From Idea to Issued Patent: A Quick Overview

When it comes to patenting an invention in the United States, the process looks intimidating from the outside. In the video, I zoom through the essentials in under a minute—much faster than the real-life timeline. This article is a transcript of the video, converted into prose using AI, and then almost entirely rewritten by me. The vast majority of the prose and all of the ideas are mine;, a small amount of the language and the structure is AI.

---

1. From Idea to Invention

The United States Patent and Trademark Office (USPTO) does not issue patents for ideas. Period. It is never supposed to happen.

Most non-lawyers find that confusing. Didn’t Edison come up with the idea for the lightbulb? Or Bell the idea for the phone? How did they get patents?

The answer is that lawyers and legislators love creating magic words. You can’t patent an idea, but you can patent an invention, which is an idea you have implemented.

As an inventor, I can tell you that a lot of the time, the idea, invention, and even details arrive simultaneously. When I invented one of the first file fingerprinting systems, I was on an Amtrak working through all of the legal work required to sue people who repeatedly uploaded copyrighted or illegal files to our servers (I was working at a free web hosting company). We would cancel their accounts, they would access via a proxy (now we call that a VPN) and re-upload the same stuff I just had taken down. From one moment to the next, I went from “I wonder if I can enforce an injunction in Romania” to “I should just hash the files, record the fingerprint, and regularly crawl the sites to find matches”. That description alone probably enabled the invention. I went from no idea how to solve it to a fairly complete system. All at once.

When we say an idea isn’t patentable, we really mean that a concept or a goal isn’t patentable. “It would be great if we could stop illegal files from being re-uploaded” is a goal. “I bet we can do it using a program that runs on our network” is a concept. Both are ideas — but so is the fully implemented version. Instead of “an idea can’t be patented”, we should probably say “an abstract idea can’t be patented” or “an idea that needs work before it functions can’t be patented”. But we’re stuck with English, and it just isn’t precise enough. So we accept the terminology.

An idea isn’t patentable. An implementation of the idea that can function to implement the idea is patentable. Translating to “patentese”, the inventor must reduce an idea to an “invention”, which is something that you are able to describe in a way that someone skilled in the relevant field could actually make or use. As an example, “my idea is that it would be cool if there was a way to project a straight, level line on a wall when hanging a photo” is not patentable. A description of a laser level that implements the idea would be patentable (except it already exists…).

---

2. Filing the Application

This is where you go from “inventing is fun” to “patenting is taxing”. You have to convert the idea into an invention, and that can be a lot of fun. At this stage, though, you have to convert the invention into something that patent lawyers (and often only patent lawyers) can understand.

The best route is to use a patent lawyer. If you can’t do that, you can try to file a provisional patent application yourself and raise money during the year it buys you to hire a lawyer for the “real” application.

Here is something bizarre that illustrates exactly why writing the patent application isn’t fun: Markman Hearings. Like most weird names in the law, it is named after a party to a case (Markman). A Markman hearing is where a judge translates the claims in a patent application into plain English that a jury can understand. Think about how crazy this is. I invent a way to cool a hot liquid quickly by piping cold water through a specially constructed bowl with highly conductive copper piping millimeters under the glaze on the inside of the bowl.

The patent lawyer and patent examiner change it to “a first vessel, designed to contain a liquid or semi-liquid substance, with circular heat-conductive piping arranged in a spiral shape along the edge of the body of the interior of the first vessel, where such piping is operatively coupled to a pump that causes liquid from a second vessel deposed with cooled liquid to circucle from the cold liquid second vessel to the hot liquid first vessel and back to the second vessel in a loop, thereby transferring thermal energy between the first and second vessels”. Super-big mouthful.

Now the judge reads it and translates to “a bowl with a hot liquid and a bowl with a cold liquid are connected to the same water pump, which pumps water through copper piping in the walls of the bowls”. Except that sometimes the judge translates it incorrectly. Think of the childhood game “broken telephone,” and you’ll know why this can be a problem.

I am a named inventor on hundreds of issued patents, and I’ve frequently had the experience of reading my own patent claims years after issuance and having to parse them word by word to remind myself of exactly what I had claimed. Life would be so much easier if patents were written in English. To my knowledge, patents are the only thing in US law where a statement starts in comprehensible English, is translated to a highly specialized and tokenized language, and then translated by a court back to English.

Anyhow, have fun with the patent filing phase. Or not. This is why patent lawyers are paid well.

---

3. Working with the Patent Office

After the application is filed, it is assigned to a patent examiner. Sometimes it takes a bizarrely long time to get examined (my record, I think, is 11 years from application to issuance). Sometimes it happens “fast” within a year or two. But usually you’re looking at several rounds of “office actions” where the examiner raises objections or rejections. Note that you can expect to get a “101” rejection in many cases. Section 101 is textually very generous as to what is patent-eligible, but a series of court decisions have imported non-textual limitations that have turned it into a bar even for inventions that cost billions of dollars to develop. I could write a book on this topic and still not cover it fully (and the book would probably be outdated 48 hours after I wrote it). My advice is to work closely with a lawyer with a strong understanding of 101 jurisprudence. As an aside, I’ve done patent examiner interviews where I’ve bonded with the examiner over our mutual confusion about how 101 applies in a particular case. The Supreme Court will eventually have to clarify the limits, but until it does there will be a lot of guessing, even by the most experienced lawyers.

At the end of it all, if things go as you hope, you get a notice of allowance.

NOTE: There is a maximum annual cap to track one applications. Once that cap is hit, there is no “track one” option until the next year.

IMPORTANT NOTE: Make sure to talk with your patent lawyer about filing a continuation application prior to issuance. Just trust me on this one, you usually want to file one.

---

4. Doing Something with the Patent

If the examiner concludes that the application meets all criteria, you receive a notice of allowance. After paying the issue fee, the USPTO formally grants your patent. This “issued patent” gives you the right, for a limited term (generally 20 years from your filing date of your first utility application, but not the provisional), to exclude others from making, using, selling, or importing the claimed invention in the United States. As a practical matter, after eBay v. MercExchange, the “right to exclude” has morphed into a “right to demand license fees”, as after that case, an injunction is as unusual as seeing a zebra in Central Park. U.S. Inventor is working to strengthen the patent system.

With the patent in hand, the real work starts. Do you build a company around your invention? License it to a partner? Sell it? There is a lot of content on this site that addresses this phase, but suffice to say that turning a patent into money isn’t as easy as you might think.

---