Overview of the Patent Process

You have an idea and want to protect it, now what? You have some options, but here we’re going to focus on the patent process for a nonprovisional patent application (“nonprovisional”, “patent application”, or “application”.

The patent process starts with an invention, and an invention begins with an idea. The United States Patent and Trademark Office (USPTO) grants patents for inventions. Understanding the difference between an invention and an idea is important as some inventions are patentable while ideas are not.

So what’s the difference and how does someone determine whether an invention is patentable?

1. Is Your Invention Patentable?

A. Patentability Requirements

Generally, an invention answers how an idea works, isn’t generally or currently known, and can be sufficiently described such that someone can take your description and run with it. More formally, an invention that satisfies the patentability requirements must be useful, novel, not obvious, and described with enough detail that someone skilled in the relevant technical field can understand how to make and use it.

Novel

An invention is novel when the invention was not described in a patent, published patent application or other publication, and never in public use or on sale before you filed your application. The test of ‘novelty’ is assessed as at the date you file your patent application. For this reason, if you intend to disclose your product, process or invention to someone, it is critical that you have a confidentiality agreement signed beforehand.

Useful

An invention is useful if it does something.

Not obvious

An invention is not obvious when the new product, process or invention is not an obvious development of what has gone on before to a person in the applicable field.

Sufficient detail

An invention is described with sufficient detail when someone skilled in the relevant technical field can understand how to make and use the invention.

To determine whether the invention is generally or currently known, and thus not eligible for a patent, a patentability search can be performed before filing a patent application.

A patentability search, or patent search, is not required. However, a patentability search should strongly be considered before filing a patent application to determine whether the invention is new.

This is because patents are only granted for new inventions, and if prior art describes details of the claimed invention, then you will generally not be able to obtain a patent on the invention or may receive claims that are so narrow in scope they effectively provide little or no enforceable patent rights.

A search is therefore designed to give you information about whether you are likely to receive a patent on your invention.

2. Preparing the Patent Application

A. Disclosure Form

Before discussing the invention in detail, a patent attorney typically requests that the inventor complete an invention disclosure form, which includes questions to help the inventor describe the invention. Although not necessary, sometimes instead of, or with the invention disclosure form, an inventor provides a white paper that describes the invention. The inventor may also provide developer specifications, screenshots, and marketing materials describing the invention.

For more information on the invention disclosure form, read Preparing Inventors for the Patent Process – The Invention Disclosure Form.

B. Disclosure Meeting

The invention disclosure meeting typically begins with the patent attorney describing the substantive and procedural requirements of a patent application.

After, the inventor will be asked to explain at a high level the problem the invention seeks to solve and the solution to the problem. The attorney will then ask the inventor questions to figure out how the invention works, any advantages of the invention, discuss the differences between the prior art and the invention, as well as review any disclosure documents. This portion of the meeting typically ends with the attorney and inventor identifying patentable features of the invention, and discussing potential claims.

The disclosure meeting typically ends with gathering administrative information such as the identity of the inventors, any prior art of which the inventor is aware, any activities that could limit or prevent patent protection (e.g., past public disclosures of the invention and upcoming disclosures), and expectations as to the time for preparation of the application.

For more information on the invention disclosure meeting, read Preparing Inventors for the Patent Process – The Invention Disclosure Meeting.

3. Writing the Patent Application

Following the disclosure meeting, the patent attorney prepares the patent application. After completing a draft of the application, the attorney sends the draft to the inventors for review.

For more information on how to write a patent application, read How do I Write a Provisional Patent Application That Protects my Invention?

4. Reviewing the Patent Application

A review meeting to discuss the patent application will be scheduled after the draft is sent to the inventor(s). Before the review meeting, the inventor reviews the draft patent application for technical correctness and completeness and provides feedback to the attorney about any desired changes.

During the meeting, the attorney will review the figures and claims, and discuss any input from the inventor. If additional changes are needed, the attorney makes the changes and provides revised drafts until the application is finalized.

During this time, the attorney may prepare formal documents (e.g., an inventor oath or declaration, an application data sheet, and an assignment) required by the USPTO for the patent application, and send these documents to the inventor to sign. In some situations, the patent application is filed without formal documents, which can happen if an inventor is unreachable or if other issues delay completion of the formal documents.

For more information on how to review a patent application, read How to Review a Patent Application to Protect Your Invention.

5. Filing the Patent Application

After the patent application is finalized, the patent attorney officially files the application with the USPTO and pays the USPTO application fees.

Once the application is filed, it is reviewed by the USPTO to determine whether all of the required parts of the application are present. If so, the application is awarded a filing date, and the terms “patent pending” can be used.

If the application submitted is incomplete, a Notice of Missing Parts or a Notice of Omitted Items will be mailed.

The Notice of Missing parts awards a filing date and explains what must be submitted and by when. This might be because the patent application was filed without the application fee or oath or declaration.

The Notice of Omitted Items states that there are inaccuracies between what was reported as being filed and what was included in the original filing. This might be due to mistakenly leaving out one of the pages of the specification or one of the drawings.

For more information on what happens after filing your application, read What Happens After Filing a Patent Application? and How do I Check the Status of my Patent Application?

6. Prosecuting the Patent Application

Once the patent application is complete, the fees paid, and oaths or declarations are on file, the next step in the process is for the examiner to determine whether the application contains more than one invention that would require a separate search for each invention. At the USPTO, you are entitled to a single invention in a patent application. If there is more than one invention, the examiner issues a Restriction Requirement, and it will be necessary to select one invention for initial examination. The other invention(s) can be pursued in a divisional application, which will receive the same filing date as the earlier filed application provided the divisional patent application is filed while the earlier filed application is pending.

A. Examination Phase

The patent application is now ready to enter the examination phase (i.e., patent examination). You can expect the examination phase to be at least 12 to 18 months, but likely longer. This part of the process is a back and forth with an examiner at the USPTO to attempt to persuade the examiner that there is subject matter that is patentable.

The examiner will mail a first office action, likely a non-final office action, which outlines whether the patent application includes allowable subject matter, and/or issues with the patent application. A response to each of the issues raised in the office action must be filed no later than six months after the date the office action was mailed. Typically, however, the examiner will set a shortened statutory period to respond, which for an office action is three months. In this situation, you can respond up to six months but only if you request and pay for an extension.

Responding to the office action can include amending the claims to differentiate the claimed subject matter from the cited art, arguments that explain that the examiner’s interpretation of the cited art is incorrect, or a combination of both claim amendments and arguments. The patent attorney sends a draft of the response to the inventor for review. If changes are needed, the attorney makes the changes and files the response when the inventor is satisfied.

After responding to the first office action, the examiner may issue a second office action, which can be made final. A final office action does not mean that examination is over. Again, the office action outlines whether the patent application includes allowable subject matter, and/or issues with the application.

Although the office action is made “final,” there is still an opportunity to respond to the final office action. For example, if no claims are allowed after responding to final Office Action, a Request for Continued Examination (RCE) can be filed, which restarts prosecution (i.e., the examiner can mail another office action), or a decision can be made to appeal a final rejection by the examiner.

The appeal goes to the Patent Trial and Appeal Board (PTAB). In a small number of cases, the cited references cannot be overcome, or doing so greatly limits the scope of the claims such that the claims are of limited value, and the application is abandoned.

B. Receive Approval of the Patent Application

If some claims are allowed, you can either have the allowed claims issue or file an RCE. If you have the allowed claims issue, the USPTO sends a notice of allowance.

A fee for issuing the patent is due within three months from the date of the notice. When the issue fee is paid, the patent issues about four weeks after the date of payment. The patent grant is mailed on the issue date of the patent. It is bound and includes a gold seal and red ribbon on the cover.

7. Maintaining the Patent

Maintenance fees 3½, 7½ and 11½ years after the issue date of the patent. If the maintenance fee and any applicable surcharge are not paid on time, the patent will expire.

Questions or Suggestions?

It’s important to me that this article is helpful to you. If you have any questions on the article or suggestions for further clarification, please reach out to me and let me know.

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