The Basics of the Patent Process – Klinck LLC

The Basics of the Patent Process

The patent is the holy grail of intellectual property. Ask any inventor, entrepreneur, startup, or investor. Even an attorney would agree. So what does it take to get that 20‑year monopoly? Specifically, what does the application process look like? We will flesh out some of the big points below. (Note: We will only address non-provisional patent applications here, saving the optional provisional applications for another time.)

The Roadmap

Let’s look at the patent application timeline. It takes about an average of 24.6 months for the U.S. Patent and Trademark Office (PTO) to examine a patent application. If things go smoothly, it will take less time. If there are major challenges, it can take up to several years.

Assuming you conducted a thorough prior art search and you still want to move forward with a patent application, the application process is as follows:

  1. Filing of the non-provisional patent application.
  2. Assignment to a PTO technology center and patent examiner.
  3. Examination.
  4. First Office Action.
  5. Reply
  6. Additional Office Actions.
  7. Final action.
  8. Allowance and issue.

We discuss each one in turn below.

Filing of the non-provisional patent application.  The filing of a patent application is a significant achievement in and of itself because it requires quite a bit of preparation and money. To avoid any preventable hiccups down the road, your complete filing must include:

  • An application transmittal form;
  • A fee transmittal form;
  • An application data sheet;
  • The specification of your proposed patent (e., a written document with information such as the title of your invention, cross references to any related patent applications, background of your invention, a summary of your invention and description of any drawings, a detailed description of your invention);
  • The claim(s) of your proposed patent;
  • Any drawings; and
  • An executed oath or declaration (e., swearing that you believe that you’re the original inventor of the invention and that you authorize the application).

For more information about the fees that must be submitted, the PTO lists mandatory filing, search, and examination fees in its online schedule of fees.

Assignment to a PTO technology center and patent examiner. Once your application is filed, it will be assigned to a patent examiner in the applicable “technology center” which specializes in the general area related to your invention. Patent applications are generally processed in the order they arrive.

Examination. The patent examiner assigned to your application will review your paperwork and conduct its own due diligence to determine whether your invention is patentable. This includes looking to see if your invention is novel, has utility, and is not obvious based on all the prior art available.

First Office Action. Official written communication from the examiner is referred to as an “Office Action.” Office Actions are typically mailed to the attorney or agent on record. When the examiner officially reaches out to you regarding your application, there will be a cover page on PTO letterhead that states, among other items, your application number, filing date, examiner name, and mailing date. The next page is the substance of the PTO notice or communication regarding your patent application. Don’t fret if the Office Action objects or rejects some of your claims. Many patent applications need some work before successfully going through the PTO. The Office Action will include the examiner’s decision and his or her explanations.

Reply. You will have a specific window of time (usually three months) in which you can reply to the Office Action. The reply, which must be in writing, is your chance to challenge the examiner’s decision regarding your application and the reasoning behind the decision. Your challenge must include any amended claims and must be well supported. It must address all of the examiner’s objections and rejections.

Additional Office Actions. If your reply is timely made, the examiner will review your reply and amended claims and issue another Office Action in response. There may be some additional back-and-forth between you and the examiner if issues concerning your patent application remain.

Final Action. If the examiner ultimately concludes that any of your claims should be rejected, the examiner will issue a Final Rejection. There are a couple of options that you can take at this point. You may pay an appeal fee and file a legal brief before the Patent Trial and Appeal Board, which will determine whether the rejection was correct. Or, you can file a Request for Continued Examination or a Continuation Application (and pay the appropriate fees), requesting the examiner to review different claims of your patent application or review more evidence.

Allowance and Issue. If all goes well and the examiner determines that your patent application should be approved, the examiner will send you a Notice of Allowance and Fees Due. After paying the mandatory fees, your patent will issue “as soon as possible” and the PTO will send you a patent grant either to your attorney or agent or the inventor.

Overall, the above outlines the road ahead if you are considering a patent application. The patent application process is lengthy and can easily get complicated. Having some insight as to how the patent application process works should give you some sense as to how to prepare for the journey.

About the Author

I’m a lawyer and entrepreneur based in Washington, DC. My legal practice focuses on helping innovators, entrepreneurs, and startups navigate intellectual property issues. My books about IP Law are available for sale on Amazon.

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