Typical Patent Application Process
If the disclosed invention is a candidate for patenting in the United States, the typical process follows these steps:
- The patent attorney drafts the initial patent application,
which is subsequently reviewed by the inventor and OTD. The
patent application may go through several iterations until
it is as accurate and broad as appropriate.
The application must include:
- An enabling disclosure, which is a complete enough description to enable a person skilled in the field to duplicate, or practice, the invention. If the disclosure is not enabling, the application will be denied.
- The best mode of practicing the invention. If the best mode is not revealed and the patent is challenged in a lawsuit, a court may find the patent to be invalid.
- A numbered series of statements called claims, each of which sums up the invention in a single sentence. Each claim looks at the essence of the invention in a slightly different way. The claims determine what the patent covers.
2. The patent attorney files the patent application with the U.S. Patent and Trademark Office (USPTO).
3. The USPTO examiner conducts an initial review of the patent application for utility, novelty, non-obviousness and enabling disclosure, a process that may take a year or longer.
4. The USPTO examiner corresponds with the patent attorney about the application, issuing formal comments and opinions called office actions. Commonly, the examiner's first office action rejects some or all of the claims.
5. The attorney replies to the office action in writing within a set time frame, typically 90 days from the mailing date. The attorney may adjust the claims to convince the examiner to accept or allow them. These efforts are called patent prosecution.
6. A USPTO examiner reviews the application again. This review may take as long as one year, though it typically occurs more quickly.
7. In the event the examiner still wishes to challenge portions of the patent application, a second office action will be sent. Otherwise, the examiner can allow the application to issue as a patent.
8. If a second office action is sent, again the patent attorney, inventor and OTD industry liaison must prepare and file a response within the time frame set forth.
9. The USPTO examiner reviews the final office action. Again this review may take as long as one year, but is typically completed much sooner. The examiner's review of the response to the final office action will result in an allowance of the claims or final rejection.
10. If the examiner allows a patent application to issue, the USPTO will then issue a Notice of Allowance, and the text of the application will be published as the patent document. The applicant pays final issue fees and submits final drawings. The life of a U.S. patent is 20 years from the original filing date or priority date.
