An overview of the patent application process in the United States

New inventors and corporate executives who are considering a patent for the first time often seek general information about the work, costs, and timing are required in order to apply for and obtain a patent.  To help in those situations, this post provides an overview of the U.S. patent application process.  It also discusses several items that an inventor or company should consider when applying for a U.S. patent:

What is a Patent:  Patents are granted by the U.S. government for inventions – machines, articles of manufacture, compositions and processes — that are useful, novel and non-obvious.  A patent provides the owner with a right to exclude others from making, using, offering for sale, selling, or importing the claimed invention for a period of time. 

Establishing Documentation:  The inventor should document the invention, using both text and drawings, and should sign and date the document.  The document should be witnessed (read and understood) and dated by someone who is not a co-inventor.  Why do this?  Under current U.S. patent law the first person to invent the invention is entitled to a patent.  Although this may change based on patent reform legislation that is pending in Congress, for now inventors should should retain some documentation establishing support for a claim of prior invention.  Lab notebooks and invention disclosure forms are examples of forms that may be used to document an invention and to provide the patent attorney with information that will help him or her draft your application.

Patentability Search:  An inventor may receive a patent for any new, useful, and non-obvious article of manufacture, process, method or design.  Patent searches are not required prior to filing a patent application, but they can help to avoid wasting the time and costs involved with preparing an application that has little chance of success.  No search can provide a guarantee of patentability, but at a minimum the patent attorney can search USPTO records and other public documents to determine whether the exact invention has been previously disclosed.  The inventor also must provide the patent attorney with any patents, non-patent literature, or evidence of prior sales or public use that the inventor knows may be material to patentability. 

Patent Application Timing:  In the United States, a patent application must be filed within one year of the first public disclosure, public use, sale or offer for sale of the invention.  Most foreign countries require patent application filing prior to any public disclosure, public use, sale or offer for sale (with no grace period).  Once an application has been filed in any country that has signed the Patent Cooperation Treaty (PCT), the inventor has one year from the first filing date to pursue foreign filings in other countries that have signed the PCT, regardless of subsequent disclosures or offers for sale.

Patent Application Preparation:  After deciding to seek patent protection, the inventor should send all documentation and drawings that are available for the invention to the patent attorney.  The patent attorney may meet with the inventor and prepare a draft application for the inventor’s review and comment.  The application may be prepared as a provisional application, a utility application, a continuation or continuation-in-part application based on an already-pending patent application, or a design patent application.   

Provisional Applications:  If a filing date must be established on an expedited basis, or if the inventor seeks to delay the costs of formal filing, in the United States the inventor may file a provisional patent application.  The USPTO will not examine a provisional application, and a provisional application alone is not sufficient to obtain a patent.  Instead, the provisional application merely preserves a filing date for up to one year before the utility application must be filed.  A provisional application must describe all features that the inventor plans to claim as the invention, but it can be formatted in less formal manner than a utility application, thus resulting in lower costs and quicker preparation time. 

Ownership:  U.S. patent applications are filed in the name of the inventor(s), and the inventor(s) are presumed to own the application unless proof to the contrary can be shown.  If the application and resulting patent are to be owned by an entity other than the inventor(s), then at the time of filing the inventor(s) should sign an assignment document in which they assign all right, title and interest in and to the application to the ownership entity.  This document should be recorded with the USPTO.

Duty of Disclosure:  When filing a utility or design patent application, United States patent law requires inventors and patent attorneys to disclose all known prior art that is material to patentability.  The inventor(s) should provide all such material to the patent attorney before the application is filed, and everyone involved with the application must supplement the disclosures if new material is discovered while the application is pending.

Foreign Filing Decisions:  Decisions on seeking patent protection in additional countries should be made within 9 months of the U.S. filing date, as foreign filing must be accomplished within one year of the U.S. filing date.  Costs and legal fees for foreign filing can vary widely, often ranging from $2,000 to $10,000 per foreign country.  An international filing under the PCT can help to delay and reduce these costs.

Patent Prosecution:  The USPTO will assign an examiner to conduct a patent search and to issue an office action.  The first office action is usually issued within 18 to 36 months and typically involves an objection to or rejection of at least one of the claims.  The patent attorney then responds to the first office action by preparing an amendment and response with input from the inventor or owner of the application.  The amendment may revise the claims, and it typically includes arguments regarding the patentability of claims.  The amendment may also be preceded with or followed by an interview with the examiner.  The examiner will then issue either a notice of allowance or a second office action involving a rejection or an objection.  If the amendment is a final action, that does not mean that prosecution is finished.  Instead, the patent attorney may then file: (a) an amendment after final; (b) an appeal of the examiner’s decision, (c) a continuation application with amended claims.  The typical patent pendency period from filing the application to issuance of the patent ranges from 18 months to 36 months, more typically 20 months to 26 months.

Patent Issuance:  After the USPTO issues a notice of allowance, the applicant must pay an issue fee in order to receive the patent.  The applicant may also ask the attorney to file a continuing application before paying the issue fee in order to preserve the pendency of possible additional claims.

Patent Marking:  Products covered by the patent should be marked with the patent number in order to help maximize the amount of damages that the patent holder may receive in an infringement action.  Prior to issuance of the patent, the product may be marked with “patent pending”, although this has no legal effect on patentability or damage rights.

Patent Maintenance:  In general, the term of a utility patent based on an application filed after June 7, 1995 is 20 years from the filing date, provided that maintenance fees are paid.  Maintenance fees are due at years 3.5, 7.5 and 11.5 after issuance of the patent to maintain the life of the patent beyond years 4, 8 and 12 respectively.  Reduced fees may be available for entities that qualify for “small entity” status.

What Does a Patent Not Do?  A patent provides a right to exclude others from practicing an invention, but it does not guarantee that the patent owner has a right to practice the invention.  For example, if Company A has a patent covering a device, and Company B has a patent covering an improvement to the device, Company B may not manufacture the device – even with the additional feature – without permission from Company A.  A patentability search that is performed in connection with a patent application will not necessarily reveal all patents that must be considered for a right to practice opinion.  If you are interested in determining whether you may practice your invention without infringing other patents, ask your patent attorney.