U.S. Patent Process Overview

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A PATENT gives ownership of an invention so you can prevent others from making, selling, offering to sell, importing, or using it. To qualify, the invention must be novel (not previously known) and non-obvious (unexpected in view of prior art and conventional knowledge).  For a U.S. patent, it cannot be disclosed to the public more than 1 year before your filing date, whether you or someone else disclosed it.

NON-DISCLOSURE AGREEMENT (NDA):  You should obtain a NDA from all parties to whom you disclose the invention.  Keep records of all parties who learn of your invention directly or indirectly from you.

A PATENT APPLICATION has a description and drawings of the invention sufficient for someone skilled in the field to make and use it.  It has claims specifying the boundaries of the invention over the prior art.  Broad claims provide broad coverage, but are not allowed if they encompass prior art.  Multiple claims may cover varying breadth, and can sometimes cover more than one embodiment within the same inventive concept.

FIRST TO FILE:  The first inventor to file an application has priority at the U.S. Patent Office over a later filer of the same invention, as long as the first filer did not learn of the invention from the later filer. Therefore, obtaining the earliest filing date is important.

GRACE PERIOD: You have a 1-year grace period after your first public disclosure of the invention to file a U.S. patent application.  Some countries offer a shorter grace period or none, so it is best to file before public disclosure if you intend to file in other countries.

PATENT TYPES: A utility patent covers a machine, product, process, or material.  A design patent covers the ornamental appearance if an item if unique and non-obvious.  A provisional patent application reserves a filing date for a utility patent application for 1 year.

A PROVISIONAL PATENT APPLICATION is less expensive than a utility patent, and can be faster to prepare. It is not examined, and never becomes a patent, but it reserves a filing date for one year if the invention is fully described. A utility application must be filed within the year to maintain this filing date.

EXAMINATION of utility patent application is done by the U.S. Patent Office (USPTO) to determine if the invention as claimed is operable, useful, enabled (sufficiently described), novel, and non-obvious.  A rejection of some or all claims is common based on a patentability search done by the Examiner.  Rejections can often be argued, which, along with claim amendments if needed, is called prosecuting the application.

A PATENTABILITY SEARCH is useful up front to indicate whether the invention is patentable.  If the concept is prior public knowledge, whether patented or not, you cannot patent it.  You can patent a novel and non-obvious enhancement to an existing product.  If a patent for the existing product is still in effect, your enhancement may be subject to that patent until it expires.  A good free search site is www.freepatentsonline.com

PATENT TERM The term of a utility patent runs from the issue date until 20 years after the filing date.  The term for a design patent runs from the issue date until 15 years after the issue date.

PATENT PUBLICATION: A utility patent application is normally published 18 months after the filing date.  This is usually good for the public and good for you.  You can request non-publication unless you also file a foreign application.  In any case, when the patent is allowed, it will be published unless it is a national defense secret.  The deal with patenting is that you give up secrecy in return for a limited monopoly during the patent term.

PATENT PENDING is the status of a patent application after it is filed and before it is allowed or finally rejected or abandoned.  You can mark a product "patent pending" during this time, including during the 1 year life of a provisional application. You cannot stop an infringer until a patent issues, but this marking warns the public that a patent may issue.

PATENT INFRINGEMENT: I cannot advise you on a specific infringement question since I am not a lawyer.  The U.S. Patent Office website above has a good overview.  Enter "about patent infringement" in the search field.

PATENT MAINTENANCE: Maintenance fees are due to the Patent Office periodically after the patent issues.  It is your responsibility to remember and pay these fees directly to the Patent Office.  I will provide information on this when your patent issues.

PATENT OFFICE FEES: The USPTO website lists current official fees.  These are subject to change.

FOREIGN PATENTING broadens your market control, but is expensive. You can preserve your right to file foreign patent applications for a period of time if you do not publicly disclose, publish, or sell your invention before filing a U.S. patent. Within 1 year after your first U.S. application on the invention, you can then apply for international patents if desired. Some countries do not allow the 1-year delay, and you must file in those countries before any public disclosure.

INFORMATION DISCLOSURE STATEMENT (IDS) is a list of prior art (prior technology related to your invention). You and I are legally required to disclose to the Patent Office all prior art known to us that could affect the patentability of your invention.  We are not legally required to perform a patent search, but we must disclose whatever we know or find that is relevant.

A PATENT AGENT is an application specialist who has passed an extensive examination (the same exam taken by patent attorneys), and can file patent applications for clients. They cannot provide legal advice other than using patent laws, rules, and procedures to obtain a patent application.  They cannot provide litigation, licensing, copyright, or trademark services.

AN OFFICE ACTION is a letter from the Patent Office stating their position on the status or allowability of a patent.

A CERTIFIED LETTER to yourself describing your invention is of little evidentiary value to the U.S. Patent Office.

A PATENT MUST NAME the inventor(s). An assignee can apply for a patent and/or can own one through purchase or employee agreement.  Some employers require you to assign any invention to them, so check any employer/employee agreements you may have.

APPLICATION CAN TAKE YEARS: The current average time from filing to the first examination of a utility application is about 16 months, and to issuance or final rejection is about 25 months.  You can accelerate examination for an additional fee (or free if you are 65 or older).  Then it takes about 4 months to first examination, and 10 months to issuance or final rejection

A PROTOTYPE OR MODEL is not essential to obtain a patent. However, I recommend that you build one if possible, in order to test feasibility. You may think of improvements in your design as a result of building a prototype. I may be able to suggest design improvements to minimize cost and maximize convenience, but I do not build prototypes.

DISCLAIMER: Information herein is subject to change. Do not base a final decision on it alone. Check with me or another patent practitioner and/or the U.S. Patent Office website for current information.

U.S. PATENT OFFICE WEBSITE has a wealth of information.  Please bookmark my website before leaving it.

© 2017 John V. Stewart 407-629-5240
 email: patents@jvsinventions.com
1308 Henry Balch Dr, Orlando FL 32810