The patenting process in the US (Non-provisional (Utility) Patent Application Filing Guide)

After assessing the patent-worthiness of the invention, you are in a position to make it official. Applying for a patent is costly, lengthy and complex. What will likely keep you motivated is the exclusive right that awaits you and you'll enjoy at the end. The logistics involved in the process in the USA are listed below.

1. Costs involved: Filing a patent application will cost you around $1000, maintaining it will entail periodic expenses at 3.5, 7.5 and 11.5 years after grant of patent.

2. Time involved: Here are approximate durations in the patent process up to the time when you can legally and rightfully call it your own.

• Patent search - 2 months,
• Prepare applications - 1 month,
• Prosecution - 2 years,
• Issue of patent - 9 months

3. Processes involved: Efficient search, proper technical and legal format of application, provisional applications, amendments, and other legal formalities. A resource that claims to help you through the process in case you decide to go it on your own is a book "Patent it yourself" offered at http://www.nolo.com/resource.cfm/catID/FD8C060B-5DD4-4809-A53ECCF6BBD87E...

 

Step 1

Search and research your idea to ensure that it's not already there. A preliminary (free) search in the US Patents and Trademarks Office site www.uspto.gov, (the best place for exhaustive information related to patents and procedure) will yield you the facts you are looking for. Follow this up with an official search using the auspices of the Washington Patents Office. If resources permit, you may use the services of local patent experts. http://www.parkerip.com/searchpatent.asp is another search option, where you can search US and Europe patent databases.

Step 2

Patents can be obtained, in parallel or otherwise, in more than one country, if so required. Suppose you see a market for the invention / ultimate product in a foreign country, you'll need to find out that country's patenting procedure for foreign patents. But be prepared for (further) delays.

Step 3

Understand beforehand that the process is highly involved and specialised. While it's not impossible to bag your patent all by yourself - searching, applying, processing, pursuing - it's often meaningful to hire a patent expert (attorney) to take you through the process on a turnkey basis. It will certainly be more expensive, but you'll save on time and effort needed for legal formalities.

Step 4

Prepare your application as exactly required by the Patent office. The USPTO link http://www.uspto.gov/web/forms/index.html provides all pertinent forms. The application should be so self-sufficient and complete that it should be possible to realise or reconstruct your idea from the details (drawings, diagrams, figures, tables etc) you provide. If you are filing your application on your own, you can use successful past applications to guide you in both the technical and legal aspects. Typically, the application will include sub-parts, detailed descriptions, attributes and differences / improvements over prior art, aspects of the patent claim, and an oath / declaration signed by you.

Step 5

File the application accompanied by the filing fee. Check with the Patent Office for current / revised fee structures - http://www.uspto.gov/go/fees/. The fee to be paid will vary with the size of the patentee (small entity / individual or bigger organization). The prosecution phase begins at this stage; when the applicant has to be ready to submit amendments and changes that may be required during the review. At this stage, if you wish, you can file for grant of patents by one or more foreign countries at their respective patent offices, or in any case, within a year.

Patent prosecution process that is usually followed by the patent office includes

• Formalization of application,
• Establishment of a prior art search report,
• Publication after a year and a half from earliest filing date,
• Review by the Examining Division and any modification to the claim language,
• Ultimate grant of patent and its publication.
• Period far challenges, if any, against the patent grant.

Step 6

Await a Notice of Allowance from the patent office. Once this is obtained you can finalise the documents as directed by the patent office and remit the patent issue fee.

Step 7

Once the patent is granted, be prepared to pay the issue fees and the periodic maintenance charges.