The first step in filing a patent application is a determination of whether the subject matter in question is patentable. Patents in the United States can be granted for “anything under the sun that is made by man and that provides a useful, concrete and tangible result.” This includes new and useful processes, machines, manufactures or compositions of matter, provided that the invention in question satisfies the criteria for patentability: inventions must be “useful”, “novel” and “non-obvious”. Showing that an invention is useful is typically not difficult, and if a start-up with limited resources has selected this particular invention for the subject of a patent application, it is presumably something highly useful to the company in one respect or another. Novelty is a more pressing concern; an invention is novel if it is distinct from all prior art, i.e. if it is “new.” Showing non-obviousness—that the subject matter taken as a whole would not have been obvious at the time to a person of ordinary skill in the art—can also be more challenging. All of these three burdens must be carried if a patent is to be successfully prosecuted before the USPTO.

Assuming the subject matter is patentable, it must be determined whether any foreign patent rights are desirable. The primary way to do this is to file a Patent Cooperation Treaty (PCT) application, which covers the vast majority of major countries, and is an important first step towards securing patent rights globally. That said, a PCT application does not complete the filing process in each country to which it applies; an applicant must still complete the patent prosecution process in each particular country. Nevertheless, the availability of the PCT highlights another major benefit of the patent system to the tech start-up, as it affords a relatively convenient and cost-effective means to lay the groundwork for a global licensing, positioning, and litigation strategies. The European Patent Convention (EPC) administered by the European Patent Office (EPO) also provides a means for obtaining a regional patent, as such a patent will grant the owner rights in all of the EPC states.

If filing in the US, the application must include a written description describing the novel and non-obvious features of an invention, as well as drawings illustrating those features, and claims defining the outer limits of the protection sought. The written description should be detailed enough to provide a person “skilled in the art” with enough information to “practice” the invention claimed in the application, in the best mode known at the time, without having to perform undue experimentation to do so. While these guidelines may appear to be readily understandable in common parlance, they are in large part legal “terms of art” subject to interpretation by way of judicial decisions, and legal expertise is needed to ensure the success of an application. An examiner at the patent office will review the application for compliance with the requirements of the application itself—the written description, enablement, and best mode requirements—as well as to ensure the subject matter of the patent is in fact patentable under the applicable US law. During this time, legal costs may be incurred in the form of the tech start-up’s patent attorney responding to “office actions,” or communications from the patent office pointing out issues with the proposed application that must be addressed. Thus, to ensure that fees are reduced, the application should be prepared by an experienced professional.