The Patent Application Process

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What’s a Patent?

A patent is a grant by  the U.S. Patent and Trademark Office (USPTO) that permits an inventor to exclude others from making, using or selling the patented subject matter (that is, the invention, design or plant) throughout the United States. In other words, the patent owner gets a U.S. monopoly on the patented invention—a powerful property right. Alas, getting the USPTO to grant a patent is a rigorous, time-consuming, and often complex procedure.

Before Filing

Before filing an application, the applicant must perform a patent search to ensure that the invention described in the application does not already exist. A patent will not be issued if the invention was known or used by others in this country or patented or described in a printed publication in this or a foreign country before the date of filing the patent application. In addition, the USPTO will not consider an invention to be novel if the application for the patent is filed after sale, public disclosure, use, offer of sale in the United States or is patented anywhere in the world.  

Filing for a Patent

Assuming the inventor has met the standards of patentability, the inventor can either file a regular patent application or a provisional patent application or “PPA,” (in which case the regular patent application must be filed within a year  of the PPA filing). The PPA is discussed in more detail below. To file a regular patent application, the inventor must prepare all of the elements of the application. The application be filed by overnight mail or using the USPTO’s EFS-WEB system. The application’s filing date is the date that the USPTO receives the application. Here’s an article explaining what goes into a typical utility patent application. Although all of these elements are important and essential for obtaining the patent, the key elements are:

The Specification

The specification consists of several elements: a title, cross-references to any related applications, a background and summary of the invention, a description of the drawings, a detailed description of the invention and how it works, the claim or claims and an abstract. The purpose of the specification is to sufficiently disclose the invention so that an individual skilled in the art to which the invention pertains could, when reading the patent, make and use the invention without the necessity of further experiment.

The Claims

The patent claims define the boundaries of the invention in the same way that a deed establishes the boundaries of real property. There are two different types of claims that are filed in a patent application. The first and more important type is called an independent claim, and broadly determines the scope of the invention.  The second type is a dependent claim that is narrower but incorporates the independent claim. For example, the independent claim may describe the invention but the dependent claim may describe the type of material of which the invention is  comprised. The arcane rules of patent drafting require that the claims use only one capital, one period and no quotes or parentheses

The Drawings

Drawings of the patent are required if such drawings are necessary to understand the subject matter of the patent. If a drawing is necessary, it must be included with the application or a filing date will not be granted. Patent drawings have strict standards as to materials, size, form, symbols and shading. Patent drawings are usually accomplished by experienced mechanical artists. However, with the advent of computer animated drawing programs (CADs), some patent practitioners have begun preparing their own drawings.

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The Examination Process

It takes approximately 18 months to two years for the USPTO to process a patent application. On the average, the USPTO takes two actions during the processing period. Usually, the patent examiner determines that the claims are too broad and requests that the applicant amend the claims to more narrowly define the invention. The notice from the patent examiner may require more research in order to examine the patent references cited in the examiner's letter. The applicant is given three months to prepare an amendment. However, an extension of an additional three month period can be obtained upon payment of a fee. Although the claims can be amended, the drawings and technical statements cannot be altered if the change involves new matter. If possible, the applicant will prepare claim amendments that satisfy the patent examiner. If the amendment does not result in the allowance of the patent, the examiner may issue a final rejection or action. At this point, the applicant will typically either:

  • correct the claims according to the examiner's request or submit a narrower claim;
  • attempt to persuade the examiner to reconsider; or
  • appeal the matter.

If it’s approved ...

If the patent examiner approves the application, a Notice of Allowance is issued and portions of the patent will be published in the USPTO's online publication known as the Official Gazette. The purpose of the publication is to provide current information about patents including patents available for license or sale, patents granted during the publication period, as well as changes in patent law or regulations. After the Notice of Allowance, the applicant must pay an issue fee. Upon receipt of the issue fee, the patent will  be issued.

Learn more about Filing a Patent Applications.

Provisional Patent Applications

A provisional patent application is a short, informal document containing text and drawings that describes how to make and use an invention. It that establishes an effective filing date for an invention and enables an applicant to use the term ‘patent pending' on the invention.’ The PPA expires unless a regular patent application is filed within a year of filing the PPA. The PPA can be filed by overnight mail, via the USPTO’s EFS-WEB services, or by using an online services such as Nolo’s Online Provisional Patent Application.

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