An Overview of the Patent Process

So you have an idea that you would like to patent. You have heard that you need to file a “patent application”. You ask, “Where can I get one of these ‘patent applications’ to fill out.”

Unfortunately, it is not that simple. A patent application is more like a legal brief than a job or other form that you might fill out. Also, getting a patent on your invention involves dealing with the United States Patent Office, a government agency like any other, that has volumes of rules that must be followed when dealing with them during what is known as “the patent process”. The purpose of this article is to present a simplified overview of the major events in the patent process – from beginning to end.

Patent Pending

When the patent application is filed in the United States Patent Office, the invention instantly becomes “patent pending” – which means that a patent has been applied for, and the inventor is waiting to see if a patent will be granted.

After the patent application is filed, the waiting game begins. Due to the huge backlog of patent applications on file, it can take the Patent Office months – even years – to review a patent application. On the average, it takes six months before the Patent Office “examines” the patent application.

Examination

Eventually, the Patent Office will assign the application to an “Examiner”. The Examiner is an employee of the Patent Office whose job is to review patent applications and handle all correspondence with the inventor or his/her attorney. Thousands of Examiners are employed by the Patent Office, and each are assigned to a certain technology. The Examiner will conduct his/her own search to look for similar prior inventions. Then, based upon what is found in the Examiner’s search, he/she might either accept or reject the patent application.

If the patent application is “allowed” by the Examiner, it will usually issue into a patent within a few months. If it is rejected, however, the Examiner will issue an “Office Action” explaining why the application is rejected. There are two major reasons an Examiner gives for rejecting the application. First, the Examiner might contend that the invention is not new enough when considering what others have already invented in the field. Second, the Examiner might contend that the application violates some of the formal Patent Office rules about the form and content of patent applications.

Amendment/Response

In response to a rejection by the Examiner, the inventor or attorney can file an “amendment” (also known as a “response”). The amendment is a legal document that either changes portions of the application, argues why the application should have been acceptable as filed, or does a combination of both.

If the application is rejected because of “lack of novelty”, two approaches can be taken in the amendment. First, if it seems that the Examiner’s reasons are faulty, arguments can be presented to show why the application should be permitted as it stands. Second, amendments can be made to the “patent claims”. The patent claims are legalistic sentences that define exactly what the patent would cover. Thus, the claims could be amended to cover a more specific invention. This narrowing of the claims might make the application more acceptable to the Examiner.

If the application is rejected because the Examiner contends that it violates Patent Office rules, changes often can be made to the application to comply with the Examiner’s demands. However, some defects in the application cannot be cured by amendment. For example, if the application did not contain enough detail about the invention when it was filed, no new information can be added to fix the problem.

Reconsideration

Once the amendment is filed, the Examiner will once again review the case and determine whether the application is allowable. If there are still grounds for rejection, the Examiner will issue another Office Action. At this point, however, the Examiner can make the rejection “final”. When the Examiner issues a “final action”, the inventor’s options are very limited. The rejection is by no means truly final, however, because the fight for a patent can continue if the inventor so chooses. One option is to appeal the Examiner’s decision to the “Board of Patent Appeals”. Another option is to file a continuing application.

Continuing Applications

If the patent application receives a “final rejection”, a new, “continuing” patent application can be filed.

A “continuation” is a new filing of a patent application that describes the identical invention as described in the earlier application. The continuation, however, is given the “priority date” from the earlier application. Because of this priority date, when reviewing the continuation application, the Patent Office will use the filing date of the earlier application to determine which new invention can be considered against it. So, if you file an application in 2000, a publication describes your invention in 2001, and you file a continuation is 2003, the Patent Office cannot use the 2001 publication against you when evaluating the continuation patent application.

If the inventor has improved the invention since the first application was filed, a “continuation-in-part” application is filed. The continuation-in-part describes the old invention and adds new features. As in the continuation application described above, the inventor gets “credit” for the information about the old invention that was contained in the earlier application. So the inventor can safely add improvements without losing priority to the invention which was filed earlier.

Allowance

Once an application is allowed, as previously mentioned, a patent will usually issue in a few months. First, however, an “issue fee” must be paid to the Patent Office. When the patent issues, a certificate of registration will be mailed to the inventor or the attorney. The patent gives the inventor the right to exclude others from making, using, or selling the patented invention throughout the United States. The inventor can obtain an injunction in Federal Court to stop unauthorized infringement of the patent, and can file suit to collect money damages from infringers. In addition, the inventor has the right to sell or license any and all rights to the invention, or to keep them all to himself or herself.

Maintenance Fees

Utility patent maintenance fees are due 3 1/2 years, 7 1/2 years, and 11 1/2 years after the patent issues. These fees must be paid to keep the patent in effect. Hopefully when these fees become due, the inventor is already realizing revenue from the invention, thus making the payments less painful. In the alternative, as the fees become due, the inventor can evaluate his or her situation to determine whether the fee is worth paying, or if the money would be better spent on another project or on refining a different invention.

Patent Term

A utility patent will expire 20 years after the patent application was first filed. For example, if the patent issues in 2 years, it will have an 18 year term. Design patents have a term of 14 years from issuance.