“I have an idea…”  Great! Let’s discuss how you can protect it.  

If your idea meets the eligibility criteria (as discussed in a previous article) for a patentable invention, then you’re ready to move forward with the patent application process. This IS a “process,” as opposed to the filing of one single application. There are many steps, most of which will be discussed in further detail in our future blog articles.  

Today, let’s get a 10,000-foot view of the entire patent application process.

The process for even the simplest patent applications nearly always takes more than a year, start to finish. Usually, it takes between 18 months to three years (or more) to completely navigate the patent application and examination process. It’s also advisable in most instances to retain an experienced patent attorney or firm to assist with this process, so going forward in this discussion, it is assumed that you are working with an attorney.

Pre-Filing Phase of Patent Applications

The first part of the application process, prior to the actual filing with the United States Patent and Trademark Office (USPTO), will feel like a “hurry up and wait” scenario. The bulk of the work for you and your attorney is done during the pre-filing phase of the proceedings. The attorney’s office will put together all of the parts that go with the patent application, including all exhibits, Information Data Sheets and oaths/declarations of the Inventors etc. During this time, you’ll likely be asked to provide the attorney’s office with additional information to be provided in the patent application filing and likely asked to review drafts of the patent application’s specification and claims. 

USPTO Submission and Fees

After the patent application is completed, it will be submitted to the USPTO by the attorney’s office, along with all required fees to accompany the application. You may wonder: what are the fees for filing for a patent? The USPTO filing fees can and do vary greatly, depending on how many “claims” (more on that in the future) are included in the invention, how many pages of drawings or illustrations of the invention you have included with the application and the type of patent for which you are applying. All affect the total amount of the filing fee paid to the USPTO.

What Is a Patent Examiner? 

Following submission to the USPTO, your patent application will be assigned to a Patent Examiner who is an expert in the particular field to which your invention applies. It is likely that your first communication from the Examiner will be in the form of a Non-Final Office Action. Office Actions are simply written correspondence from the Examiner that address one or more areas of the application that the Examiner feels need to be addressed and/or potentially modified by you and your attorney.  

Work closely with your attorney during this time to address the Examiner’s concerns in the Office Action, but the attorney’s office will be the entity that files the Office Action Response. Following the Response, the Examiner may or may not be satisfied that your patent application is ready to proceed to registration as a patent. If the Examiner is not satisfied, he or she will issue a Final Office Action. A Final Office Action may be the final rejection of your patent application if the issues addressed by the Examiner are not completely addressed and rectified at this point. Therefore, it is extremely important that you and your attorney work together to fully address and correct any parts of the patent application where the Examiner has concerns.  

Patents Require Patience 

As you may imagine, the back-and-forth of Office Actions and Responses can and does take many months of correspondence between the USPTO and your attorney. For most patent-related Office Actions, you have up to six months to file a Response with payment of the applicable fees. With these months-long windows for the time of filing of Responses to Office Actions, it becomes clear where the “years” part of the patent application process comes into play.

Now that you’re on the path of the patent application process, keep an eye out for future posts that discuss each step in more detail. If you need a patent attorney, choose one with the experience to guide you; Sand, Sebolt and Wernow has the knowledge you need. Our practice is devoted to intellectual property law. Talk to us today.