Jones Intellectual Property has helped inventors from first-time entrepreneurs to Fortune 500 companies protect their ideas. Over the years, Michael Jones has seen how a misstep in the patent application process can jeopardize a great invention.
Avoiding mistakes when applying for your patent is crucial. This post will discuss the 9 common patent application mistakes inventors make. If you need to apply for a patent, Jones Intellectual Property can develop a cost-effective plan that addresses your goals and concerns.
1. Misunderstanding What Counts As Prior Art
A crucial part of the application process is ensuring that whatever you want patented is new, useful, and non-obvious. You can identify whether your creation meets these criteria by conducting a prior art search for similar products or designs. Prior art is information already available to the public. You likely won’t receive a patent if prior art is too similar to your invention.
One of the most common patent application mistakes is not fully understanding what counts as prior art. It includes more than just existing patents or published applications; it also encompasses any patented or unpatented product publicly shown before your filing date. A public showing can include:
- Trade show demonstrations,
- Films or TV shows,
- Magazine articles,
- YouTube videos,
- Social media, and
- The physical or digital marketplace.
Even if someone has shown a product similar to your invention in public, it could prevent you from obtaining a patent. Before you file, research prior art in multiple search engines.
2. Forgetting to Conduct an International Search for Prior Art
You might receive your patent from the United States Patent and Trademark Office (USPTO), but your invention needs to be original worldwide to receive USPTO protection. Applicants might forget to consider international disclosures in their prior art search, which could be a serious oversight. Borders do not limit prior art. A product publicly sold in Japan or an article published in Germany could block your U.S. patent application.
A comprehensive prior art search includes foreign databases and non-English sources. Don’t limit your view to just the United States—your competitors likely won’t.
3. Vague or Incomplete Descriptions in Your Search
A search for anything is only as good as your search terms. This is particularly true when searching for prior art during the patent application process. When describing your invention for a search, general terms likely won’t cut it. Consider what words and phrases truly reflect your invention and what it does. When you describe your invention clearly, it’s easier to spot any existing work that might affect your patent.
4. Failing to Timely File a Nonprovisional Application
If you seek a plant or utility patent, a provisional patent application may give you a foot in the door to quickly claim ownership rights before others. However, this is not the final step in the process. To fully establish your patent rights, you must file a nonprovisional application within 12 months from your provisional filing date. Missing this deadline might cause you to lose your filing date and allow someone else to file for protection for a similar invention.
5. Spending Too Much Time on a Prototype Before Filing
The U.S. patent system generally follows a “first to file” rule. In many cases, you don’t need a finished product to file. You just need to clearly explain how you made your invention and how it works so that someone skilled in the field could build it. Remember, filing early is key to protecting your place in line.
6. Missing Required Parts or Forms
Each type of patent (e.g., utility, design, or plant) has different application requirements. Forgetting to include a required element can derail your application and become one of your biggest patent application mistakes.
Depending on your invention, your application may require:
- An application transmittal form,
- A fee transmittal form,
- An application data sheet,
- A specification that contains several details about your invention,
- Drawings or photographs, and
- An oath or a declaration.
Missing any of these items can result in a notice from the USPTO or a rejection. Ensure you know what you need for your specific type of patent application. Knowing what isn’t required is also helpful and can save you time.
7. Missing Fee Deadlines
The USPTO requires multiple fees at different stages of the application process. These may include fees for:
- Basic filing,
- A search,
- Examination,
- A larger application size,
- Excess claims, and
- Non-electronic filing.
A common—and costly—mistake is missing a payment deadline. Failing to pay your fees on time could delay or even abandon your application. You may have up to three months to pay certain fees after filing, but don’t risk it. Make sure you pay all fees on time to avoid a rejection or delay.
8. Using an Unnecessarily Costly Application Method
You can submit patent applications in person, by mail, or online. However, weigh your options carefully, as additional fees may apply depending on the type of patent application you file. If you’re filing a nonprovisional utility application, delivering the application by mail or in person triggers a $400 non-electronic filing fee. Submitting your nonprovisional utility application in hard copy may be one of your most expensive patent filing mistakes since you can complete the process online.
9. Filing on Your Own
From start to finish, the patent filing process is complex. You must understand the intricacies of your field, the law, and the USPTO’s expectations. An important step in navigating the process and avoiding pitfalls is hiring an experienced patent attorney. Michael has many years of experience and is an industry leader regarding patent law matters.
Hire a Skilled Patent Attorney Today
Jones Intellectual Property has the skill and experience to help you avoid the 9 common patent application mistakes and many others. With Michael’s personalized guidance, you can confidently file, avoid delays, and build stronger patent rights. Call or contact Jones Intellectual Property online to schedule an appointment today.
Resources:
- United States Patent and Trademark Office, Nonprovisional (Utility) Patent Application Filing Guide: A Guide to Filing a Utility Patent Application (June 2023), link.
- United States Patent and Trademark Office, Manual of Patent Examining Procedure § 607 (November 2024), link.
- United States Patent and Trademark Office, Manual of Patent Examining Procedure § 1.53 (f)(2) (November 2024), link.
- United States Patent and Trademark Office, Manual of Patent Examining Procedure § 1.53 (pre-AIA) (November 2024), link.
