Patent Appeal Process: Everything You Need to Know
The patent appeal process is available if you receive a Final Office Action stating that your effort to secure a patent has been unsuccessful.3 min read
The patent appeal process is available if you receive a Final Office Action stating that your effort to secure a patent has been unsuccessful. The Patent Trial and Appeal Board (PTAB) hears these cases and makes a final determination. In a divided ruling from April 17, 2018, the Supreme Court found that the PTAB must issue a written decision on all claims challenged in a review petition rather than on just those the Court felt worthy of review.
Overview of the Process
- While you may want to review the potential profit and how you would market your invention, these things aren't mandatory.
- Initially, you want to conduct a search related to the novelty or prior art of your invention.
- Your next decision is whether you want to apply for a patent. If the answer is yes, you must decide if you want to try for a design patent or a utility patent and whether it will be provisional or nonprovisional.
- If you decide to apply for a provisional patent, you don't need the novelty search or a prototype. In fact, you can apply as soon as you think up your new invention. Having said that, it's wise to rely on your patent attorney to decide what you should and should not submit with your application. He or she does not have to sign a confidentiality agreement in order to advise you.
Applying for the Provisional Patent (Step 1A)
The reason the provisional patent process was created was to give inventors a less expensive pathway to patent pending status. Inventors still can't leave out important details, and patent pending status only applies to what you put in the provisional patent application.
In the provisional patent process, the patent examiner doesn't examine the application to see if the invention should be granted a patent. He or she only checks for the formalities without reading the full application.
Once you file the provisional patent application, you are patent pending and can remain so for one year. However, it may still take a month or two to receive your official filing receipt, which is confirmation of the patent pending status and the filing date. This is the start of the examination process, also known as patent prosecution. Your application is assigned a serial number used to identify it through the process when you need to communicate with the United States Patent and Trademark Office (USPTO).
If the application is idle for more than a year, it is abandoned. A counterpart nonprovisional patent application can be filed anytime before that year is up. You won't lose your patent pending status or your priority date when you do this. If a nonprovisional application is never filed, the priority date set by the provisional application is null and void.
The filing date is very important as it gives you a priority date to determine what constitutes prior art against your application. If two inventors file for a patent on the same invention, the application with the earlier date gets priority.
With a provisional patent application, the examiner is not looking to make a determination as to whether the invention is worthy of a patent. At this stage, the reviewer doesn't read the full application; he or she only checks the formalities.
Applying for the Nonprovisional Patent (Step 1B)
You don't have to file a provisional patent application to achieve a patent pending status. You can go directly to filing a nonprovisional patent application instead. If a provisional application includes comprehensive information, then you can pay a reduced fee and upgrade it. This is generally less expensive than filing a provisional patent application, but it's still not an inexpensive process. Once you file the nonprovisional application, a new serial number is assigned.
Costly Mistakes to Avoid
- If the provisional patent application was poorly done, it cannot be transferred into the nonprovisional application.
- If you have a provisional application that doesn't include all the relevant information and then try to file it as your nonprovisional application, the process will be more expensive. Any patent you do receive from a poorly done application will require additional documentation to satisfy the patent examiner.
- If you sell your invention before you file your provisional application, you may not be allowed to file a more comprehensive nonprovisional application. Save yourself time and money by consulting with a patent attorney to avoid costly mistakes like this.
If you need help with the patent appeal process, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.