a provisional patent application gets a filing date with the US Patent Office. This gives you one (1) year of Patent Pending Status for your invention. Although a provisional patent application automatically goes abandoned 1 year after filing, you MUST file a full utility patent application within one year. If you file a full utility patent application before the provisional patent application expires, and claim priority to the provisional application filing date, then the utility application will have the same filing date as the provisional patent application. It will be as though the utility patent application was filed on the same date that the provisional application was filed (at least for what was disclosed in the provisional application).

The US Patent Office never examines a provisional patent application (you will need to file a utility patent application). Nor can a provisional patent application ever issue as a patent. Instead, a provisional patent application is a disclosure document. It only provides a filing date for the material that is actually disclosed. Be sure to disclose all aspects of your invention in the provisional patent application.

Invention Protection Strategy – Provisional Patent Application

Filing a provisional patent application may be a good option if you have a limited budget. It costs less than a utility patent application to prepare and file. Additionally, if you need to file quickly, it has no formal requirements and therefore can be prepared much faster than a full utility patent application. It is also useful if you want to protect the invention with patent pending status while you test and further develop the invention. You can file multiple provisional patent applications within the one-year time for filing a full utility application. This may also be useful if you want to protect the invention with patent pending status while you test whether there is a market for your invention.

TIP: You can include a description in your provisional patent application, of aspects you might want to add later, and even modifications and additional features competitors might want to offer, even if you have not implemented those features yet or never plan to – thus effectively making it all yours.

File a Utility Patent Application

The utility patent application is a regular patent application that will be examined by the US Patent Office. If the Examiner finds the claims allowable, the patent may issue. I say “may” issue, because a government issue fee has to be paid before the patent will go to issue.

What Is Your Invention Protection Strategy?

You are not required to follow any particular order as part of an invention protection strategy. While the above sets forth some of the options, you may want to change the order. You might also choose to not pursue one or more of these options based on your goals and budget. For example, it may be important to get Patent Pending status right away. You may want to skip the prior art search or delay the prior art search. This could be after filing a provisional patent application but before filing a full utility patent application. For example, if you have a very limited budget, you may want to file a design patent application instead of a provisional or utility patent application.

There are many factors to consider when choosing a strategy that is appropriate for your particular situation. Discuss your questions and concerns with a registered patent attorney. This will help you understand which options are best suited to protecting your particular invention.