The United States patent system defines several types of patents: utility, design, and plant. Utility patents are by far the most common type, followed by design patents. This article explains the basic steps to obtain a U.S. utility (nonprovisional) patent. Stay tuned for future articles covering alternative steps provided in the U.S. patent system.
The first step for many inventors is to file a U.S. provisional patent application (US PROV). This is an optional step in the U.S. system. A US PROV is arguably the fastest and least expensive way to initiate the patent process.
The act of filing a US PROV establishes a filing date with a one-year expiration deadline for the subject matter it discloses. Once a US PROV is filed, its subject matter may be disclosed to others, and products may be marked "patent pending." The expiration deadline sets a time period in which to establish proof of concept, build a business plan, obtain funding, license or sell the US PROV, and the like, before committing additional resources to a formal US NPROV.
The US PROV is not examined, nor does it directly result in a U.S. patent. Instead, the US PROV serves as a priority document, or predecessor, to a subsequently filed patent application with a priority claim to the US PROV. The subsequent patent application must be filed before the one-year expiration deadline of the US PROV. Failure to file a subsequent patent application by the one-year expiration deadline will result in loss of the US PROV filing date, although under certain circumstances, the subject matter can be filed again with a later filing date.
There are circumstances in which it may make sense to skip the optional step of filing a US PROV, and file a US NPROV instead. Some examples include a relatively well-developed concept (particularly in a core competency about which much is known), an urgent need for an issued patent, actual or perceived higher value of a US NPROV for licensing, sale, or corporate valuation, actual or suspected infringement, and the like.
Assuming a US PROV was filed, the second step is to file a U.S. nonprovisional patent application (US NPROV), with a priority claim to the US PROV, before the one-year expiration deadline of the US PROV. Preparation of a US NPROV should start one to two months before the one-year expiration deadline of the US PROV, and the US NPROV should be filed at least a few days before the deadline.
Within a few weeks after filing, the US NPROV will be subjected to a formalities review. The USPTO may require correction of the application or submission of documents if deficiencies are found, such as informal drawings, typographical errors, discrepancies between the drawings and the written description, missing papers, and the like.
After formalities review, the typical US NPROV will wait in queue for approximately one to three years after filing before it is taken up by an Examiner for consideration. However, this queue time varies widely, and may only be a few weeks. No activity occurs during queue time. The queue can be shortened to a few months by paying additional fees at the time the US NPROV is filed.
The Examiner's role is to rigorously evaluate the US NPROV for formalities and compliance with U.S. patent laws and rules. This includes evaluating the claims in the US NPROV in view of the disclosure found in the prior art - those references which pre-date the US NPROV. The Examiner frequently finds some grounds for objections and/or rejections, and sends the Applicant(s) a written Office Action documenting those objections and/or rejections and setting a deadline for the Applicant(s) written response.
Each time the Applicant(s) respond to an Office Action, the Examiner re-evaluates the US NPROV. If the response includes amended claims, the Examiner will search for prior art relevant to the amended claims. If the Examiner finds grounds for objections and/or rejections, another Office Action is sent to the Applicant(s). Multiple Office Action/response cycles may occur before the US NPROV is found to be allowable, or goes abandoned.
Each Office Action/response cycle, or round of correspondence, can take about six to nine months. In our practice, it is common to have two or three Office Action/response cycles, and sometimes six or more cycles. Thus, active examination (aka prosecution) typically takes about twelve to twenty-seven months.
Assuming that the US NPROV is ultimately found to be allowable, the Examiner sends the Applicant(s) a Notice of Allowance and Fees Due. After payment of the issue fee, the US NPROV issues as a U.S. patent, about two to five years after filing the US NPROV.
The term of a U.S. patent begins at the time of issue and normally ends twenty years after the earliest priority date (not counting the US PROV). However, maintenance fees must be paid 3.5, 7.5, and 11.5 years after issue in order to keep the U.S. patent in force for its full term. Failure to pay a maintenance fee by the corresponding deadline will result in expiration of the U.S. patent.
The first step for many inventors is to file a U.S. provisional patent application (US PROV). This is an optional step in the U.S. system. A US PROV is arguably the fastest and least expensive way to initiate the patent process.
The act of filing a US PROV establishes a filing date with a one-year expiration deadline for the subject matter it discloses. Once a US PROV is filed, its subject matter may be disclosed to others, and products may be marked "patent pending." The expiration deadline sets a time period in which to establish proof of concept, build a business plan, obtain funding, license or sell the US PROV, and the like, before committing additional resources to a formal US NPROV.
The US PROV is not examined, nor does it directly result in a U.S. patent. Instead, the US PROV serves as a priority document, or predecessor, to a subsequently filed patent application with a priority claim to the US PROV. The subsequent patent application must be filed before the one-year expiration deadline of the US PROV. Failure to file a subsequent patent application by the one-year expiration deadline will result in loss of the US PROV filing date, although under certain circumstances, the subject matter can be filed again with a later filing date.
There are circumstances in which it may make sense to skip the optional step of filing a US PROV, and file a US NPROV instead. Some examples include a relatively well-developed concept (particularly in a core competency about which much is known), an urgent need for an issued patent, actual or perceived higher value of a US NPROV for licensing, sale, or corporate valuation, actual or suspected infringement, and the like.
Assuming a US PROV was filed, the second step is to file a U.S. nonprovisional patent application (US NPROV), with a priority claim to the US PROV, before the one-year expiration deadline of the US PROV. Preparation of a US NPROV should start one to two months before the one-year expiration deadline of the US PROV, and the US NPROV should be filed at least a few days before the deadline.
Within a few weeks after filing, the US NPROV will be subjected to a formalities review. The USPTO may require correction of the application or submission of documents if deficiencies are found, such as informal drawings, typographical errors, discrepancies between the drawings and the written description, missing papers, and the like.
After formalities review, the typical US NPROV will wait in queue for approximately one to three years after filing before it is taken up by an Examiner for consideration. However, this queue time varies widely, and may only be a few weeks. No activity occurs during queue time. The queue can be shortened to a few months by paying additional fees at the time the US NPROV is filed.
The Examiner's role is to rigorously evaluate the US NPROV for formalities and compliance with U.S. patent laws and rules. This includes evaluating the claims in the US NPROV in view of the disclosure found in the prior art - those references which pre-date the US NPROV. The Examiner frequently finds some grounds for objections and/or rejections, and sends the Applicant(s) a written Office Action documenting those objections and/or rejections and setting a deadline for the Applicant(s) written response.
Each time the Applicant(s) respond to an Office Action, the Examiner re-evaluates the US NPROV. If the response includes amended claims, the Examiner will search for prior art relevant to the amended claims. If the Examiner finds grounds for objections and/or rejections, another Office Action is sent to the Applicant(s). Multiple Office Action/response cycles may occur before the US NPROV is found to be allowable, or goes abandoned.
Each Office Action/response cycle, or round of correspondence, can take about six to nine months. In our practice, it is common to have two or three Office Action/response cycles, and sometimes six or more cycles. Thus, active examination (aka prosecution) typically takes about twelve to twenty-seven months.
Assuming that the US NPROV is ultimately found to be allowable, the Examiner sends the Applicant(s) a Notice of Allowance and Fees Due. After payment of the issue fee, the US NPROV issues as a U.S. patent, about two to five years after filing the US NPROV.
The term of a U.S. patent begins at the time of issue and normally ends twenty years after the earliest priority date (not counting the US PROV). However, maintenance fees must be paid 3.5, 7.5, and 11.5 years after issue in order to keep the U.S. patent in force for its full term. Failure to pay a maintenance fee by the corresponding deadline will result in expiration of the U.S. patent.
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