A BRIEF OVERVIEW OF THE US PATENT PROCESS*

in Sci-IP by

Syam

The U.S. Patent and Trademark Office (USPTO) offers different application routes to meet varied goals of inventors and owners of inventions. These are:

  • Provisional Applications
  • Utility Applications (Non-provisional Application)
  • Continuing Applications
    • Divisional Application
    • Continuation Application
    • Continuation-In-Part Application
  • Design Applications (only for ornamental design of a functional item)
  • Plant Applications (only for plants)
  • PCT International Applications

 

Inventor or owner or assignee of invention can apply. Selecting the right application route is critical for securing the right kind of patent protection for your intellectual property. The following is a brief description of the various routes available and their approximate costs.

 

Provisional Application

  • Lower cost to file.
  • USPTO filing fee of $260 for a large entity and $130 for a small entity.
  • Patent attorney/agent fees range from $1,500-$2,000 depending on the complexity of the invention.
  • Gives an early effective filing date. Establishing an early effective filing date is critical since this determines what references and other disclosures qualify as prior art.
  • Claims covering the invention are not required.
  • Not examined or published.

 

Utility (Non-provisional) Application

  • The “actual” patent application filed by the applicant that gets examined.
  • USPTO filing fee of $1600 for a large entity and $730 for a small entity.
  • Patent attorney/agent fees range from $3,000-$5000 depending on the complexity of the invention.
  • Claims priority to the provisional application. Must be filed within one year of the provisional application filing date.
  • Requires the presence of claims covering the invention.
  • Gets published after 18 months from the priority date.

 

Divisional Application

  • Pursues unelected claims of a parent application as a result of USPTO Restriction Requirement.
  • USPTO filing fee of $1600 for a large entity and $730 for a small entity.
  • Patent attorney/agent fees from $1000-2000 depending on the complexity of the invention.
  • Claims priority to the parent application. Must be filed before the parent application abandons or issues.

 

Continuation Application

  • A continuation application pursuing unclaimed subject matter of the parent application.
  • USPTO filing fee of $1600 for a large entity and $730 for a small entity.
  • Patent attorney/agent fees from $1000-2000 depending on the complexity of the invention.
  • Claims priority to the parent application. Must be filed before the parent application abandons or issues.

 

Continuation-in-part Application

  • A continuation application filed by the applicant to pursue new matter that is not disclosed in the parent application. The new matter must be closely related to the subject matter disclosed in the parent application.
  • USPTO filing fee of $1600 for a large entity and $730 for a small entity.
  • Patent attorney/agent fees from $1000-3000 depending on the complexity of the invention.
  • Must be filed before the parent application abandons or issues.
  • Preserves priority for the old matter that was shared in the parent application.
  • The new matter gets the priority of the filing date of the continuation-in-part application.

 

PCT Application (also called “international application”)

  • International Application under the Patent Cooperation Treaty (PCT).
  • USPTO filing fee of $240 for a large entity and $120 for a small entity.
  • USPTO search fee of $2,080 for a large entity and $1,040 for a small entity.
  • USPTO examination fee of $760 for large entity and $380 for small entity.
  • Patent attorney/agent fees from $3,000-$5,000 depending on the complexity of the invention.
  • Standard one format, one language application that can be used as a basis for filing patents in more than 140 member countries of the PCT.
  • USPTO accepts PCT applications in English by a U.S. national or resident.
  • Applicant has 30 months from the effective filing date of the PCT application to enter individual countries and file national stage applications.

 

Patent prosecution is said to begin once a patent application is filed. The application is eventually taken up for examination. Effective communication with the patent office and with the examiner, with an understanding of the nuances of patent law and the patent language, assists in making prosecution a smooth process resulting in savings of time and money. Some of the prosecution steps that applications invariably go through are briefly described below:

Restriction Requirement

  • Examiner states there are multiple inventions in the patent application being examined.
  • Applicant must elect one of the inventions designated by the examiner. Non-elected inventions can be pursued in a divisional application.
  • No USPTO fees if filed within time period for reply, extensions of time available.
  • Patent attorney/agent fee range from $500-1000.

Non-final Office Action

  • This is the first communication from the Examiner regarding the claims. Examiner raises objections or rejections to claims in view of the prior art.
  • Applicant is required to provide detailed responses to overcome the objections/rejections raised by the examiner. This advances the prosecution towards allowance.
  • No USPTO fees if filed within time period for reply, extensions of time available.
  • Patent attorney/agent fees range from $750-$1500 depending upon complexity of response required to overcome objections and/or rejections stated by the examiner.

Final Office Action

  • Examiner may again raise objections or rejections to claims informing why the response to the non-final action does not place the application in condition for allowance.
  • Applicant is required to provide additional detailed responses to each and every objection and rejection raised by the examiner and advance the prosecution towards allowance.
  • No USPTO fees if filed within time period for reply, extensions of time available.
  • Patent attorney/agent fees range from $750-$1500 depending upon complexity of response required to overcome objections and/or rejections stated by the Examiner.
  • Response either places the application in condition for allowance or Applicant files a request for continued examination (RCE).

Notice of Allowance

  • Informs the applicant that the patent is ready for issue.
  • USPTO issue fee is $960 for large entity, $480 for small entity
  • Patent attorney/agent fees $500.
  • After the application grants, you get 20 years of patent term from the filing date.

Maintenance Fees

  • Fees associated with maintaining the patent in force after issuance, late payment due if payment within 6 months after fee is due
  • 1st fee (due at 3.5 year): $1600 for large entity, $800 for small entity
  • 2nd fee (due at 7.5 year): $3600 for large entity, $1800 for small entity
  • 3rd fee (due at 11.5 year): $7400 for large entity, $3700 for small entity

 

Glossary of important terms

 

Abandon                                  Applications are usually abandoned when responses that are due are not submitted in a timely fashion to the USPTO. Abandoned applications cannot mature into patents. Prosecution stops.

Allowance                                A notice of allowance from USPTO informs that the application meets all the requirements for a patent to be granted.

 

Applicant                                 Can be the inventor(s), owner of the invention or assignee of the rights of the invention.

 

Assignee                                  The person(s) who hold rights to the invention, for example, the employer of the inventor(s).

 

Election                                   Choosing one of the inventions in an application for prosecution as a result of restriction requirement by an examiner.

 

Effective filing date                  The earliest filing date that can be claimed for an application. The effective filing date may be (i) actual filing date of the application; (ii) the date of the earlier-filed application to which priority is claimed.

 

Extension                                 Formal requests for extensions of time for filing responses can be obtained for a fee. Cannot exceed more than 6 months.

 

Filing date                               The date when the application is submitted to USPTO.

 

Grant                                      Grant of the patent. This gives rights to an inventor “to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States” for a limited time in exchange for public disclosure of the invention when the patent is granted. A bond paper copy of the patent grant is ribboned, sealed, and mailed by USPTO.

 

New matter                              Subject matter not initially disclosed in the application. USPTO does not allow new matter to be added at any time during prosecution.

 

Objection/Rejection                 The examiner issues an office action objecting/rejecting the claims during prosecution, based on prior art. When the office action is issued, the objections/rejections have to be overcome in order to advance the prosecution. A critical and significant portion of patent prosecution.

 

Patent Agent                            A person who has passed the Patent Bar examination administered by USPTO for registration at the USPTO.

 

Prior Art                                 The universe of printed publications, disclosures, talks, and other information that are publically available.

 

Publication                              USPTO publishes all applications around 18 months. The contents of the application are publicly available after this. In certain cases, a request can be made to withhold from publication.

 

Response                                 Formal filing of communications with the USPTO within the required time periods. They have to fully meet the requirements of form and content. A critical and significant portion of patent prosecution.

 

Restriction requirement           Placed on an application when the examiner believes that there is more than one claimed invention in an application. The applicant has to elect one invention for the prosecution to progress.

 

Subject matter                         The subject to which the application and the invention is directed.

 

*Disclaimer: The above information in only meant to serve as a guideline to understand the complexity of the patent process. It is in no way complete.

 

Syam Prasad Anand, PhD
Founder, Mainline Intellectual Property
Ardmore, Philadelphia, USA.

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