The Patenting Process

Not surprisingly, most people are not aware of what goes into obtaining a patent.  The following paragraphs describe the typical tasks involved in obtaining a patent in the U.S.

Patentability Search.  Prior to preparing and filing an application in the U.S. Patent and Trademark Office (USPTO), a patentability search may be conducted, but it is not required.  The search is designed to discover if any prior art exists that would render the invention unpatentable.  If the prior art search uncovers one or more prior art references that appear to render the invention unpatentable, then, for the relatively small price of the search, the inventor has discovered that a patent application on the invention would not likely succeed and can avoid further patent expenses.  On the other hand, if the search results are positive, then the inventor has attained some level of confidence for success in going forward with a patent application.  Beware that a positive search result is not an absolute guarantee of success in obtaining a patent.  There is always the possibility that more relevant prior art will be uncovered later in the process, such as during the USPTO’s examination of the application.

Patent Application.  To obtain U.S. patent rights, an inventor must file a patent application for the invention in the USPTO.  The application must be in a specific format that includes a background section, a summary, a detailed description, a claims section, and, in most cases, drawings. The description must be sufficiently detailed to allow someone “skilled in the art” of the invention to make and use the invention.  The claims define the legal bounds of the enforceable invention rights and therefore must be drafted very carefully.

Prosecution.  Once a patent application is filed with the USPTO, it is reviewed by an Examiner who forms a position as to whether the invention is patentable.  The Examiner explains his or her arguments in one or more “Office Actions.”  The time between application filing and receipt of the first Office Action is typically about 12-24 months, depending on the type of technology involved.  Quite often, the first Office Action is a rejection of the application for one or more reasons.  If the application is initially rejected, the applicant may respond by arguing against the rejection and/or amending the claims to avoid the issues cited by the Examiner.  After reviewing the applicant’s response, the Examiner will issue a second Office Action in which the application is again either allowed or rejected.  If the application is rejected again, there are other steps that may be taken, dependent upon the nature of the rejection, to convince the USPTO that a patentable invention is described therein.

Issue.  If the application is allowed, the USPTO requires payment of an issue fee before issuing a patent.  The patent issues approximately four months after the issue fee has been paid.  Usually it takes about 1½-3 years from the filing of an application until the final disposition (i.e., issuance of a patent or abandonment of the application) is reached, although in some cases it can take even longer.