This is the second part of the two-part blog on the process for obtaining a patent. An excellent flowchart describing this process was introduced in the first article and the flowchart is reproduced here. Steps 1 through 8 of the flowchart were discussed in part 1 of this two-part blog. You can find the real “nitty gritty” of the patent process between steps 8 and 11 and it is discussed below.
Forms necessary for filing
By now, you’ve reviewed the prior art (step 1) and you have decided to proceed to file a non-provisional patent (step 4). A non-provisional patent application filing typically involves, at a bare minimum, 3 or more documents. They are:
- a signed declaration (also called an “oath”);
- an application, including: a specification; and one or more claims and drawings (usually a few drawings are filed); and
- an Application Data Sheet (ADS)
The declaration form and the ADS (as well as additional relevant patent forms) can be found at http://www.uspto.gov/forms/index.jsp . The general format and requirement of the specification, claims, and drawings—all of which make up the application—are specified in patent law. If an attorney or agent is filing the application for you, a signed power of attorney is also filed along with the application. Also, a USPTO filing fee is paid usually along with filing or soon thereafter. The typical minimum filing fees presently total $430, although filing fees can be higher for larger organizations, expedited prosecution, and/or for larger patent applications filings.
Once your application is successfully filed you will receive a patent application number. Initially, your application is checked by the USPTO to see that it conforms to overall formatting requirements. If there is a formatting or other problem, you will be notified of “informalities” and you will usually be given up to two months to file necessary corrections. If the application as-filed conforms, it is placed in line for a USPTO Examiner to examine the application—step 9.
Patent application examination and prosecution
The time to receive a response from the Examiner after filing is quite variable. A “fast” response is considered 9 months or less, whereas a typical response can be longer and can be well over one year. The vast majority of patent applications today go through a so-called “prosecution” process (steps 10 and 11), where the Examiner can point out other prior art and/or other reasons why parts of the application are objected to or are rejected. The prosecution phase, which can take one or more back-and-forth rounds with the Examiner and can span months or longer, involves carefully reviewing the Examiner’s comments and responding to them. This phase typically calls for the experience of a registered attorney or agent—as a skilled response can make the difference in receiving an allowance (i.e. receiving a patent—steps 11 and 12) or a rejection or abandonment (not indicated in step 11, but certainly possible).
The USPTO offers procedures to shorten/accelerate the prosecution process. One popular procedure, with which we are experienced and have had excellent results, is called Track 1. A Track 1 application allows accelerating the entire process from filing to final disposition within one year.
Steps 12 and 13 (paying fees) are part of a “happy ending” –meaning the USPTO has allowed and granted your patent!
Haim Factor is a registered USPTO Patent Agent with over 15 years of experience in patent drafting, prosecution, and overall IP strategies. His clients take advantage of his rich experience of over 25 years in business development of a wide array of B2B and B2C products and his experience with intellectual property protection both within the US and internationally.
He can be contacted at: firstname.lastname@example.org and at 302.200.1424.