Overview of the Patent Process

Taking your invention from an idea to a United States patent can be a complicated process. But, in this blog post, I will break down the steps to help you understand the process.

Step 1: Developing Your Idea Of course, the first step is coming up with your idea! While you do not need to build a working prototype to file a United States patent, you should have a good idea of how your invention works.

Step 2: Consultation with a Patent Attorney Engage with a qualified patent attorney early in the process. A patent attorney can provide invaluable insights, by helping you understand the merits of filing a patent application, and by identifying any potential filing deadlines.

Step 3: Prior Art Search In order to obtain a patent on an invention, an invention must be a new and non-obvious improvement over what came before – the so called “prior art.” The prior art includes, among other things, printed publications and other patents. Although a prior art search is optional, many inventors choose to conduct a prior art search in order to help understand the merits of filing a patent application.

Step 4: Drafting the Patent Application A patent application must meet the requirements of 35 USC 112. Among other things, a patent application must have enough details to show that the inventors actually invented what they claim to invent and enough details to teach others to make and use their invention. Meeting these requirements can be tricky, and it is a good idea to have the help of a registered patent attorney for this process

Step 5: Filing the Patent Application After preparing an application, the next step is to file it with the United States Patent and Trademark Office. While all United States applications must be filed there, it is also possible to file for patents in other countries. In many cases, an application filed under the Patent Cooperation Treaty can be a good idea.

Step 6: Patent Examination Process After you file a U.S. patent application, you will wait for your application to be “examined” by a Patent Examiner (a technically skilled employee of the government who is trained in handling patent applications). While the specific wait times vary based on the current workload of examiners in each technology area, the USPTO publishes current statistics about patent pendency times. When a patent application is examined, a Patent Examiner performs a prior art search (similar to Step #3) and issued an “Office action” which sets forth the Examiner’s opinion on whether a patent should issue. Most patent applications do not receive an approval in the first Office action. Usually some argument or amendments are required, and a patent attorney helps present these amendments or arguments to the Examiner.

Step 7: Patent Grant Assuming a patent application meets all of the requirements for patenting, the next step is to pay the issue fee to the USPTO, after which the patent application issues as a United States Patent. This is an important step because an inventor (or invention owner) cannot file a patent infringement lawsuit in the United States until a patent issues.

Step 8: Maintenance and Enforcement At about 3.5 years, 7.5 years, and 11.5 years after a patent issues, maintenance fees must be paid. If these fees are not paid, the issued patent will go abandoned.

Step 9: Commercialization Strategies An issued United States patent gives the patent owner the exclusive rights to make, use, sell, offer to sell, and import an invention into the United States. These rights can be very powerful and very valuable. Patent owners often enter into commercial licensing agreements involving their patents.

Step 10: Ongoing Innovation Many inventors continue to develop and improve their patents, and United States patent laws allow inventors to continue to file patent applications for their inventions. Sometimes, these new applications are so-called “continuing” applications (continuation applications, continuation-in-part applications, and divisional applications) that are subject to USPTO procedural rules. These rules and the relevant law can be tricky to navigate, and an experienced patent attorney can help.

I am a former software engineer turned lawyer, practicing patent, trademark, copyright, and technology law in New Orleans, Louisiana with Carver Darden. You can read more about me, or find out how to contact me. You can also follow me (@NolaPatent) on Twitter or Linked In. All content on this website is subject to disclaimer.

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