The Patent Application Process. Episode 7
These articles are near verbatim transcripts of my “Patenting for Inventors” podcast. Click here, or the podcast image to get to the podcast feed.
The Patent Application Process. Episode 7
In this episode I’m going over the process that happens from when you file your application, to getting your patent issued. There are lots of twists and turns that patent applications take, so I’m just going to be going over the the basics of the interactions you might have with the Patent Office once you file your application. In later episodes I’m going to go over more of the details of how to the respond to the Patent Office and other things that might happen to your patent application.
The Patent Office is officially called the United States Patent and Trademark Office, or USPTO, so when I talk about the Patent Office the USPTO, I’m referring to the same thing.
You file your application with the USPTO and have to pay some fees. The fees are just about to change so you always want to look them up on the USPTO website, but for small inventors its going to be usually $730 or $400 depending on what your income is, but you need to check the Patent Office for current filing fees, search, fees, and examination fees.
You’re going to want to file electronically through through the USPTO website because it’s less expensive and it’s just easier than doing paper filing. I’ll go through all the steps of actually filing the applications, the forms you need, and how to fill in the forms to file your application. Once you file your application you immediately get an application number and a confirmation code. You’ll want to keep these so you can log in and access your patent application file.
A few weeks later you’re going to get an official filing receipt. This doesn’t mean that they looked to see whether your invention is patentable, they’re just looking to see whether you filed it right, and filled out all the right forms.
How long it takes to actually get a real response from the patent office depends on the type of invention you have, but currently the average is about 16 months. I’ve gotten response from the Patent Office, which are called Office Actions, in 3 months. I’ve also waited 30 months. There are ways a few ways speed this up, which I’ll cover in later episodes, and it usually requires paying more money to the USPTO to get your application expedited and filling out some forms.
The Patent Office sends your application to a patent examiner that specializes in the types of inventions that you are trying to get a patent for, and the patent examiner will conduct their own search to see if your invention is patentable. After 18 months from your filing date, your application is usually made public so that anyone can read your application. Usually a patent application is published before you get your patent because the whole patenting process takes more than 18 months.
In an ideal world, the patent examiner looks at your patent application, thinks it’s patentable, and issues what is a called a notice of allowance. You pay the issue fees to the patent office which for small inventors is going to be either $480 or $240 depending on your income. A few weeks after that your patent will issue.
Even though I’ve said before that a patent lasts for 20 years from the filing date, you do have to be aware that you do have to pay the patent office to keep your patent active. If you don’t, your patent will expire before the 20 years. You have to pay what are called maintenance fees. You have to pay these at the 3.5, 7.5 and 11.5 year marks from your patent date, and range from a few hundred to a few thousand dollars. Once you finish the 11.5 year maintenance fee mark, you don’t need to pay fees.
Like I said, in the ideal world, the patent examiner looks at your application, thinks its worthy of a patent and it gets issued, but that usually doesn’t happen. I’d say 90% of the time, the patent examiner will find some reason to not issue your patent and this is where all the twists and turns happen in the application process.
All the details of what to do if your application gets rejected is found in what is called the Manual of Patent Examining Procedure, or the MPEP. You can find it online and it’s over 3,000 pages long. It is not a user friendly guide. There’s a reason why registered patent attorneys and registered patent agents the only ones that are allowed to file an application on behalf of an inventor. It’s because it’s a very complicated process and you have to pass a specific test on understanding MPEP.
I’ve mentioned both patent attorneys and patent agents, and the difference between the two is that a patent agent is someone that has passed the patent bar examination that is not an attorney, and a patent attorney is someone that has passed that same patent bar examination, but also is an attorney that has passed a state bar examination to practice general law as well.
In in order to even qualify to take the patent bar examination, you have to have a science or engineering background. This is why most regular attorneys aren’t even qualified to become patent attorneys and why they can’t file applications on your behalf. If you want to file an application by yourself as the inventor, you don’t need to take the patent bar examination, you can just file it yourself.
Both patent agents and patent attorneys can file applications on your behalf, but only the attorney can do other patent related things for you, like help you with your contracts, or give patent legal opinions, or draft licenses, and other things you might want that are related to your invention.
So as I said, what usually happens when a patent examiner reviews your application is that the examiner is going to find some problem with it. There could be tons of different kinds of problems and I’ll go over each of these types in separate episodes. The examiner might say that your application has more than one invention in it, which isn’t allowed.
She might say that it’s not a novel invention, or that it is just an obvious improvement. She might say that you haven’t adequately described your invention. It could be lots of things. You will get a letter from the Patent Office called an Office Action, which explains why your application has been rejected, and you usually have 3 months to respond, or 6 months if you want to pay some late fees. After that time, it goes abandoned.
The most common kind of rejection I see is an obviousness rejection. If you get one, you might look at the Office Action and agree with the examiner that your invention doesn’t deserve a patent because it is obvious over the prior art. Maybe the patent examiner found something that you were completely unaware of and convinced you that your invention doesn’t deserve a patent. If that’s the case, you can just ignore the office action and your application will go abandoned.
You have two other options. One is that you can respond back to the examiner and argue why your invention isn’t obvious. Maybe you’ll be successful and after you file the response the examiner will agree with you and send out a notice of allowance.
The other option is to change what you are claiming your invention is by amending the claims, and argue to the examiner that your modified claims deserve patent protection. You have to do all of this in writing, but if you want you can have a telephonic or in person interview with the examiner.
It’s possible that even after you change your claims and argue to the examiner that your invention should be patentable, that the examiner will not agree with you and issue a second rejection. The second rejection is usually called a final office office. Don’t be fooled by the word “final.” There are very few things that are actually final. When you hear the word “final” what you should be thinking is “the Patent Office wants me to pay more money.”
You can pay the patent office more money to to have the examiner keep reviewing your application. When you do this, this is called a Request for Continued Examination and currently the patent office fees for this are $300-$1700 depending on the size of your company or your income. This doesn’t include any attorney fees if you want someone to make all the changes and arguments for you.
You can keep getting rejected and keep paying money for as long as you want. At some point, you’ll probably come to the conclusion that you’re never going to convince the examiner that your invention is patentable so you can either abandon your application, or what you can do appeal the rejection to the Patent Trial and Appeal Board, which is known as PTAB. There are some other steps that you can do in between the patent examiner rejection and appealing, but I’ll cover those in later episodes.
If you appeal, what happens is that your patent examiner is no longer making the final decision about whether your invention is patentable, but goes to a board of three patent judges. You make your arguments to the patent judges about why the examiner was wrong and why you should be able to get a patent for your invention. The board may agree with you and your patent might issue, or the board may agree with the examiner, which is called affirming the decision, and say that your invention still isn’t patentable.
If you still believe that your invention should get a patent, then you can appeal the Board’s decision by either appealing to the United States Court of Appeals for the Federal Circuit or you can file a civil action against the Director of the PTO in the United States District Court for the District of Columbia.
If the Federal Circuit or district court affirms the rejection, then in theory you can appeal to the Supreme Court of the United States. It is is extremely rare that the Supreme Court will consider your case, so in practicality, whatever the Federal Circuit or District Court decision is, that’s going to be the final decision on whether you will get a patent for your invention.
There are so many twists and turns in the patent application process, which is why there are over 3,000 pages in the manual, so this episode barely scratched the surface of what goes on between you and the Patent Office, and I’ll cover more of these details in later episodes.
- Dec 9, 2017 What is Intellectual Property and What Kind do I Need? Episode 1
- Dec 11, 2017 Is My Idea Patentable? Episode 2
- Dec 13, 2017 Is My Invention New, Useful, and Non-Obvious? Episode 3
- Dec 18, 2017 Patent Searches and How to Find Similar Inventions. Episode 4
- Jul 4, 2019 Should I Tell People About My Invention and What are the Patent Application Deadlines. Episode 5
- Jul 5, 2019 How to Read and Understand the Parts of a Patent. Episode 6
- Jul 5, 2019 The Patent Application Process. Episode 7
- Jul 6, 2019 What is a Provisional Patent Application and Should I File One? Episode 8
- Jul 11, 2019 Claim Drafting Part 1 - Identifying Your Invention? Episode 9
- Jul 13, 2019 Claim Drafting Part 2 - Anatomy of an Apparatus or Device Claim. Episode 10
- Jul 13, 2019 Claim Drafting Part 3 - Anatomy of a Method Claim. Episode 11
- Jul 14, 2019 Claim Drafting Part 4 - Independent and Dependent Claims. Episode 12
- Jul 23, 2019 Claim Drafting Part 5 - 10 Quick Tips for Claim Drafting . Episode 13