If you have a patentable invention (see FAQ post: Can I Patent My Invention?) and decided what type of patent application to file (see FAQ post: What Type of Patent Application Should I File?) you are likely curious about what steps need to be taken to patent your invention. This post will help explain the various stages of the patent process.
The first step to patenting your invention is preparing the patent application. Depending on whether you are filing for a design patent or a utility patent, there are different application requirements concerning the written description, drawings and claims. In either case, the important part of the preparation stage is effective communication between the inventor and the patent attorney. The inventor must be conscientious of disclosing all of the relevant details of the invention such that the § 112 enablement and best mode requirements are met (see FAQ post: Can I Patent My Invention?) and the attorney must be conscientious of understanding the invention such that meaningful claims can be made in light of any known prior art. How the information is coordinated is up to the inventor and patent attorney.
Another important step in the preparation process is identifying the inventors who contributed to the claimed invention. Listing all of the true inventors is a requirement, which, if not met, can invalidate the patent.
Prior to filing the patent application, it is the inventor’s duty to review the application and confirm the invention is adequately disclosed. This is a critical stage as, once the application has been filed, the initial disclosure can no longer be amended. If it is later determined that critical information has been left out of the filing, the only meaningful chance to rectify the issue may be to file another patent application, along with another set of filing fees.
The particular filing requirements vary depending on the type of patent application filed, but, for example, a nonprovisional utility patent application must include: a specification, including at least one claim; drawings, if necessary; an oath or declaration; and the required fees. Preferably, the nonprovisional utility patent application would also include the corresponding transmittal forms and application data sheets. An application that meets the filing requirements is awarded a filing date and application number, which are both provided in the Filing Receipt issued by the United States Patent and Trademark Office. Once a filing date is secured, the claimed invention is officially “patent pending.”
The patent filing fees required by the United States Patent and Trademark Office vary based on the size of the application, the number of claims, the manner in which it is filed (i.e., paper filing vs. electronic filing) and whether the applicant is a small entity or not, etc. The filing fees are reduced in half for small entities. Generally speaking, a small entity is an individual, a small business (500 or fewer employees) or a non-profit organization subject to certain limitations. For a frame of reference, typical filing fees may be in the range of $1,000, or $500 for small entities.
After the patent application has been filed, the United States Patent and Trademark Office assigns the application to a patent examiner who is responsible for reviewing the application, searching for relevant prior art and making any objections and rejections that can be made against the patent application in an office action. It is then up to the inventor and patent attorney to respond to the examiners objections and rejections to demonstrate the patent application has met all of the requirements of patentability (see FAQ post: Can I patent my invention?). There are often several rounds of back and forth with the patent examiner before the application is determined to be patentable and in condition for allowance, abandoned by the applicant or the final rejections are appealed.
The prosecution process can be lengthy, often several years. Depending on the number of responses required to put the patent application in condition for allowance, the process may be expensive as well.
When the United States Patent and Trademark Office determines a patent application is patentable, it sends a Notice of Allowability to the applicant indicating that the patent application is in condition for allowance. The Notice of Allowability may include requirements to be met before the patent issues, but the requirements are typically formalities rather than substantive matters (e.g., corrected drawings, substitute oath or declaration, etc.). In response, the applicant may correct any formalities and pay the issue fee required by the Patent Office. The issue fee for a utility patent is currently $1,510 and the issue fee for a design patent is currently $860. As with many patent-related fees, the issue fee is reduced in half for small entities.
After receiving the issue fee payment for the allowed patent application, the Patent Office assigns a patent number and issues the patent. The newly issued patent is published online and in the Official Gazette of the United States Patent and Trademark Office. The Official Gazette publishes weekly on Tuesday.
After a utility patent has issued, the United States Patent and Trademark Office Utility requires payment of maintenance fees to maintain the patent in force. Design patents do not require any maintenance fees. The maintenance fees are due 3.5, 7.5 and 11.5 years from the date of the original patent grant. The current maintenance fees schedule is $980 at 3.5 years, $2,480 at 7.5 years and $4,110 at 11.5 years. As with many patent-related fees, the maintenance fees are reduced in half for small entities.