Process of Filing a Patent: Everything You Need to Know
The process of filing a patent includes the steps an inventor must take when seeking intellectual property (IP) protection for an invention.3 min read
2. Conducting a Patent Search
3. Filing a Provisional Application
4. Submitting a Patent Application
5. The Examination Phase
6. First Office Action on the Merits
The process of filing a patent includes the steps an inventor must take when seeking intellectual property (IP) protection for an invention.
When to Seek a Patent
When does a good idea become an invention? You can't patent an idea by itself, but you can patent it as an invention once you can describe it with enough detail that another person with comparable technical skill could make and use it.
Conducting a Patent Search
Searching for similar patents will help you understand whether your invention is eligible for patent protection. While you can do this step yourself, you may also want to seek the guidance of a professional patent attorney or agent.
The patent search provides you with thorough knowledge of prior art in your field, so you can use it to describe how your invention is distinguished from patents that already exist. It will also inform you if your creation already exists, so you can modify it to make it unique before seeking patent protection.
Filing a Provisional Application
If you think you might be able to obtain a patent, the next step is to file a provisional application. These cost less than the full patent application, do not undergo examination by the United States Patent and Trademark Office (USPTO), and can be a valuable tool to give you additional time to raise money for your invention.
Though the provisional patent application can be less detailed than the full application, it should still provide a complete description of your invention. Because the patent system in the U.S. is "first to file," this type of application establishes an earlier patent filing date even if you're still refining your invention.
You can also claim patent pending status after filing a provisional application.
Submitting a Patent Application
The nonprovisional patent application will be examined by the USPTO to determine whether your invention is eligible for patent protection.
- First, it will check to make sure all required documents are included. You must have at least a minimum of written specification to obtain a filing date; drawings are not required. However, it's important to include at least one drawing if necessary to understand the invention. Once the application is filed, it cannot be supplemented.
- Though you do not need to pay the filing fee when you file, the patent application will not be examined until you do so. You will also be subject to an additional fee.
- If more information is required, you'll receive a Notice of Omitted Items or Missing Parts. The Notice of Missing Parts gives you a filing date and tells you the items you still need to file along with deadlines and associated fees. The Notice of Omitted Items indicates that your application referred to another document that was not included, typically because of oversight. In this case, you may need to file a new application.
- Although new material cannot be added, claims can be added as long as these claims refer to matter published in the original application, such as in specs or drawings.
The Examination Phase
The length of the examination phase depends on the complexity of the field of your invention. In some cases, it could take three years to hear a response from the USPTO examiner, though they usually get in touch sooner (an average of six months for a design patent and 12 months for a utility patent).
You can also receive accelerated service for an additional fee to guarantee a response within 12 months, known as Track One. This carries a $2,000 fee for small businesses and may cost up to $1,000 more to prepare the application. However, the overall cost tends to be lower because examiners consider the claims and make a decision quickly. Track One applications also have an average increased allowance rate.
First Office Action on the Merits
This document is the first contact after the application is filed and notes which parts of the invention are patentable and which claims need to be adjusted. You have six months to respond but must respond within three months to avoid an associated fee. You can also opt for an automatic extension for an additional fee.
If you need help with preparing a patent application, 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 such as Google, Menlo Ventures, and Airbnb.