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Getting a Patent in the U.S.

By Andrew

On 01, Jun 2013 | In | By Andrew

Getting a Patent in the U.S.

Getting a patent in the United States is an odyssey that begins when a patent application is filed. As I’ve written elsewhere, many clients begin with a provisional patent application, which remains pending for one year and then expires. Before the end of that year, if the inventor wishes to continue pursuing patent protection in the U.S., a regular utility patent application must be filed.

“Patent Prosecution” is the term used to describe the process of guiding a patent application through the United States Patent and Trademark Office (USPTO) until it is granted. The process begins in earnest when a regular utility patent application is filed.

Once a patent application is filed, nothing substantive happens for about two years. That’s the hardest thing for most inventors to accept — the USPTO is so backlogged that it takes them about two years (sometimes more) to look at newly filed applications. (There are ways of speeding it up, particularly for older inventors and those willing to pay a few thousand more dollars in filing fees.)

However, while the USPTO may not look at the merits of a patent application for quite a while, things are happening. Initially, the Office will check the received papers, confirm that everything has been received, and check that the patent drawings are suitable for publication. (If anything has been omitted, a letter will be sent providing a time period for reply.) Although it does not affect many patent applications, the USPTO also confirms that there is no technology in the patent application that would pose a national security risk if it were to be publicly disclosed. Three to four weeks after filing, an official filing receipt is sent.

Virtually all patent applications are published 18 months after the earliest claimed filing date. This ensures that the public has access to new technologies, and provides the inventors with a official publication of their patent application. Once an application has been published, the entire file of the patent application is public record and can be accessed online.

Eventually, the patent application is assigned to a patent examiner. Patent examiners are individuals with at least a bachelor’s degree in science or engineering who review the merits of the application for compliance with the patent laws. Each patent examiner specializes in a particular area of technology. By USPTO practice, work on a patent application is always supervised by a Primary Examiner, who has seniority and has been certified to act on behalf of the USPTO. In many cases, though, the actual work of examining a patent application is done by a junior examiner whose work is reviewed by the Primary Examiner.

Once an examination of the patent application has been made, the findings are communicated by way of an Office Action. Many patent applicants are disappointed by their first Office Action, because it more often than not rejects the patent application. According to some data I’ve seen, only 10-15% of patent applications are allowed for issuance as a patent on the first action. Personally, I believe that number is higher than what I’ve seen in practice.

More often than not, a rejection represents a dispute with the patent examiner over the wording of the patent claims, which describe the scope of the patent protection that is sought. Whenever a rejection is issued, a written response is required. The issues may be technical or legal, depending on the type of the rejection, and the process often involves differentiating the current invention from prior patented inventions. Depending on the situation, it may also be helpful to speak with the patent examiner by telephone, or appear in person at the USPTO for discussions.

This process sometimes repeats itself several times, with a final Office Action being issued and more responses written, before an agreement is reached on the appropriate scope of the patent claims and all other issues are resolved. Once that happens, the Office issues a Notice of Allowance, indicating that a patent will be issued if a final fee is paid.

There are many nuances to the patent prosecution process, it can take years, and the outcome is always uncertain. However, good patent searching, thoughtful patent application drafting, and a hands-on approach in communicating with the patent examiner can increase the chances of getting a commercially valuable patent.