What is the Patent Application Process?

To get a patent, you must first go through the patent application process. A patent application is a written application with detailed descriptions and drawings of your invention. A patent is a means of protecting your invention. An invention is patentable solely if it is:

  1. New and previously undisclosed,
  2. Distinguished by a creative step not apparent to somebody skilled in that knowledge, and
  3. Able to be produced by industrial application (it is physically possible to make the invention).

You must be able to describe your invention well enough so that an experienced person within the related technical discipline can perceive how to make and use the invention in order for it to be protectable with a patent. The U.S. Patent and Trademark Office (USPTO) is the authority responsible for analyzing patent functions and awarding patents.

Submitting a patent is a detailed and extensive process that takes significant time and money. The process that involves searching patents that have already been awarded, filling out a written application, and probably two years of back-and-forth with the patent examiner before your patent application is awarded or denied.

Patent Search

Performing a patent search is the first step in the application process. Taking this step helps you understand if your invention is unique enough be protected. Many inventors do their own search before having a lawyer do a search, which can actually be quite helpful. A knowledgeable patent search will help you uncover every little invention similar to yours that may have been previously patented.

One of the most important aspects of a patent application is articulating how unique your invention is. Therefore, the essential query in a patent search is to help you understand whether or not a similar patent has already been obtained. In the event you add on sufficient specifics to a previous invention, you will need to identify what makes your product different and novel so that the patent examiner will conclude that your invention is non-obvious and new.

The addition of random options for the sake of acquiring a patent will most likely make the product unusable. It's not usually helpful to layer on specifics unless the specifics contribute to how marketable the product is.

Provisional Patent Application

After you have performed a thorough patent search and have decided your idea is patentable, you may want to consider submitting a provisional patent application. Starting in 1995, inventors were allowed to apply for a provisional application, which establishes an official submitting date for the invention but does not launch the examination process. The provisional application offers 12 months to file a corresponding non-provisional application.

The advantages are that the patentability could be judged as if the application had been filed on the earlier date, but the 20-year patent time period could be measured from the later non-provisional application submitting date.

The Patent Office usually doesn’t examine provisional patent applications, because they're moderately straightforward to file. The submission price for a smaller business (i.e., particular person or enterprise with less than 500 workers) is $130. Qualifying as a micro-entity means submission will only cost you $65. These applications are a fantastic tool, when applied appropriately. For non-provisional patent applications, you don’t have to adhere to all of the in-depth format instructions, but to increase the usefulness of the provisional patent application, you need to completely and fully describe the invention. Provisional patent applications are ideal when the invention is still being developed.

As soon as you file a provisional patent application, you've got a “patent pending” status and might use this phrase to protect your invention. However, keep in mind that a provisional patent application is only as good as the description and details you provided within your submission.

Non-Provisional Patent Application

To ensure that the patent protection period begins, you will have to file a non-provisional patent application. You will file a non-provisional patent application when you need the Patent Office to review your application and work toward issuing a utility patent. The United States Patent & Trademark Office will first review your non-provisional patent application to determine if it meets all the required elements.

It is very difficult to file a drawing after the preliminary submitting date of a non-provisional application. You cannot add something new to the application after filing. This prohibition includes the addition of “new matter” and extends to textual content, drawings, and claims. Drawings are very likely to incorporate subtle things that are not actually described, submitting a drawing after your submission date could make the Patent Examiner deny your application.

You will need to differentiate “new matter” from the claims you’ve already included. New matter is outlined by the entirety of what's already described at the time of submitting the non-provisional patent application. It’s not new matter if it is contained within your original submission. You'll be able to add claims throughout prosecution as long as these claims are not new matter and have already been covered in what was filed and provided and they correspond to the specifications or are proven clearly in a drawing.

As soon as the patent application is finished, the price paid, and the inventor’s oaths or declarations are on file, the next step in the process is for the examiner to determine whether you have a single invention within the patent application or whether there are a number of innovations in your application.

There's nothing wrong with initially including a couple of inventions in the patent application, so if the inventions are associated, corresponding to a tool and technique of utilizing, you could possibly embrace each and ask the Patent Examiner to let you know if they are going to nominate one for you to continue with. How soon the examiner will get to overview the application varies drastically depending upon the complexity of the invention. For some kinds of inventions, it might take up to three years to hear from the examiner. In some instances, an examiner may contact you considerably sooner.

If you are submitting a design patent application, you may hear something within six to eight months, however for a non-provisional patent application, it is best to anticipate that the wait shall be a minimum of 12 to 18 months, but it could be longer. During the last few years, the USPTO has instituted an acceleration program that enables patent candidates to advance sooner and get a patent determination within 12 months, normally inside 6 months. That acceleration is known as Track One examination, or prioritized examination.

The Track One

The quick consideration by examiners means the invention is within the entrance of everybody’s thoughts and little or no ramp up time is required. Higher allowance rates can often be attributed to this streamlining. The examiner will contact you for the first time when filing a First Office Action on the Merits (FOAM). At this level, you’ve entered the stage most call the “prosecution of the patent application.” At this step, the examiner has advised you what she or he considers patentable and defined both what claims you’re lacking in and why.

An applicant, or legal professional, should reply to every single item the examiner mentions in a response. This needs to be filed no longer than six months after the First Office Action date. However, in the six-month interval to reply, the Patent Examiner will set what is named a “shortened statutory period” to reply. This period is three months for an Office Action. The shortened statutory period exists so that you can reply without having to worry about paying any fees. The shortened statutory period can be between one and three months. The length of time is dependent upon what the Examiner decides to send. After this, you have up to six months to reply, provided that you request and pay for an automatic extension.

These extensions can get costly, and the price goes up the longer the extension you need to buy. They're known as automated extensions, and the Patent Office has to allow the extension, granted you not only request it, but also pay for it. You must plan on resolving issues throughout the shortened statutory interval with the intention of preserving funds and getting the utmost patent time period. During the prosecution process, candidates will try to influence the examiner that there's subject material that's patentable.

After the response by the applicant or legal professional, the examiner will subject a Second Office Action. The examiner has the authority to make the rejections final after rejecting claims twice. Ultimate rejection, nonetheless, will not be so final. There's nonetheless a chance to amend and make modifications. You have a right to amend to cancel claims, place claims in higher situations for enchantment, or amend the claims if you will undertake the Examiner’s suggestions that will make an idea patentable.

No different modifications shall be permitted by the Patent Examiner after the Final Rejection. This Final Rejection leads to the end of prosecution. At the end of prosecution, one of three things will happen: some claims will be allowed, all will be allowed, or all will be rejected.

You can make several choices at this point. You can file a Request for Continuing Examination (RCE) or issue the allowed claims. Prosecution restarts after filing a Request for Continuing Examination (RCE). You can also file a Continuation or a Continuation in Part if you issue the allowed claims. The options permit you to continue making efforts to convince the patent examiner to allow more claims.

Each Continuation and Continuation in Part will start a brand new application period from the start, versus the RCE, which continues ahead on the identical application. Use of the RCE, nonetheless, will stop the allowed claims from instantly issuing. However, there are even more detailed and strategic uses of Continuations and RCEs. Along the way, a call could be made to request an Ultimate Rejection by the examiner. Such a request goes to the Board of Patent Appeals, and maybe finally to the U.S. Court of Appeals for the Federal Circuit, or United States District Court for the Eastern District of Virginia. In some contexts, appeals could be the proper determination, however they're very tough.

As a normal rule, most appeals are not profitable, whether because there was actual, identifiable error, or because the Patent Office was holding onto interpretations that have adverse penalties on patent functions. Pursuing a request at some point in the future could make sense if there's actual, identifiable error, as a result of the appeals course from earlier than the case will get to the Board there's an overview to see if there's that kind of error and whether or not it would be capable of honoring the no full request. A small, but quickly rising, variety of functions are appealed to the Board.

Whether you're an impartial inventor, a fledgling entrepreneur, or a seasoned inventor, it is important to develop awareness about the ideas and processes related to defending your innovations. Many inventors have taken the do-it-yourself route and efficiently obtained patents. Others depend on authorized assistance. Acquiring patents will not be straightforward for the uninitiated, and without some familiarity you may be wandering aimlessly and wholly incapable of constructing sound enterprise selections.

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.