Negotiate with the Patent Office

Posted on March 20, 2009 by Richard Gearhart

After the application is ultimately filed as a utility application, it will sit at the USPTO for about 12-18 months before it is reviewed by a Patent Examiner. The Examiner will do his or her own prior art search, and will typically issue several rejections based on form and/or on other patents.

This is referred to the “prosecution phase” of the patent process. It can be thought of as a negotiation with the Examiner over the allowability of the application and the scope of protection.

Each time the USPTO issues a rejection, your patent attorney must prepare a response. Patent cases usually involve at least one response and frequently two. Your attorney should provide you with a copy of all correspondence to and from the USPTO.

There are other possibilities that may arise during the prosecution phase of the application which cannot be predicted with certainty in advance. These include restriction requirements, the filing of continuations, appeals, etc., though all can occur during a typical process. If the Examiner eventually allows the patent, then you will be responsible for paying an issue fee to the USPTO. Afterwards, your patent will likely have a term of at least 20 years from the date it is filed.

 

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File the Patent Application

Posted on March 19, 2009 by Richard Gearhart

If the results of your patent search are favorable, then you will need to draft the claims and, if necessary, have drawings prepared that accurately describe your invention. Legally you have the right to prepare your own application documents. However, to ensure that your idea has maximum protection under the law, it is particularly important that an experienced professional, such as a patent attorney, handle this step for you.

You can file the patent application as either a “provisional” or a “utility” application. If the application is filed as a provisional, then you will have one year to make modifications to the application. After you file a provisional application, it must be converted to a utility application within a year.

A provisional is best if you are still experimenting or think you would like to make changes. It may also “add” an additional year of patent term, i.e., 21 years instead of 20 years. The disadvantages are that it takes about three years for a patent to issue from the USPTO, and filing the provisional delays its examination for a year.
 

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