What is the Patent Application Process?

Completing the patent application process can be extremely complicated. However, receiving a patent is integral in protecting your rights to your invention. For an invention to be eligible for a patent, it must meet three basic qualifications:

1.Your invention must be new and cannot have been previously registered.

2.Your invention must include a creative step that would not be obvious to an expert in the field of your invention.

3.Your invention can be re-created using the information included in your patent application.

When submitting your patent application, you must include detailed information about your invention, including a full description and drawings. In addition, for your invention to be patentable, you must be able to describe your invention in such a way that a person with expertise in your invention's field can easily understand how to manufacture and use your product. The United States Patent and Trademark Office (USPTO) will examine your patent application and determine if your invention can be patented.

Before you submit an application, you should be aware that completing the application process requires a great deal of time, effort, and money. There are a variety of steps you will need to complete to secure your patent, including searching for existent patents, filling out and submitting your patent application, and possibly waiting as much as two years for your patent to be approved by your patent examiner.

Patent Search

The first and most important step of the patent application process is performing a patent search. A patent search is crucial because it will help you determine if your invention is unique and eligible for a patent. Many people seeking a patent will perform a patent search themselves. However, it's also possible to hire an experienced patent attorney to help with your search. A thorough patent search will help you find inventions that are similar to your own and will give you an idea of your chances for receiving a patent.

While there are several crucial aspects to a patent application, the most important issue is proving the uniqueness of your invention. Consequently, it is vital that your patent search is focused on finding patented inventions that resemble your idea. For example, if you created your product by modifying an existing invention, you will need to identify what makes your product novel in order to receive your patent.

You should be aware, however, that simply making changes to an invention will not make you eligible for a patent, particularly if your alterations have made the original invention unusable.

Provisional Patent Application

Once you've completed your patent search and have determined that your invention is unique and patentable, you should think about submitting a provisional patent application. These applications have been available to inventors since 1995, and are a great way to establish basic legal protections for your invention before starting the full patent application process.

When you submit a provisional patent application, you will be given an official submitting date, establishing first rights to your invention. Once the submitting date has been secured, you will have 12-months to apply for your non-provisional patent. If you fail to submit your non-provisional patent application during this timeframe, protections for your invention will expire.

The advantage of a provisional patent application is that it can extend your rights to your invention beyond the typical 20-year period granted by a full-patent. A provisional patent also gives you time to gather the information that you need to file for your non-provisional patent.

Because provisional patent applications are relatively simple, they will usually not be examined by the USPTO. When you submit your application, you will need to pay a fee depending on how you are filing. Applicants filing as a small business, which is a business with less than 500 employees, will pay a $130 fee. If you qualify for micro-entity status, you will need to pay a $65 application fee.

When used correctly, a provisional patent is one of the most useful ways to protect your invention. Also, because the provisional patent application is not as extensive as the non-provisional patent application, you will usually be able to compete this process very quickly. To increase the protection provided by your provisional patent, it can be a good idea to include a full description of your invention, even if it is still under development.

Non-Provisional Patent Application

If you want full protection for your invention, you will need to file for a non-provisional patent before your provisional patent expires. When you file for a non-provisional patent, your patent application will be reviewed by a USPTO examiner, and if your application is approved, you will receive a utility patent for your invention. Before your examination period begins, the USPTO will review your application to determine if it includes all required elements. If not, you will receive a request for further information.

Every non-provisional application must include a detailed drawing of your invention. It is imperative that you include this drawing in your initial patent application, as you are not allowed to add new items to your application after it has been filed. In addition to drawings, the USPTO prohibits adding "new matter" to an application in the form of claims and written content. You also need to be certain that your drawing matches the written description of your invention. If the drawing includes extra items, then your application will most likely be denied.

If you want to add a claim to your application after it has been filed, you will need to demonstrate that your claim is not new matter. You will need to prove to the examiner that the claim you are adding is expanding on information that already exists in your application and that it is not attempting to introduce new information. As long as they are not new matter, claims can be added to your application throughout the examination process. However, if the examiner determines your claim is new matter, it will be rejected.

After you have correctly filled out and filed your application, paid any necessary fees, and submitted an inventor's oath or declaration, the application process can continue. At this point, your USPTO examiner will review your application to determine if you are attempting to patent a single invention or if your application covers several new inventions.

Many people filing for a patent choose to include more than one invention in their patent application. By including associated inventions, whether they are similar in design or in the way that they are used, you will be giving yourself options during the application process. For example, your examiner may tell you which of your multiple options is most likely to receive a patent, allowing you to shift your focus to that invention.

The amount of time it takes your examiner to complete the review of your application can depend on several factors, including the complexity of your invention and the claims made in your application. If your invention is extremely complex and you've made multiple claims, then you may need to wait as long as three years before you are contacted by your examiner. Fortunately, other applications will be processed much quicker.

The examination period may be very brief depending on the type of patent you are requesting. For instance, inventors who are applying for a design patent may be contacted by their examiner as soon as six months after their application has been filed. Most people, however, can expect their application process to last between 12 and 18 months.

Recently, the USPTO has instituted something called the Track One examination. This expedited examination process allows patent applicants to receive a determination under a year after application.

Track One

Unlike the traditional patent examination process, Track One is designed to be much easier and less time-consuming. Track One offers priority to people applying for utility or plant patents and features much fewer requirements than a standard patent application. It is likely that the recent increase in approved patents is due to the adoption of the Track One program.

With Track One, you will be contacted by your examiner when they send you a First Office Action on the Merits (FOAM), which results when one or more of your claims has been rejected. Your examiner will tell you why your claims have been rejected, what parts of your invention are patentable, and how you can change your claims to achieve approval.

When you have been contacted by your patent examiner, you should respond as quickly as possible. You can respond yourself or have your attorney respond on your behalf. If you want to keep your patent application on track, you need to reply to the First Office Action within six months. However, during this period, your examiner will like set a shortened statutory period, which reduces the required response time to between one and three months depending on what information your examiner has requested. The reason for this shortened period is to help you avoid paying further fees for your patent.

Some people choose to request an extension to the First Office Action response period. While this can be useful, it may cost you a great deal of money, as every extension requires paying a few. Also, the longer the extension you are requesting, the higher your fee will be. The Patent Office is required to provide you with an extension if you have requested it and paid the required fees. During the extension, you should work towards resolving every issue included in the First Office Action. This means you will need to adjust your claims and prove to your examiner that your application covers patentable material.

Once you have responded to your FOAM, it is likely that your examiner will send you a Second Office Action that you will need to handle. If the examiner is not satisfied with your response to the Second Office action, they have the ability to make your patent rejection final. However, before the rejection is finalized, you will have the opportunity to make modifications to your patent. You will be able to either remove the rejected claims from your applications or modify your claims based on the suggestions provided by your patent examiner.

Once the patent examiner has issued a final rejection, you cannot make any modifications to the claims in your application. Once a final rejection has been issued, the patent prosecution period is ended. At this point, there will be one of three outcomes:

  • Some of your patent claims will be approved
  • All your patent claims will be approved
  • All your claims will be rejected

If your patent has not been approved at the end of prosecution, there are several ways in which you can respond. First, you have the option of filing for a Request for Continuing Examination (RCE). If your RCE is approved, then the prosecution period will start over and you will be able to adjust your claims to make your invention patentable.

Second, you can request a Continuation or a Continuation in part, which provides you with the opportunity to try and convince the examiner to allow you to add claims.

Unlike the RCE, which simply continues your initial application, a Continuation or a Continuation in part will start a completely new application period. If the patent examiner feels that continuing your application is not worthwhile, they can request an ultimate rejection from the Patent Board of Appeals. To prevent this ultimate rejection, you may need to appeal your patent in either the U.S. Court of Appeals or the United States District Court for the Eastern District of Virginia.

Generally, appealing an ultimate rejection is not worth the time or the effort unless you can prove that the Patent Office incorrectly examined your patent. 

Whether you're a first-time inventor or a business that regularly files for patents, it's important to fully understand the patent application process and the best methods for proving the patentability of your invention. While it's possible to successfully acquire a patent on your own, the application process can be much easier with the help of a knowledgeable patent attorney.

If you need help with the patent application process, you can post your legal need (or post your job) 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, Stripe, and Twilio.