Everything You Need to Know Before Filing a Patent in the United States

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patents in the USAre you a U.S. citizen or a company/inventor that wants to file a patent in the U.S.? Yes? Great.

The U.S. has one of the oldest, strongest, and most mature intellectual property (IP) systems for obtaining a patent—and a judicial system that enforces patent rights.

However, nothing worthwhile ever comes easy. Navigating the U.S. patent system is complicated, slow, expensive, even painful. So before you start your patent application, make sure you know what you’re getting into.

Side note: If you’re looking for information international patents, check out this article on how to patent your idea in multiple countries.

Do you really need a patent?

Before you start the filing process, you should ask yourself whether you really need patent protection. You should consider criteria like timing, cost, and type and subject matter of an invention. This article on figuring out whether you should patent your idea will help you think through all the variables.

Finished reading? Great, I’m assuming you have figured out that you want to go ahead with filing a patent to protect your invention.  The procedure is almost the same everywhere but the laws and the conditions vary from one country to another. Let’s have a close look at the patent filing process in the United States.

What’s the role of United States Patent and Trademark Office?

The United States Patent and Trademark Office (USPTO) is responsible for examining all the patent applications filed in the U.S. and granting patents to inventors. It also maintains one of the biggest patent databases where you can run patent searches and can access all the published patent applications and granted patents.

When you file a patent application with the USPTO, depending on the technology you’re using, it assigns a Group Art Unit (GAU) to your patent application, as well as a patent examiner to investigate whether your invention deserves a patent protection or not.

The patent examination process is the holy grail of obtaining a patent in the U.S. or any other country. The examination process begins when you file a non-provisional patent application (I’ll touch on the concept later in the article).

To file a non-provisional patent application, you can either file your patent applications on your own or use U.S. Patent attorney or agent. I suggest you consult a patent attorney. If you file a patent on your own and make mistakes, you may not be able to reap the benefits of your patent when the time comes, or it may be denied from the outset.  

What kind of inventions qualify to receive patent protection?

New and useful

I know you are wondering what exactly can be patented. A process or machine, or the manufacture or a composition of matter that is both new and useful can receive a patent protection. An improvement to an already existing idea can also get a patent protection.

Useable ideas with real, industrial application

Ideas themselves, however, can’t be patented. But if you describe your idea in a way that someone with technical knowledge of your domain, can make and use your idea, you may then be eligible for a patent. Further, it should have some industrial applications.

Novel and unique

Another condition is that your invention should be unique/novel. If your invention has been described by someone else in any form—written, video, audio, image, etc.—you won’t receive patent protection.

Non-obvious

Another important condition your invention must follow is called the condition of non-obviousness. This says that your invention shouldn’t be so obvious that someone who is technically well-versed would find it obvious.

For an example, if you insert a touchscreen controller on a table fan, it wouldn’t be considered as an invention by an examiner. Why? Because you would be combining two already existing ideas. Further, you can find such touchscreen panels on other consumer electronic devices like a refrigerator, or microwave. Keep in mind that determining obviousness is subjective, and I again suggest you consult a qualified patent professional for help.

What should you know about a patent application?

There are two types of patent applications:

  • Provisional application
  • Non-provisional application

While you don’t have to file a provisional application, you definitely need a non-provisional application to file a patent.

Provisional application

A provisional patent application is cheap to file. If you come up with an invention, you should file a provisional patent application as soon as you can so that you can claim the benefits of filing a patent application earlier.

You can file a provisional patent application without any patent claims, declaration, or prior art information. You’ll get 12 months to file a non-provisional application. After 18 months from the filing date, the USPTO publishes your application. You can use the application to sue if you detect an infringement.

Just remember to file your non-provisional application within 12 months.

How to file a provisional patent application at the USPTO

To file a provisional patent application yourself, you need to create three different pdf files. In the first file, describe your invention and if possible write a claim, and save it as specification.pdf. In the second file, include drawings related to your invention and save it as drawing.pdf. After that, visit this link to download and fill the cover sheet. Give it a name: transmittal.pdf.

After that, visit this link and follow the instructions. Depending on the size of your organization, the USPTO may charge you $70, $140, and $280 if you are a micro, small, or large entity respectively.

Non-provisional application

A non-provisional patent application is your main patent application. It should have all the claims, written description, drawings, etc., in it. A patent examiner examines a non-provisional patent application.

If you are on a tight budget, filing a provisional patent application on your own makes sense. However, in the case of a non-provisional patent application, it can be helpful to seek professional assistance to avoid costly mistakes.

How much does it cost to file a patent in the U.S.?

You can find the cost to file and maintain a non-provisional patent application in the U.S. here. Here’s the USPTO’s full fee structure as well.

Filing fees fall into two categories: basic and the additional fees. The additional fees can include search, examination, and issue costs which vary by application.

There are two types of claims—independent and dependent—that are the vital part of a patent document. An inventor describes his invention in claims to secure exclusive rights on the invention.

The independent claims are standalone claims that define an invention or an aspect of it. There could be multiple independent claims to define an invention completely. The dependent claims are claims that depend upon one or multiple independent claims.

The image below can help you decipher an independent and dependent claim in a patent application. In general, the first claim is always an independent claim. Read this article to learn more about patent claims.

The fees for a basic patent application cover up to twenty dependent and three independent claims. If your application includes more claims, you’ll pay additional fees. For example, if there are 25 dependent and four independent claims associated with your patent, you’ll have to pay for fees for your five extra dependent and one independent claim.

On average, a single patent application may cost you $15,000 to $25,000 depending on the technological complexity of your invention.

What happens after you file a non-provisional patent application?

After the filing, the USPTO is required to publish a patent application in its official gazette within 21 months of the earliest filing date—the date of filing a provisional patent application. If you skipped the provisional application and only filed a non-provisional patent application, then that filing date is what the USPTO uses.

After your patent application gets published, a patent examiner, depending on the technological area of an invention, gets assigned. Then starts the communication between your attorney and your patent examiner. This communication is known as “office action” and the process is known as “patent prosecution.”

During the patent prosecution phase, an examiner may reject your patent multiple times. These rejections will be either considered final or non-final rejections. A non-final rejection means that you will have another chance to make your case to the examiner. In this case, the examiner tells you why your patent can’t be granted for reasons, such as if your invention is too obvious, not-novel, or lacking any industrial application.

If you’re not able to change your patent examiner’s mind, after a few non-final rejections, an examiner will issue a final rejection. This will be your last chance. If you’re still not able to address the examiner’s objections, your patent application will receive a final rejection.

The USPTO is required to complete the prosecution phase of a patent within 32 months of the filing date. If you want to accelerate the patent prosecution phase of an application, you can opt for “Track One Prioritized Examination” that gets a response from patent examiner within 62 days. Costs for this accelerated consideration range from $1,000 to $4,000 based on the size of your company.

Is final rejection really final?

No! Even after getting a final rejection, you can re-open the prosecution phase and start over. You’d have to file an RCE (Request for Continuation Examination).

With every “office action,” the cost of filing a patent increases, both in terms of fees you pay to the filing office, and probably also in terms of your attorney’s fees.

Conclusion

Patent prosecution is a complex process with a lot of different steps. Some steps are easy while many are more complex for a first timer. Keep in mind that patent prosecution in the U.S. (or anywhere in the world) can proceed very slowly. Expect a lot of back and forth communication between you and a patent office.

Thus, filing a patent not only tests your invention but your patience as well. Having a prior understanding of what is going to happen next, how long a particular step may take, how much money you may have to pay, what alternatives are available, etc. can help kill the anxiety that can build up when you’re navigating such a complex system.

Through this article, we tried to shed light on most of the major steps so that it’s easier to navigate the process. And of course, we don’t want you to get anxious. Good luck!

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Kanika Sharma
Kanika Sharma

Kanika Sharma is a patent research analyst at GreyB Services. GreyB is a technology research and consultancy firm that helps Fortune 500 companies and top law firms across the world with its technological insights.



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