Process for Obtaining a Patent—Part 1

By Haim Factor Wednesday, December 15, 2010

As part of this IP/patent blog series, we are now discussing the process for obtaining a patent in a two-part blog. An excellent flowchart describing this process appears on USPTO site, and it is reproduced here as a visual aid.

Although this chart looks quite daunting, the first seven steps involve planning  and basic decisions and the last two steps in the chart are fee payment—after all the“hard work has been done. So we need only to focus our attention on five or six of these steps for now.

Step 1—sometimes sometimes called a “prior art search”—is ALWAYS recommended. While your exact idea may not already be patented, learning what is “out there” is very useful, both at the start of and during the entire patent process. You can search databases such as the USPTO’s and many other databases and/or you can hire someone to do your searching.

Since we’re concentrating on a utility patent, we’ll skip step 2. And since for now we’re considering filing only within the US, we will also skip step 3. (We’ll get back to international filing in another blog.)

Step 4 involves the decision to file a provisional patent versus a non-provisional patent application.  A provisional patent application (available for almost 15 years) provides a lower-cost first patent filing option in the United States. Generally, provisional patent applications take less time and less expense to prepare and to file. On the other hand, a provisional patent lapses after 12 months. Filing a non-provisional patent application is the only way to ensure continued patent protection past the maximum 12-month period of the provisional patent application. Some people don’t file a provisional patent application, preferring to write and file a non-provisional application from the start.

We skip step 5, as many people do not need expedited examination. Regarding step 6, while it is highly recommended to have a registered attorney or agent prepare and file your application, because they are experienced not only in all the procedures and forms, but also because they typically can help you formulate a better patent application. Nonetheless, you can write and file your application yourself.

Steps 7 and 8 (electronic filing) are recommended—as opposed to the traditional method of paper filing. In most cases the attorney or agent files electronically for you. If you chose in step 6 above to do things yourself, you can file by paper (usually more expensive) or you need to obtain a USPTO certificate and customer number to file electronically. Especially for “first timers”, this, in itself could also be another reason to allow an attorney or agent to file for you.

Somewhere between steps 8 and 11 are the real “nitty gritty” steps of the patent process.  We’ll continue with a discussion of these steps in part 2 of this blog.

Patent Process

Haim Factor is a registered USPTO Patent Agent with nearly a decade of experience in patent drafting, prosecution, and overall IP strategies. His clients take advantage of his rich experience of over 25 years in business development of a wide array of B2B and B2C products and his experience with intellectual property protection both within the US and internationally.

He can be contacted at: and at 302.200.1424.

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