5 Steps to Patent

The first of our steps to patent is the prior art search. This step is a worldwide search for patents, patent applications, and non-patent literature that are similar to the claims of the invention. Pretty much anything available in any language is potential prior art. Anything that mentions, talks about, or shows how to make and use the invention is potential prior art.

If applying for a patent yourself, you should read our article about how to do a prior art search. The internet generally and over 100 patent and patent application databases worldwide should be searched. This is what the patent examiners will do when they look for prior art to determine whether the invention is novel and non-obvious while examining the application.

Carson Patents recommends DuckDuckGo for general internet searches and PatentScope for patent and patent application database searches. We recommend all inventors seek the help of a licensed patent practitioner (patent agent or patent attorney) for help with all of our steps to patent. This step is sometimes known as a USPTO patent search. Read more on our page about the prior art search.

The patentability study, the second of our steps to patent, is a determination of whether the invention is patentable and whether the prior art discloses the invention. The prior art found during the search is reviewed and examined to determine if an invention is patentable, and what can be patented.

An invention may be patentable if it is patent eligible subject matter, useful, novel, and non-obvious. Most inventions are patent eligible subject matter and useful. An invention is novel if it cannot be found in the prior art. Non-obviousness is the most difficult to determine. If the prior art provides the elements of a new invention so that a person having skill in the art would already know how to make the invention, it is likely obvious and thus not patentable.

Carson Patents conducts the prior art search and patentability evaluation for all inventions. Our USPTO registered patent attorney performs the search and conducts the patentability analysis. We only offer to write patent applications for inventions that we have a reasonable, good faith based belief are patentable based on a patentability study. Read more about our patentability study.

The patent application writing step is the writing of a complete and proper patent application for the invention. A complete and proper patent application includes the specification, claims, abstract, drawings, oath or declaration of invention, and the fling fees. Translation to English is also required if the original is not in English. Additionally, you should also file an Information Disclosure Statement (IDS) – preferably at the time of initial filing. The IDS is a listing of all the prior art found and evaluated in the first two steps.

A patent application can be provisional or non-provisional. It is important to note, however, that provisional patent applications are not examined and do not generally include claims. Claims are the point of a patent, and only non-provisional (regular) patent applications are required to have claims. Thus, only a non-provisional application can receive a patent. The provisional is a placeholder for a non-provisional application.

Carson Patents recommends all inventors consider the non-provisional patent application unless there is a compelling reason to file a provisional. Compelling reasons to file a provisional include a rush to claim first and a delay for business reasons. Read more about our patent application writing.

Patent application filing, step four of our steps to patent, is submitting the complete and properly formatted patent application to the patent office and getting a filing receipt. Any missing parts may result in a later filing date. Interestingly, patent applications can be filed both online and by postal mail to the United States Patent and Trademark Office (USPTO), but international PCT application submittals to the World Intellectual Property Office (WIPO) may currently only be done online.

After filing, your invention is patent pending. The USPTO will send a filing receipt to confirm that your application for a patent has been received. Only patent applications that have all of the required parts and forms will get a filling date. The filing receipt will indicate the date that the application is considered complete and filed. Read more about our patent application filing step.

Carson Patents recommends all inventors seek the help of a licensed patent practitioner (patent agent or patent attorney) for all of the steps to patent.

The patent prosecution step is the conducting of communications with the USPTO or WIPO patent offices to put the application in a conduction for allowance and issue if possible. In other words, patent prosecution is communicating with the patent office and patent examiner seeking to get a patent for the invention. Patent application prosecution is either [1] representing a patent application through examination, [2] appealing an examination decision, or [3] conducting opposition, reissue, or reexamination proceedings. 

The goal of patent prosecution is to get a patent application allowed and issued. In other words, converting a patent application for an invention from patent pending to granted (allowed and issued).

Prosecution happens after a patent is pending and it occurs both before and after a patent is granted. Most often, patent prosecution is communications with the patent examiners through letters called office actions. Patent prosecution for applications includes responding to office actions, writing application amendments, revising existing claims, and examiner interviews. Read more about patent prosecution.