Patent Law Attorney Explains How to File A Patent

As with anything in life, there is a right way and a wrong way to do something. Filing a patent is no different. While filing it the right way protects your valuable invention, filing it the wrong way can mean losing its benefits. Our legal expert, a patent lawyer whose practice caters to individuals and small companies, explains the right way to handle patentability searches, prior art improvements, what goes into filing a patent application and what it costs.

Patent Attorney Russ Weinzimmer

Russ Weinzimmer has been practicing patent law for 22 years and his firm operates in all 50 states and internationally. He's personally obtained hundreds of patents for clients during that time and he explained the process to us in a recent interview:

  • Perform a patentability search. The first step in the process is that we do a patentability search. We want to know how close we can get to the invention by searching a comprehensive database of issued US patents and published U.S. patent applications and foreign patent databases including patent documents from all major industrialized nations. We also search Google using what we learned from searching the patent databases.
  • Create a detailed search report. After that, we provide a detailed search report that shows exactly where we searched, how we searched, what we found, what we did not find and provide copies of the most relevant references for the client’s review.
  • Consult about findings / Create action plan. We provide an in-depth consultation about those search results, so the client can understand how broadly his or her invention can be protected in light of those search results. That’s because a patent can cover no more than what is not taught by the prior art. So what we end up doing is coming up with an understanding and a definition of the inventor’s invention that is as broad as possible, but no broader than the prior art that we found. One way to think of it is the prior art forms a fence around the invention and we will work to define the invention up to, but not including, the prior art fence around the invention.

    If we find the invention exactly, we will use the prior art to attempt to create an improved invention so that the end result is in fact different from the prior art we found. We look and see if there’s an opportunity to improve the invention inspired by seeing all the prior art that we found, and then if the client is excited by the possibilities of that new invention that we have created together, then a patent application will be prepared on the new invention that is patentable.

  • Prepare patent application. After they give us that information, we draft a patent application which would include a detailed description, a background of the invention, a summary of the invention, an abstract of what is taught in the patent application, a field of the invention, a title of the invention and a brief description of any drawings.
  • File the application / Pay the filing fee. Once that is drafted and approved by the client, then the filing papers are prepared, the government fee (approximately $500) is paid and the papers are filed.
  • Wait. The government, which in this case is the United States Patent and Trademark Office (USPTO), receives the patent application and provides a receipt. Then it will sit there for 18 to 24 months before it gets reviewed. If someone else comes along with the same invention during that time, the law in this country is still that the first inventor is the one who owns the invention. So if someone else comes along and invents it after your patent issues and starts selling the invention, you can approach them and inform them that they need to take a license or they need to stop making and selling it if you don’t want to give them a license.