Steps in the Patent Process

To review the process for obtaining a utility patent, please view this page at the USPTO website.

Events in the Patent Process

Excerpted from the American Bar Association’s Intellectual Property Committee Publication entitled “A Short Description of the Patent Process”

Provisional Application: A short form application that serves to reserve your right for 1 year to file a regular patent application. It can also preserve rights to file foreign applications. The filing fee is only $125 (for individuals; twice that for companies of more than 500 employees) and does not require many of the formal papers or a set of claims. ILG has filed Provisionals of size ranging from 1 page to over 300 pages (a university thesis). Provisionals are never examined and cannot become patents. They reserve you a place in line and permit you to use the legend “patent pending” on your products. For more go to: article on Provisionals.

Regular Application: The application consists of a specification, claims and drawings of the invention, clearly set forth.

Filing: After drafting the patent application, it is filed with the US Patent and Trademark Office.

Examination: The Patent Office receives the application and assigns it to a group of Examiners who examine patent applications in that particular classification of invention. Upon receipt, the application is added to the queue behind other pending patent applications. When it rises to the top of the pile, the application is examined. The Examiner does a patent search, reviewing the application’s claims against patented inventions. The Examiner then communicates in writing with the inventor (or his/her attorney) via an Office Action, which explains whether or not the application can issue as a patent.

Office Actions: Very few patent applications are allowed upon submission. The Examiner may find that the invention has been invented before and no patent will issue. Sometimes, the Examiner finds similar inventions which when combined with others, yield the same invention as yours. Applicants are offered an opportunity to respond to the Office Action.

Response: If the Examiner has not allowed the claims, you may respond in writing by amending the claims and/or explaining how the Examiner may have misinterpreted or incorrectly applied the patents found or the laws applicable to patent applications.

Further Examination: The Examiner further examines the application after receiving the applicant’s reply. If the Examiner is persuaded that the application should issue as a patent, a Notice of Allowance is sent to the inventor. If not, the Examiner issues a Final Office Action setting forth why a patent cannot issue.

Final Office Action: If the Examiner had determined that the claims are not allowable, you may appeal or re-file the application. If a patent eventually issues, the 20 year patent term will begin on the date of the initial filing.

Notice of Allowance and Issue Fee Due: If the Examiner has determined that the application should issue as a patent, the issue fee must be paid.

Patent Issues: Upon receipt of fees and submission of any items required by the Examiner, the patent is issued and is enforceable up to 20 years from the date of initial filing.

Maintenance Fees: To maintain a patent, maintenance fees are due at 3.5, 7.5 and 11.5 years from the date of issue. The owner of the patent is responsible for payment; failure to pay results in abandonment of the patent.

Patent Expiration: By affording protection for inventors during the patent enforcement period, society as a whole benefits from the disclosure of new and useful inventions. Having had exclusive rights to the invention for the period of the patent, anyone can practice the invention once it has expired.

A Costs Perspective: Patents are not free. Even if you draft and file your own application, you will encounter government fees. For full details see the USPTO website at www.USPTO.gov. But in quick summary the government currently (6/2012) charges small entities / individuals and companies having less than 500 employees a filing fee of $530, an Issue Fee of $1,170 (which includes a charge of $300 to publish the application 18 months after first filing) and Maintenance Fees which aggregate $4,355, over 3 installments at 3-1/2, 7-1/2, and 11-1/2 years (most foreign countries charge annually). The total is $6,055. Those fees will go up in the future. To put it in perspective, in 1962 the total government fees charged to file, examine and issue a patent were $65.

If you retain a patent attorney to draft, file and prosecute an application, you of course will pay for the attorney’s services. What will it cost? You pay for experience in both the technical field and in the patent field. In our experience fixed-fee quotes (also known as “not-to-exceed” quotes tend to be limited effort jobs – sort of a “we’ll put paint on your house for $1,000,” meaning “if we don’t get it all done for $1,000 of effort, we will declare it done.” ILG does not quote fixed fees either for preparation and filing or for prosecuting the application before the USPTO through the examination-to-issuance process.

The cost also depends on the complexity and the amount of detailed information you bring to the drafting process. In our experience applications tend to grow during drafting. The inventor comes up with new embodiments, or has not thought through equivalent structures or processes. Details are missing or evidence of unexpected results is needed to make the case for patentability. Or there is pertinent prior art of concern to be distinguished. So you can spend $5,000 - $15,000 (or more) on attorneys’ fees for preparation and filing the regular application and that again on prosecution in the USPTO.

Figure it this way: You could buy a low end new car for what you might pay on your patenting project, but the patent you get is probably more valuable. And the patent may well be the shield you need for your business survival.

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