1. Patent Requirements
2. Patent Application vs. Provisional Application
3. The Examination Process
4. Appealing a Patent Decision
5. International Patent Application Process

The patent process overview provides a step-by-step guide to filing for patent protection with the United States Patent and Trademark Office (USPTO) for your invention.

Patent Requirements

To qualify for patent protection under a utility patent, an invention must be:

  • Statutory
  • Useful
  • Novel
  • Non-obvious

Non-obviousness means that a person with standard skill in the industry in question would not easily be able to come up with the invention. A patent attorney can help demonstrate that your invention is non-obvious in the claims written in your patent application.

When deciding whether it is worthwhile to seek patent protection for your invention, consider whether the processes, materials, or technology used meets the criteria above.

Patent Application vs. Provisional Application

After filing your patent application, you may not add claims or other information. You can also opt to file a provisional patent application, or PPA. This allows you to establish a filing date while continuing to work on your invention. You have 12 months after filing a PPA to file a non-provisional application or your application will be abandoned. You can market your invention with the words Patent Pending during this 12-month period.

When you file your non-provisional application, your priority date remains the date you filed the PPA. Your provisional application does not have to be as thorough as a standard non-provisional patent application and is often easier and less expensive to prepare. However, it's important to take care with this application as it lays the foundation for your final utility application. The PPA's priority date is advantageous since the U.S. maintains a first to file patent system.

The Examination Process

Once a USPTO patent examiner has made an initial determination about whether your invention is patentable, you'll receive correspondence called an office action that outlines the decision and why it was made. In about 80 percent of cases, the claims are initially rejected with grounds on which the decision can be challenged. Your patent attorney can assist you in responding to the office action with an amendment that provides information to challenge the grounds of the rejection.

Often, you'll receive several rounds of office action before your invention is accepted or you decide to discontinue your application. The examination period usually starts within a year after your application is filed and can last from a few months to a few years. This varies depending on the volume of applications and the staffing of the agency. In some countries, you can pay a fee to expedite the examination of your application.

If the USPTO accepts your application, you will be issued a patent. You'll receive a notice of allowance that explains your next steps as well as required fees. The application will be published and you will be assigned an official patent number. Before this period, called the allowance, you have a patent pending application. You can market your product with Patent Pending but may not prevent others from using it.

To receive your official patent application, you'll need to pay an upfront fee along with regular maintenance fees for the life of your patent (usually 20 years for a utility patent). These fees increase over time assuming that the longer your invention has existed the more you will profit from it.

Appealing a Patent Decision

If your patent application is twice rejected, you can either request continued examination, which carries an additional fee, or file an appeal through the Patent Trial and Appeal Board (PTAB).

International Patent Application Process

After filing for patent protection at the USPTO, many inventors seek international protection by filing an application through the PCT or in individual nations where they want protection. This can be done within twelve months of filing a domestic application.

If international search results indicate that your invention fits the requirements, you can postpone the next stage of the process from the 20th to the 30th month from your priority date as long as this is done before the 19th month. You can also opt to have a preliminary examination for patentability conducted by PCT authorities.

Depending on the countries in which you plan to seek patent protection, fees can range from $5,000 to more than $100,000.

If you need help with the patent 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.