An Overview of the U.S. Patent Process

The patent process actually starts well before you file a patent application or seek assistance from a patent attorney. Every patent application starts with an invention, and every invention starts with an idea.  While ideas are not patentable, there will be a point in time when the idea you are working on comes into vision with enough detail to cross what I call the idea / invention boundary.  To have a protectable invention you have to be able to describe it with enough detail so that someone of skill in the relevant technical field can understand how to both make and use the invention.  Once you can do that, or once the patent attorney or patent agent you hire can, you are ready to file a patent application.

The first step in the patent process should really be a patent search.  Doing a patent search is really the only way to get a realistic idea about whether the invention is likely able to be protected.  There is nothing wrong with inventors doing their own preliminary search, and in fact that is very useful task.  At some point as your project proceeds it will be necessary to have a professional patent search done.  Only with a professional patent search will you really discover everything that can be found.  Just like a novice in your field would make mistakes, as a novice relative to patent searching you won’t find everything that can be found, including many things that really need to be considered during the drafting stage of a patent application.  After all, the whole point of a patent application is to articulate how the invention is unique.  How can  you do that without a comprehensive knowledge of what exists in the prior art?

In many cases, if not most cases, the patent search will suggest that a patent could be obtained.  The critical question, however, is not whether a patent can be obtained, but rather whether a useful patent can be obtained.  If you layer on enough specifics to any invention you will cross the point where the patent examiner will say your invention is new and non-obvious, and this is what some of the bargain-basement services in the industry do, but the outcome is a patent that has such narrow claims that it is hardly useful for anything other than framing and hanging on the wall.

[Invent-Patent]

For example, does a hair dryer with integrated radio, beer bottle opener, shaving cream dispenser that floats sound marketable?  Perhaps as a gag gift maybe, but the addition of random features for the sake of obtaining a patent is not usually wise.  I’ve seen terribly broad disclosures filed for an inventor with one extraordinarily specific embodiment.  Right away I can tell what is happening.  The patent attorney (or patent agent) is drafting the disclosure so that at least one claim, no matter how narrow, can be obtained.  Unfortunately, it does not typically make sense to layer on specifics unless those specifics contribute to marketability, and in most cases layer after layer of detailed specifics only makes the claim narrow and less valuable.  So if you are going to try and get around prior art to obtain a patent make sure the specifics added will provide an advantage.

After you get past the patent search stage and have decided to move forward you will likely consider filing a provisional patent application.  Provisional patent applications are not examined by the Patent Office, they are rather easy to file and the filing fee for a small entity (i.e., individual or business with 500 or fewer employees) is $110.  Provisional patent applications are a great tool, but only if done correctly.  You need not follow all the picky format details of the non-provisional patent application, but for the provisional patent application to be useful it needs to fully and completely describe the invention.  They are excellent to use when the inventor is still working on refining the invention.  You file the provisional patent application with the best description possible at that moment and continue development.

In almost all cases where I represent individuals or businesses with computer related methods (i.e., software) we file a provisional patent application.  One can actually be filed in advance of any code being written because the code is not the invention, the system is the invention.  Invariably as code is written more will be learned, the system will grow in complexity, and then we either follow a subsequent provisional patent application or we move into a nonprovisional patent application that claims the benefit of the previous filed provisional application.  Remember — the moment you file a provisional patent application you have a “patent pending” and can use those terms, but a provisional patent application is only as good as the level of detail in the filing.

In order for the patent prosecution process to begin a non-provisional patent application must be filed. A nonprovisional patent application is the application you file when you want the Patent Office to review the filing and proceed toward issuing a utility patent application. You can also file an International Application, but for sake of simplicity I am focusing this article on filing a patent application directly at the USPTO without invoking international treatment.

Once the nonprovisional patent application is filed it is preliminarily reviewed by the United States Patent & Trademark Office to determine whether all of the required parts of the application are present. In order to obtain a filing date the filing must include at a minimum a specification (i.e., the written portion of the application), at least one drawing if in fact a drawing is required to understand the invention (which is almost always the case and drawings should, in my opinion, always be filed) and at least one claim. If these three things are presented to the Patent Office a filing date is awarded and the application will move forward. Notice that the filing fee, among other things, does not need to be present at the time of filing. To be sure, the Patent Office will not do anything substantive until you pay the filing fee, but this can be paid later. In typical USPTO fashion, there is a fee applicable for the privilege of paying the filing fee after the initial filing.

In the event that the nonprovisional patent application submitted is missing pieces the applicant (or attorney of record) will receive either a Notice of Missing Parts or a Notice of Omitted Items. The Notice of Missing parts awards a filing date and explains what must be submitted and by when, and includes any fee (i.e., penalty) due for the privilege of this later filing. With respect to the Notice of Omitted Items, such a notice explains that you have referred to something in the application that was not included in the original filing. This is frequently due to oversight of some kind. You can try and correct this, but if what is missing is critical the only thing that you can do is file a new application or a continuation in part. This is because the original filing must be 100% complete in terms of what is disclosed. There can be no addition of new material after the initial filing unless a new application is filed or a continuation in part application is filed (in which case a new filing date is awarded to the new material).  It is, however, important to distinguish so-called “new matter” from adding claims.  New matter is defined by the totality of what is present at the time of filing the nonprovisional patent application.  If it is present anywhere in the filing it is NOT new matter.  So you can add claims during prosecution as long as those claims are legitimately covered by what was filed, such as in the specification or shown clearly in a drawing.

Once the patent application is complete, the fee paid, oaths or declarations of the inventor are on file, the next step in the process is the examiner determining whether you have a single invention in the patent application, or whether there are multiple inventions present.  At the US Patent Office you are entitled to a single invention in an application. One fee for one invention. If there is more than one invention present it will be necessary to elect one invention to move forward. You can always file what is called a divisional application on non-elected inventions without compromising your filing date, which said another way means your divisional patent application will be treated as if filed on the same day of the nonprovisional patent application provided the divisional patent application is filed before the nonprovisional patent application (referred to as a “parent application”) ceases to be pending, either because it is issued or abandoned.  There is nothing wrong with initially including more than one invention in the patent application, so if the inventions are related, such as a device and method of using, you might as well include both and let the Patent Examiner tell you if they want you to elect one to proceed with.

At this point your application is now ready to enter the examination phase. How quickly the examiner will get to review the application varies greatly depending upon the complexity and technological area of invention. For some types of inventions it could literally take 3 years to hear from the examiner. In some cases an examiner may get in touch with you substantially quicker.  If you are filing a design patent application you can receive a notice of allowance within 6 or 8 months, but for a nonprovisional patent application you should anticipate that the wait will be at least 12 to 18 months, but likely longer.

The first time you will substantively hear from the examiner is when the examiner issues what is referred to as a First Office Action on the Merits (FOAM). At this point you are now truly beginning what most would refer to as prosecution of the patent application. The examiner has told you what, if anything, he or she thinks is patentable, and explained (usually in abbreviated fashion) what claims are lacking and why. The applicant, or attorney, must respond to each and everything raised by the examiner in a response, filed no later than 6 months after the date of the First Office Action.  Notwithstanding the 6 month period to respond, the Patent Examiner will set what is called a “shortened statutory period” to respond, which for an Office Action is 3 months.  The shortened statutory period is the time period within which you can respond without having to pay a fee to respond.  After the shortened statutory period, which can be 1, 2 or 3 months depending on what the Examiner sends, you can respond up to 6 months but only if you request AND pay for an automatic extension.  Automatic extensions can get expensive, the cost goes up depending on how many months of extension you have to purchase.  They are called automatic extensions because the Patent Office has to grant them if you ask for them and pay for them.  You should, however, plan on doing things within the shorten statutory period in order to conserve funds and in order to get the maximum patent term.

The prosecution process sees applicants go back and forth with the examiner in order to attempt to persuade the examiner that there is subject matter that is patentable. This give and take process does have its temporal limits. After the response by the applicant or attorney, the examiner will issue a Second Office Action, which could be made final. After the examiner has rejected claims twice the examiner has the authority to make the rejections final. Final rejection, however, is not so final. There is still an opportunity to amend and make changes.  You have a right to amend to cancel claims, place claims in better condition for appeal, or amend the claims if you are going to adopt a suggestion of the Examiner that would make a claim patentable.  No other changes will be permitted by the Patent Examiner after Final Rejection. Thus, Final Rejection really signifies the entrance into the end game of a prosecution, whereby the prosecution of the application is winding down to a conclusion.

After prosecution is over you will either wind up with some claims being allowed, all being rejected or all being allowed. In many situations at least some claims will be allowed and some rejected. At this point you can make several choices. You can either have the allowed claims issue or file a Request for Continuing Examination (RCE). This RCE will restart prosecution. If you choose to have the allowed claims issue you can choose to file a Continuation or a Continuation in Part, which will allow for you to continue to try and persuade the patent examiner that certain claims are allowable. Both Continuations and Continuations in Part start a new application process from the beginning, as opposed to the RCE which continues forward on the same application. Use of the RCE, however, will prevent the allowed claims from immediately issuing.  Detailed and strategic use of Continuations and RCEs goes beyond this basic primer.  Look for another article to tackle those issues in greater detail.

Of course, along the way a decision can be made to appeal a Final Rejection by the examiner. Such an appeal goes to the Board of Patent Appeals, and perhaps ultimately to the United States Court of Appeals for the Federal Circuit, or the United States District Court for the District of Columbia. In certain contexts appeals can be the right decision, but they are very difficult. As a general rule most appeals are not successful, which makes appealing a difficult decision unless there has been real, identifiable error, or the Patent Office is holding fast to certain interpretations that would have negative consequences for a series of patent applications.  Pursuing an appeal at some point can make sense if there is real, identifiable error, because during the appeals process before the case gets to the Board there is a review to see if there is that type of error and whether it might be able to be fixed without a full appeal.  Again, detailed discussion of the intricacies of the appeals process goes beyond this basic primer, but suffice it to say that only a small fraction of applications are ever appealed to the Board.  Look for another article to tackle appeals in greater detail.

Good luck and happy inventing!