Patent Requirements, Cost, and ProcessLast Updated: June 18, 2018
The process to obtain a patent may be long and expensive. Filers need to consider both filing costs charged by the USPTO or PCT and patent attorney/agent fees. While filing fees are close to a thousand or low thousands (usually around $3,500 for PCT international filings), legal fees add up. Simple patents can cost $3,000-$10,000 in legal fees and complex and software related patents cost upwards of $15,000 in legal to obtain. It takes an average of 36 months to obtain a granted patent from the USPTO. Patent searches cost anywhere from $1,000 to $3,000. These costs do not take into account any communication with the patent office. You can read more about it here.
At Loci, we have leveraged US disclosure laws on patents and are creating a marketplace where you may be able to monetize or fund your patentable invention prior to going through the costly patent process.
What are the patentability requirements?
There are three classes of patents:
- utility (defined as a process, machine, manufacture, or composition of matter or improvements thereto),
- design, and
- plant (a new variety of a plant that is created by humans (i.e., is not naturally occurring absent human intervention like insect resistant fruits)).
This guide focuses on utility patents because they are the most common type of patents.
There are five requirements to patentability. To be patentable, the claimed inventions must meet each of the requirements below.
The invention must be comprised of a patent-eligible subject matter.
- The definition of what can be patented is purposefully broad. Generally, any innovation that is the product of human inventiveness meets this definition. Laws of nature, physical phenomena, and abstract ideas (discussed more below) are not patentable. United States law states that any person who “invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent.” Almost any useful and novel innovation can fall under it—from an electric guitar or a special kind of screw to pharmaceuticals and medical devices to a manufacturing process, and even certain business methods.
- Examples of laws of nature, physical phenomena, and abstract ideas that are not patentable are: Laws of nature and products of nature are not patentable. For example, discovery of a new organism is not patentable. In a recent Supreme Court case, a pharmaceutical company tried to patent a method using metabolism rates for a drug to modify the dosage of the drug. The Supreme Court found that unpatentable because the patent was seeking to monopolize a correlation in metabolic rates that is a law of nature. Mathematical algorithms and mere ideas are also not patentable. For example, you cannot patent the concept of gravity. The Supreme Court struck down a patent that described hedging and another that described a computer assisted settlement process on the grounds of abstract ideas.
The claimed invention must be useful.
- Useful (sometimes called the utility requirement) means that the patent must have some useful purpose and utility. It is generally easy to meet this requirement. The invention should be operational (I.e. work), not harmful to society, and have some non-trivial substantial use.
The invention must be new or novel.
- The novelty requirement is there to ensure that you have invented something new. This is determined by making sure that certain public disclosures have not been made about the invention prior to the filing date. Specifically, an invention is normally not patentable if any of the following happened prior to the inventor filing for a patent: the invention was publicly known or otherwise available to the public (either through sale, public use or otherwise); the invention was described in a printed publication anywhere in the world; or the invention was described in a published patent application (in the US or Patent Cooperation Treaty (“PCT”) countries or issued patent anywhere in the world.
- There is, however, an important exception for inventor-derived disclosures made up to 12 months prior to filing of the patent application. See What is the 12-month grace period for patent disclosure?
- Loci utilizes the grace period exception as one of its methods to allow inventors to disclose prior to going through the expensive and time-consuming patenting process. There are pros and cons to this described below. See LOCIdisclosure.
- Among other capabilities, LOCIsearch helps inventors determine if their invention is new or novel through our innovative search process. Loci’s search engine contains (or will contain very shortly) every national and international issued patent and patent applications filed with the US and PCT. Our plan is to continue to increase our search capabilities.
The invention must be nonobvious.
- This criteria is to prevent the patenting of trivial inventions. Even if your patent is new and useful, it must meet this requirement. The test is whether a person knowledgeable in the arts (or field) would think that your invention is already known if one were to combine several references. The test is supposed to be as of the time the invention is made. This is a fact-specific inquiry.
The invention must be adequately described in the patent application.
- The description of the patent must be clear and accurate description on using and replicating the innovation and describe the best mode of making the invention. Specifically, “the patent application must contain a written description of the invention, and of the manner and process of making and using it, in such full, clear and concise, and exact terms as to enable any person skilled in the art to which it pertains to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out the invention.”
Breaking the above down, the disclosure requirement has four distinct elements:
- Enablement – The specifications provided by the inventor must be sufficient so that a person having ordinary skill in the arts to use the invention without undue experimentation.
- Definiteness – The description must particularly point out and distinctly claim the subject matter.
- Written description – The inventions description must roughly commensurate with the scope of the claims.
- Best mode – Requirement that the inventor disclose the “best mode” of implementing the invention known to him or her.