The U.S. Patent Process

August 04, 2012

Americans are innovative people, coming up with new and better products and processes all of the time. In 2011 alone, the government received over 535,000 patent applications. People should understand the U.S. patent application process, referred to as "patent prosecution" by patent attorneys and others in the field, or risk losing the value of their inventions, or potentially worse, infringing on another person's patent.

Patent Searches

Before patenting or selling their creations, inventors must ensure that no one else has a patent for the same invention. (Remember, we patent inventions, not ideas!) There are two aspects to this subject, which are handled by two different types of overlapping searches by attorneys.

1) Freedom to Operate - Inventors who are patenting an invention must ensure that they are not infringing someone else's patent. When an attorney is employed to conduct this search, the result is a "Freedom to Operate" opinion or letter. This opinion, conducted by a qualified attorney, provides a defense any charges of willful infringement (and higher damages) to those who are sued for infringement. This is a matter of due diligence for any manufacturer, distributor or seller of new goods.

2) Patentability Opinion - Inventors who are preparing to patent their invention should first hire an experienced patent attorney to perform a patentability analysis, which results in a "Patentability Opinion". The goal is to determine if a patent prosecution process will be successful, but nothing is ever guaranteed.

Most inventors that we work with want and need a patent search that covers both patentability and the "freedom to operate" questions, but you should make sure that anyone you work with both knows the difference, asks you exactly what you are looking for, and provides you with the answer to the questions you were asking. Of course, we can only do our best in a reasonable amount of time for a reasonable cost. As a client, you would not want to pay $10,000+ for a patent search that searches every invention in every country; so be aware that the searches are always imperfect.

Prosecuting Patents

After determining that an invention may be patentable, the applicant must determine what type of patent application to file. There are three types of patents from which to choose:
-Utility patent: This is the most common type of patent, and is what most people are considering when they have an invention. It is granted for new and useful processes and methods, machines, articles of manufacture and compositions of matter. Software and business method patents are in this category.
-Design patent: A design patent is for ornamental characteristics to an article of manufacture. This type of patent addresses only the look of an item.
-Plant patent: A plant patent is for the creation of a new type of asexually produced plant. Not a lot of patent agents do this type of patent.


An applicant then needs to determine whether he or she wants to procure a U.S. patent only, or if he or she desires international patent protection. Many inventors begin by obtaining a U.S. patent before they seek international patents, but this risks giving up rights in many other countries. Inventors who are considering rights in other countries will often be best served by the Paris Convention Treaty (PCT) approach, an expensive process but allow inventors time to marshal their resources.

Filing a Patent Application

To obtain a filing date, we must file patent applications with specification, claims, and sufficient drawings to allow others in their industry to understand the invention. We also must file an oath in which the applicant swears that he is the inventor. And of course, fees are required at the time of filing.

An inventor can file a provisional patent application for a reduced filing fee and obtain an earlier filing date than would be possible if the inventor used a non-provisional application, but this approach is fraught with peril; inventors often skimp on details that cannot be added later without jeopardizing the invention. To be safe, the only real difference between a provisional and non-provisional patent application is that the provisional patents are not required to include claims. Provisional patents are only good for 12 months. During that time, the inventor must complete a non-provisional patent application to continue patent protection. I rarely see properly written provisional patents, and generally do not support their use. In all of 2011, our office probably wrote two.

Once an application is filed, either as a provisional or non-provisional, inventors my use the phrase "patent pending" on their devices.

Application Review

A U.S. Patent and Trademark Office will review the application to ensure that it meets formal requirements. Then there is a long wait, usually a year to three years, until the merits of the invention can be evaluated. The USPTO categorizes the application based on the application type and then conducts a complete examination of the application. The USPTO also publishes the application after about 18 months.

After the USPTO completes its examination, it decides whether to issue the patent. Typically, the USPTO denies the patent, and inventors must answer their rejections. Eventually, the USPTO decides that some claims may be allowed, or issues a final rejection. If it denies the patent, the applicant can appeal the decision.

Seek Legal Assistance

Obtaining a patent or appealing a patent denial can be a complicated undertaking. If you have an invention for which you need the protections a patent offers, talk to a seasoned intellectual property attorney who can guide you through the patent process.

Article provided by Norred Law PLLC
Visit us at http://www.norredip.com