This is the first part of two-part IP/patent blog series, in which I discuss the process for obtaining a patent. An excellent flowchart describing this process appears on the USPTO site, http://www.uspto.gov/patents/process/index.jsp and it is reproduced here.
Although the chart looks daunting, most of the first 6-7 steps involve planning/basic decisions and the last two steps relate to fee payment—after all the “hard” work has been done. So we need to focus our attention only on 5 or 6 of the 13 steps for now. Also note that this flowchart is full of referenced links; so just click on a link if you’re interested in more details on a given subject.
Step 1—is sometimes called a “prior art search”—and it is ALWAYS recommended. While your exact invention may not already be patented, learning what is “out there” is very useful, both at the beginning and during the patent process. You can search databases such as the USPTO’s and many other databases and/or you can hire someone to do searching for you.
Steps 2 and 3: We are concentrating now on a utility patent (as opposed to a design or plant patent). Also, since for the time being, we’re considering filing only within the US, move ahead to step 4. (We’ll get back to international filing in another blog.)
Step 4 involves the decision to file a provisional patent versus a non-provisional patent application. A provisional patent application (PPA) provides a lower-cost, first patent application filing option in the United States. Generally, a PPA takes less time and less expense to prepare and to file—and it gives the applicant a priority date. However, a patent CANNOT be obtained solely by filing a PPA. The only way to proceed to potentially obtain a patent is by filing a non-provisional patent application. Note that any first patent application filing (be it a PPA or a non-provisional patent application) determines the priority date, effectively starting the clock for an internationally-recognized 12-month priority period. If a PPA is the first filing, then the non-provisional patent application must be filed during the PPA priority period to maintain the priority date. If no further filing takes place during the priority period, the PPA–and its priority date–lapse.
Some inventors prefer not to file a provisional patent application, but instead write and file a non-provisional application from the start. If a non-provisional patent application is the first filing, there is of course no need for a PPA filing, and this saves the expense and effort in writing and filing it.
Step 5—expedited examination –is frequently useful, but we will skip this topic (returning to it in a future blog).
Step 6: There is no legal requirement to work with a registered attorney or agent to prepare and file your application; and you can write and file your application completely by yourself. This is called “pro-se”. However, working with a professional has at least 2 major advantages: (1) a registered attorney or agent is experienced and updated with the law, procedures, and forms; and (2) they typically can help you formulate a better patent application to protect your rights.
Working with a professional virtually always saves time and money in the intermediate-to-long run. In the case of legal/technical procedures typical of a patent application working with a professional can also mean the difference between losing or not completely protecting your rights.
Steps 7 and 8 (electronic filing) are recommended—as opposed to the older, traditional method of paper filing. In virtually all cases the attorney or agent files electronically for you. If you chose in step 6 above to do things yourself, you can file by paper (usually more expensive) or you need to obtain a USPTO certificate and customer number to file electronically. Especially for “first timers”, this, in itself is an additional reason to work with an attorney or agent to file for you.
Steps 8 and 11 involve the tactical steps of the patent process. We’ll continue with a discussion of these steps in part 2 of this blog.
Haim Factor is a Registered USPTO Patent Agent with over 15 years’ 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.