Before initiating the process of procuring a patent in the United States, it is important to understand the steps and the time frame of the process. Some of the major milestones in the life of a utility patent application and a general overview of what an inventor should expect are summarized below. (click on the following image to enlarge)

(OPTIONAL) Novelty Search: Often, an inventor may want to know if whether his/her invention is known in the prior art. Many inventors use online internet searches through websites like Google to find out if the invention is known. However, many inventions disclosed in issued patents and published patent applications are known, but not available in general online searches. A Novelty Search idenitifes any issued U.S. patents and/or published U.S. patent applications that relate to a disclosed invention. Although novelty searches may provide valuable information to an inventor, performing a novelty search is not required to file a U.S. patent application.

(OPTIONAL) Provisional Patent Application: Another optional step in the patent process is filing a provisional patent application in the USPTO. A provisional application preserves an inventor’s rights for one year to file a non-provisional application, allowing time to find financing or discover market interest in the invention. An advantage of filing a provisional (or a non-provisional) application before publicly disclosing an invention is that filing avoids forfeiture of patent rights in foreign countries that do not allow public disclosure before filing of a patent application. However, the patent office does not examine a provisional application; the provisional application only preserves the specific invention filed, excluding any improvements; and a non-provisional application must be filed to obtain a patent, including the costs associated with the filing process. Determining whether to file a provisional application generally depends upon an inventor’s individual circumstances.

Non-provisional Utility Patent Application: The first required step in the U.S. patent application process is filing a non-provisional patent application in the USPTO, which must be done within one year of the invention’s public disclosure or within one year after filing of a provisional patent application. Although the United States provides a one year grace period for a patent to be filed after public disclosure of an invention, most foreign countries do not allow any public disclosure before filing of an application. The application should include a background of the invention; a figure of the invention; a detailed description of the invention so that one skilled in the art may make and use the invention; and claims that define the invention. The Manual of Patent Examining Procedures (MPEP) and Title 35 of the United States Code contain the laws and rules for preparing and filing a patent application. This checklist of information aids both an inventor and/or an attorney in preparing an application.

Information Disclosure Statement (IDS): The next required step is filing an IDS in the USPTO within three months of the non-provisional application filing date. An inventor and his/her attorney have the duty, according to the MPEP, to disclose all known information to the Patent Office that is material to the patentability of an invention, including identification of relevant prior art and foreign patents. A fee must be paid for filing an IDS if it is filed after the USPTO sends a first office action to the inventor. A prompt and complete disclosure assists the patent examiner during the prosecution of a patent application.

(OPTIONAL) Foreign and PCT Applications: Within one year after filing either a provisional or non-provisional patent application in the USPTO, whether foreign patent protection is desired either through the Patent Cooperation Treaty (PCT) or in specific countries must be determined. Filing an international PCT application reserves, for an additional eighteen months, the right to file for patent protection in any country that is part of the PCT. An applicant may forego the PCT and file directly in one or more countries. Foreign patent protection may be particularly valuable for licencing the invention to a multinational corporation that desires to prevent others from making, selling, using, and/or importing the claimed invention in foreign countries.

Publication: Eighteen months after the earliest filing date of a patent application, the USPTO will publish the application on the USPTO website. Published applications are an “important reservoir of reference materials for patent examiners and a valuable resource to the public,” according to the former USPTO Director, Nicholas Godici.

Examination: During examination of a non-provisional patent application, the USPTO may send an office action to the inventor, informing the inventor of the examiner’s findings. Often, the first office action from the Patent Office is received within one year to three years after filing a non-provisional application and may reject one or more of the claims. After amending, dividing, or arguing the claims by the applicant and/or his attorney, the Patent Office may send a notice of allowance, which indicates that one or more of the claims of the application are allowable and that the patent will be issued upon the payment of an issue fee and a publication fee. An application is appealable if the Patent Office continues to reject claims of the application. After paying the issue fee and the publication fee, the USPTO issues the patent which confers the right to exclude others from making, using, selling, or importing the patented invention in the United States.

Maintenance Fees: After a patent issues, three successive maintenance fees must be paid. The first maintenance fee may be paid between 3 to 3.5 years after the issue; the second maintenance fee is due between 7 to 7.5 years after the issue date; and the third maintenance fee may be paid between 11 to 11.5 years after the issue date. All maintenance fees may be paid within an additional six month grace period along with a late fee.  If a maintenance fee is not timely paid, then rights to the patent are lost.

Patent Expiration: A United States patent will expire twenty (20) years after the filing date of the patent application, allowing the public to make, use, sell, or import the claimed invention. Expiration of a patent should not be seen as the death of an invention, but instead as the inventor’s contribution to society and technology. Also, patent expiration encourages an inventor to exploit the invention within a patent’s limited lifetime.

Filed under: In the USPTO, International Patent, Patent by admin