Patent Process: Everything You Need to Know
The patent application process is the most expensive and complicated of any intellectual property right application which includes multiple steps to complete.11 min read
What is the Patent Process?
The steps to complete the patent process include:
Creating an invention
Doing a patent search
Filing a provisional patent application
Filing a non-provisional patent application
Application goes through examination
Complete the prosecution process
Post prosecution steps
If you're applying for a patent, it's important to know the difference between an idea and an invention. An idea is not eligible for a patent, but an invention is. For an invention to be eligible for a patent, it must be described in enough detail that someone is your field can fully understand the invention. Once this done, it's time to begin the patent application process.
The patent application process is the most expensive and most complicated of any intellectual property right application. If your intellectual property is protected by a different mechanism, such as copyright, trademark, or service mark, consider applying for those instead of, or at least before, a patent.
Prepare and File an Application with the USPTO
There are two options when filing a patent application with the USPTO:
File a provisional patent application
File non-provisional patent application
A provisional patent application won't be looked at by a patent examiner. Just by filing your patent application, you get the legal ability to label your products with patent pending. A provisional patent is much easier to apply for than a non-provisional patent.
A provisional patent application requires a small, one-time fee. The fee for a large entity is $260, for a small entity is $130 and a for a micro-entity is $65. The provisional patent application also requires a detailed description of the invention and a drawing.
A non-provisional patent application must be filed within one year of filing the provisional patent application. If you don't file a non-provisional patent application within that year, the provisional patent application filing date isn't applicable anymore.
Patent Application Process Detailed
This first step of the patent application process is to make sure that the invention is truly yours by making sure that your invention is not already patented by someone else. Did you receive help thinking up or designing the invention? Do those people also want to be included on the patent? It's important to keep a journal of notes about the invention process for later use.
Importance of Being Thorough
A patent search entails more than just searching for patents that are for similar inventions to your own. It's important to also search all patents which are for earlier design inventions in your field.
A patent search should also include searching scientific and technical journals and foreign patent databases for similar inventions.
A patent search is very time-consuming to complete thoroughly, but it's worth far outweighs the time requirements. You can complete your own patent search or part of a patent search. At any point, you can hire a professional to complete your patent search and make sure there wasn't anything that you missed. But, you know your invention best, making you a great resources for patent searches.
Where The Research is Done
Patent research is done with web-based databases or by visiting a Patent and Trademark Depository Library. At the library, you can get help in searching earlier patents from a librarian. A patent search can help you to find inventions that are similar to yours, which is beneficial when filling out your patent application. Your patent application must make clear how your invention is different from all the others.
Patent Eligibility Test
Another thing that you should do before applying for a patent is to complete a three-part patent eligibility test.
Is the invention new?
Is the invention useful?
Is the invention obvious?
You want to be able to answer the first two questions with yes, and the last one with a no. If you aren't sure, consider asking someone unbiased. Friends and family want to see you succeed, so they may not be the right people to ask in this situation. When considering the three-part test for patent eligibility, be honest with yourself about your invention. Going through a patent process just to be denied for one of the above-listed reasons is expensive and time-consuming. It feels like a waste of your time.
Another important consideration is the commercial potential of your invention. Applying for a patent is expensive. Getting a patent on a product that won't sell is most likely not worth your time and money. Better to know the market and scale of interest in your product before going through the patent application process.
Provisional Patent Application
After your patent search is done, it's time to apply for a provisional patent. A provisional patent is not examined by the USPTO. The application is easy to file and has a small fee, just $130 for a small entity. For a micro-entity, the filing fee is just $65.
There are a few things required on a provisional patent application. They include:
A short abstract
References to any prior patent applications
A description of the general field, background, and circumstances of the invention
A summary description of the invention
The claims, dimensions, and limits of the invention
The first part of the patent application process is a provisional patent application. This is a first step application for the patent.
When you file the application, pay special attention to any deadlines. If deadlines are missed, late fees will be charged.
Your application is filed with the United States Patent and Trademark Office or USPTO. This first step helps to get a filing date quickly.
It is ok of your invention is not yet in the final stages of development. Small alterations can be made throughout the patent process. You can begin the patent application process as soon as your invention is concrete enough to describe in full detail.
Non-Provisional Patent Application
The next step is to file a non-provisional patent application. This application is filed for the examination process can begin. This is the application to file when you're ready for the USPTO to check your filing status and proceed towards issuing a patent. After your non-provisional patent application is filed, the USPTO gives it a preliminary review to determine that all the required parts of the application are there.
To receive a filing date, your application must, at minimum, include the written part of the application. The drawing and a claim are no longer required here as of 2013. It is highly recommended that you include a drawing, but it is not required. A drawing helps the reviewers to better understand the invention. A better understanding of the invention raises your chances of receiving approval for your patent.
The filing fee also doesn't have to be present at the time of filing. However, nothing of substance will happen with your patent application until the filing fee is submitted.
If on first review, your non-provisional patent is missing information, you or your attorney will receive a Notice of Missing Parts or Notice of Omitted Items.
Notice of Missing Parts
Under this notice, your patent application still receives a filing date. It also explains what must be submitted and by when. It also includes a fee or penalty.
Notice of Omitted Items
This notice points out that you have made reference to something that wasn't included in the application. This is often due to an oversight when filing the application. If the missing item isn't critical to the invention, you may be able to add it. If it is critical, you'll likely have to file a new application or a continuation.
More Than One Invention
The next step by the examiner is to make sure that your patent application includes only one invention. If the application includes more than one invention, you have to pick one invention to move forward. Other inventions can be submitted again through a new application. There is a fee for each invention.
You may also be able to file a divisional application without compromising your filing date. This additional application receives the same filing date as your original application. The original application is the parent application.
Your patent application now enters the examination phase. This part of the patent application process takes the most time and depends on how complicated your invention is. The average time in this phase is 12 to 18 months, but it could take even longer.
Track One Examination
If for some reason you would like to hasten your patent application's process, apply for a Track One Examination. This accelerated program gets you a patent decision within 12 months and usually within six months. These patents seem to have a higher allowance rate than others because of the rush decisions. This process also has a higher fee. The added filing costs range from an extra $2,000 to $3,000 for expedited examination.
After examination, your patent application enters the prosecution phase. This is the phase where the examiner tells you what they think is eligible for a patent and what is not. The applicant or attorney must respond to each issue put forth by the examiner. There is a six-month window to send in the responses to the examiner's concerns. This process often takes time as the inventor and the patent officer go back and forth examining the eligibility and added information.
Once the prosecution of the patent application is completed, you either have some, all, or no claims accepted and other rejected. Then it's time to make some choices. You can move forward or file a Request for Continuation of Examination or RCE. This restarts the prosecution. You can also choose to file a Continuation, which restarts the patent application process from the beginning.
Appeal of Decision
If you receive a Final Rejection, you can appeal. An appeal at this point goes to the Board of Patent Appeals. It also goes forward to the United States Court of Appeals for the Federal Circuit or even the United States District Court for the Eastern District of Virginia. An appeal may be the right decision if there is a true, identifiable error, but they are very difficult to win.
Allowance means that the patent application is accepted. The invention will be granted a patent in time.
The application won't receive a granted patent until the issue fee is paid. It may take six months for the patent office to officially grant the patent.
Longevity of a Patent
A patent typically expires 20 years after the filing date of the patent application. This means that part of the patent's useable term is used up by the patent application process. This is to encourage inventors to push the patent through the application process instead of stalling the process to increase the time the patent is available.
Maintenance fees for the patent are due at the fourth, eighth, and twelfth year after the patent is granted. The amount of the fees changes year to year. If a patent takes more than three years to examine and grant, the patent term may be adjusted accordingly. This could benefit the inventor as it extends the life of the patent.
A patent must bear the name of the inventor by U.S. law.
If an invention is created by an employee of a company, the employer may agree to share the patent with the employee. This includes the patent's royalties.
Alternately, the employer may reward the employee with a bonus or other reward in exchange for the rights to the patent.
No matter the agreement between an employee and an employer, the name of the inventor cannot be substituted on the patent for the name of the employer.
Design and Utility Patent
There are different types of patents. It's necessary to apply for the correct patent for your invention. The two different kinds of patents are a utility patent and a design patent.
A utility patent covers the way an invention works. This is the type of patent that is most used and talked about. It is also the stronger of the two types of patents. If you can get a utility patent, you want one.
A design patent covers the way an invention looks. These types of patents are often overlooked for the strong utility patent. A design patent does offer certain advantages.
The minute your provisional patent application is filed, you have the right to use the term patent pending.
There are two approaches to international examination, direct filing and PCT filing.
A direct filing is an international application that is filed directly with the foreign country where the patent owner wants to sell the product or invention. If there are multiple foreign countries involves, a patent application will be filed with each country.
With a direct filing, each country where an application is filed completes its own examination of the patent application. Some countries require translations of the patent application.
Most countries will charge an application and examination fee. This examination fee can sometimes be put on hold if the examination is postponed. The examination will not take place until the patent applicant requests it.
Patent Cooperation Treaty
The Patent Cooperation Treaty or PCT allows an inventor to delay the filing of international patent applications directly to foreign countries.
The PCT involves two steps:
Chapter 1: The PCT application is searched by a designated examining authority. A search report is generated. The search report answers whether the invention is eligible for a patent.
Chapter 2: The PCT application is examined and an opinion is generated. The opinion provides a written description of the patent eligibility of the invention. The patent eligibility is decided upon novelty, inventive step, and utility.
At the end of chapter 2, an international preliminary examination report or IPER is issued. The IPER summarizes the patent eligibility of the invention. The IPER and opinion are advisory in nature, not mandatory.
During both steps, the applicant can amend the patent application to address concerns put forth by the search report or the opinion. These amendments are optional.
The PCT process typically takes about 30 months. This period is measured from the filing date.
After chapter 2 has been completed, the patent application moves forward to the National Phase or is abandoned. Some PCT member states will now require the patent applicant to file an international patent application.
This phase is similar to the direct filing. This is the time when substantive examination of the patent application occurs.
Do I Need a Patent Attorney for the Patent Process?
If you can afford a patent attorney, you should get help from one. The patent application process is the most complicated of any intellectual property application process. A patent attorney has experience in filing these and can help you avoid common pitfalls as you go through the process.
A patent attorney is most helpful when it comes to describing your invention in the application. Many inventors and applicants underestimate the amount of description and detail that is necessary. If your description is not detailed enough, your patent application might be rejected. Then, you have to begin the application anew. A patent attorney helps you avoid this situation.
Hiring a patent attorney raises the cost of filing for a patent, but it's worth it if you are accepted. If you are rejected, you have to start over and patent application fees are non-refundable.
A patent attorney will not do the entire patent application process alone. The inventor plays a key role in the application process. If you're concerned as the inventor that hiring an attorney means you won't be involved, don't be. Your knowledge of the invention is extremely important. The patent application process is possible without a patent attorney, but it is much more time-consuming and complicated.
Why is the Patent Process Important?
The patent process is important to protect innovation, ideas, and economic growth. If patents cannot be approved or regulated, innovation and invention are not worth the time of the creators.
Inventors enjoy their job, but there is also marketability and the ability to make money from your invention. A patent helps to protect the inventions so that no one else may market or sell them.
The patent process is important because it ensures that there is fairness in what inventions receive patent protection. This makes sure that an approved patent is truly for a new and useful invention.
Frequently Asked Questions
- What is the patent process?
The patent process is the process in which inventions must go through to decide patent eligibility and whether or not to receive patent approval.
- What does a patent protect?
A patent protects inventions. A patent cannot protect an idea.
If you're considering submitting an invention for patent-eligibility through the patent application process, consider posting a job to hire an attorney from UpCounsel to help guide you through the process. We include only the top 5 percent of attorneys, and our team includes those from Harvard and Yale law schools and an average of 14 years of experience.