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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.
(Related: Patent Protection Outside the U.S.)
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, as well as step 6. While it is highly recommended to have a registered attorney or agent prepare and file your application, due to their experience not only in all the procedures and forms, but also in helping to formulate a better patent application, you are permitted to 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.
Moving on, somewhere between steps 8 and 11 are the real “nitty gritty” steps of the patent process.
Let's assume you’ve reviewed the prior art (step 1) and you have decided to proceed to file a non-provisional patent (step 4). Your non-provisional patent application filing typically involves, at a minimum, two documents:
You can access the declaration form (as well as all relevant patent forms) online. The general format and requirement of the specification, claims, and drawings—all of which make up the “application”—are specified in patent law. If an attorney or agent is filing the application for you, a signed power of attorney is also filed along with the application. Also, either at the time of filing or soon thereafter, a USPTO filing fee is paid. A typical minimum filing fee presently totals just under $500, although the fee can be higher for larger organizations and/or for larger patent applications filings.
Once your application is successfully filed, you will receive a patent application number. Initially, your application is checked to see that it conforms to overall formatting requirements. If there is a formatting issue or other problem, you will be notified of the “informalities” and you will be given a time period of a month or more to file necessary corrections. If the application conforms, it is placed in line for a USPTO Examiner to examine the application (step 9).
The time to receive a response from the Examiner after filing is quite variable. A “fast” response is considered nine months or less, whereas a typical response can be longer and well over one year. The vast majority of patent applications today go through a so-called “prosecution” process (steps 10 and 11), where the Examiner can point out other prior art and/or other reasons why parts of the application are objected to or rejected. The prosecution phase, which can take one or more back-and-forth rounds with the Examiner and can span months or longer, involves carefully reviewing the Examiner’s comments and responding to them. This phase typically calls for the experience of a registered attorney or agent—as a skilled response can make the difference in receiving an allowance (ie. receiving a patent—steps 11 and 12) or a rejection or abandonment (not indicated in step 11, but certainly possible).
Steps 12 and 13 (paying fees) are part of a “happy ending” –meaning the USPTO grants your patent!
* 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: email@example.com and at 302.200.1424.
*Disclaimer*: Harvard Business Services, Inc. is neither a law firm nor an accounting firm and, even in cases where the author is an attorney, or a tax professional, nothing in this article constitutes legal or tax advice. This article provides general commentary on, and analysis of, the subject addressed. We strongly advise that you consult an attorney or tax professional to receive legal or tax guidance tailored to your specific circumstances. Any action taken or not taken based on this article is at your own risk. If an article cites or provides a link to third-party sources or websites, Harvard Business Services, Inc. is not responsible for and makes no representations regarding such source’s content or accuracy. Opinions expressed in this article do not necessarily reflect those of Harvard Business Services, Inc.