What Is the Procedure for Filing a US Patent?

Authored by:

Marco H. Santamaria

Marco H. Santamaria

Patent Attorney

All Posts by Marco

What Is the Procedure for Filing a US Patent?

Filing for a patent is procedurally different from filing for a copyright or trademark. Unlike copyright law, which protects creative works, or trademark law, which protects trade names, patent protection may be granted to the first inventor to file a patent application for an invention that is useful, novel, and nonobvious.

Filing for a patent is procedurally different from filing for a copyright or trademark. Unlike copyright law, which protects creative works or trademark law, which protects trade names, patent protection may be granted to the first inventor to file a patent application for an invention that is useful, novel, and nonobvious. Patents are filed with the United States Patent and Trademark Office, or USPTO, and are examined by specialized Patent Examiners. Here is a bit more about what the process looks like.

Hire a Patent Attorney

Patent agents and patent attorneys are registered with the USPTO to file patent applications on behalf of others. It is a separate licensing process from the state bar exams required to practice law. Patent agents and attorneys must have a technical degree, i.e., a science or engineering degree, to obtain registration before the USPTO. The patent examination, or prosecution, process at the USPTO is one of the most complex procedures known in law. It can be challenging or impossible to navigate the patent process on your own unless you are a patent attorney. The investment made in hiring an experienced patent attorney will be more than repaid by avoiding costly mistakes that can delay or even derail your patent. A patent attorney can help you consider your business goals and resources when determining whether or not filing for a patent makes sense. More importantly, a patent attorney has the requisite technical and legal experience to draft and negotiate your patent claims to obtain the broadest rights possible. A single word in the claims can make the difference between a valuable patent and a worthless patent.

Patentability Searches

Some inventors want to know their chances of success before they file a patent application. Conducting a patentability search will give you a sense of what your chances are of being issued a patent. It can also help you further develop your product based on features in existing patents. A patentability patent search also helps uncover potential competitors or business partners. Skipping this step can result in a lot of wasted time and money filing an application that is doomed to fail. A professional search typically takes at least a week or two, the time and cost of which depends on the complexity of your invention and how many technical areas it involves.

Determine the Type of Patent to Pursue

Different types of inventions and processes require different types of patents. Utility patents apply to innovations in products or procedures. Design patents are appropriate for protecting the appearance of a product rather than its function. A plant patent is designated for the development of new plant life. Your patent attorney can help you determine the right type of patent to pursue.

File a Provisional Patent Application

It is typically best practice to first file a provisional patent application once it is determined that you want to proceed with a patent application. A provisional patent application provides you with a year of patent pending status to develop your invention further and establish business relationships before committing to the expense of the non-provisional, or utility, patent application. A provisional filing helps to develop all the details of what you consider your invention and to secure an earlier filing date before you are ready to file a utility patent application. The full patent process averages between one and three years.

File the Nonprovisional Patent Application

Your utility patent application is filed within a year of filing the first provisional patent application. A utility patent application will be examined by the USPTO and is extremely formal. It consists of a specification, which consists of an abstract, background, and summary along with a detailed description and a conclusion outlining the ramifications and scope of your invention. It must contain the claims of your invention which define the scope of your rights and drawings of your invention and which must comply with strict rules. Once filed, you cannot add any new material describing your invention, so you want to work with your attorney to ensure that your utility patent application includes everything you believe is key to your invention.

What to Expect after Filing

Once filed, your patent application is assigned to a patent examiner. It normally takes at least one year before hearing anything from the USPTO (more often, two years), and any correspondence or requests from the patent examiner will go to your patent attorney. The majority of patent applications are rejected on grounds that your invention is not novel and is obvious based on its search of the prior art. Rejections can be overcome through a negotiation process called prosecution. Prosecution consists of responding to the rejection with arguments on legal or technical grounds and amending the claims to avoid any references cited by the USPTO. A patent attorney can help you navigate the negotiation process, and even minimize it by crafting a claim that is less likely to be rejected.

Don’t navigate this process alone. Peacock Law is here to help. Contact us today to have your questions answered by an expert.

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