Understanding The U.S. Patent Application Process
John Wilson • May 6, 2020
How to Prepare and File a Patent Application
Filing a patent first starts with preparing a patent application and determining the type of patent being filed. Generally, there are three types of patents that that can be applied for with the United States Patent & Trademark Office (USPTO): (i) utility patents, (ii) design patents and (iii) plant patents.
Types of U.S. Patents
- Utility Patents protect any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof. Utility patents protect the functional aspects of your invention, including business method patents;
- Design Patents protect any visual ornamental characteristics embodied in, or applied to, an article of manufacture. Design patents protect the ornamental, non-functional aspects of your invention; and
- Plant Patents protect any new variety of plant, other than a tuber propagated plant or a plant found in an uncultivated state.
Preparing A Patent Application
A design patent and utility patent have different requirements when describing the invention, preparing the drawings, and the particulars of any patent claim language of the application. Importantly, all inventors who may have contributed to the claimed invention must be identified. If all inventors are not identified it can invalidate the patent in any potential future dispute. Prior to filing, the inventor(s) must review the application and make sure the invention is properly stated and disclosed. A failure to disclose all relevant details of your invention could result in a failure to meet the 35 U.S.C. § 112 enablement and best mode requirements. Further, 35 U.S.C. §102 requires that the patent applicant demonstrate that the invention be patented is new and novel. A sample patent invention disclosure form can be found on our website: Patent Invention Disclosure Form.
Filing A Patent Application
Once you have a patent application
that describes the invention and claims in accordance with its patent type, including a best mode which enables a third party to make it, the patent application is ready for filing. If the type of patent is a nonprovisional utility, it must include a specification which includes at least one claim, any necessary drawings, an inventor oath, and the required fees. Although optional, it is preferable to file corresponding transmittal forms as well as application data sheets. An application that is in strict compliance of the patent office filing guidelines will be assigned a filing date and application number. A patent is officially considered “patent pending” upon receipt of a filing date and application number. The patent fees will vary depending on whether you qualify as a large, small, or micro entity, and the patent filing fees can be found at the USPTO: USPTO Current Patent Filing Fees.
Patent Application Prosecution
After filing the application, the patent office assigns the application to an examiner who is responsible for reviewing such application. As a part of the examiner’s review, the examiner will review previous patents, both U.S. and international, for similarities as well as publications throughout the world (e.g. the examiner reviews the “prior art” for anything which may anticipate your invention). An office action will issue from the patent examiner that either “allows” some or all the claims, and/or will identify and explain any concerns that the examiner has found with the application. The patent examiner will give a statutory time period, generally between 3 months but not to exceed 6 months with extra extension fees due, in which the patent applicant can respond to the patent examiner’s concerns or rejections. It is up to the patent attorney and the inventor to overcome the examiners objections and rejections, and typically there will be back and forth written communications with the examiner in the form of a response to the office action (filed by the patent applicant) and an additional office action (issued by the examiner). The patent examination process can last years, and additional review time can be purchased from the patent office in the form of a Requests for Continued Examinations (RCEs).
Patent Application Allowance
After the patent examiner and the patent applicant have come to an agreement as to what the invention is claiming, and the examiner approves the application and determines the claimed invention is in fact patentable over the prior art, the examiner will send a Notice of Allowance to the patent applicant. This Notice of Allowance may require certain conditions to be meet before the patent is issued; however, those conditions are generally formalities and not substantive (e.g. correct drawings, re-order claims, change numbering or spelling mistakes in the specification, etc.). The patent issuance fees vary depending on whether a patent applicant qualifies as a large, small, or micro entity, and those patent issuance fees can be found at the patent office: USPTO Current Patent Issuance Fees.
Patent Publication
After the patent issuance fee is paid, and the patent office assigns the patent a registration number, the newly issued patent is published online and in the Official Gazette of the United States Patent and Trademark Office. A patent owner must now begin to mark the patent with this patent registration number (e.g. Patent No. [Registration Number]) to put consumers and third parties on notice that this product is in fact protected by a U.S. Patent. Failure to mark a product with its patent number can have significant consequences on damage recoveries in patent infringement litigation.
Patent Application Maintenance
Except for design patents which have no maintenance fees, utility patents must be maintained by paying the patent office designated patent maintenance fees in certain years. These patent renewal/maintenance fees are due only three times during a patent’s lifetime. Maintenance fees are required at the 4th year, 8th year and 12th year anniversary from the time the patent is granted with a six-month grace period on either side of that date (e.g. between 3.5-4.5 years,7.5-8.5 years and 11.5-12.5 years from date of original patent grant). According to the USPTO renewal website, the fee schedule is as follows:
- 4+ years: $1,600 for large entity, $800 for small entity, $400 for micro;
- 8+ years: $3,600 for large entity, $1,800 for small entity, $900 micro; and
- 2+ years: $7,400 for large entity, $3,700 for small entity, $1850 for micro.
Dallas Patent Attorney
Our attorneys provide patent protection and patent counseling through all stages of patent prosecution
and patent litigation. We are experienced technical lawyers capable of assisting in your patent related legal matters:
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