Law Articles

Return to Law Dictionary Index

Procedure for Obtaining a U.S. Patent

What are the basic steps of obtaining a U.S. Patent?

One may conduct a patentability search to determine whether an invention is patentable. Next, a patent application is prepared and filed. The US Patent and Trademark Office, USPTO, examines the patent application and typically issues an Office Action. The patentee can either argue the examiner is wrong or make appropriate corrections in a document called an Amendment or a Response. This Office Action/Amendment process may repeat and typically occurs twice. The examiner then sends out a Notice of Allowance if the applicant successfully defines a patentable invention. The applicant pays issuance fees and files formal drawings and the USPTO issues the patent. Each case may vary, although most cases follow this course.

What are the considerations to conducting a patentability search?

A patentability search is not necessary. The reason for conducting a search is to determine whether the invention is patentable and if so what is the likely scope of protection. The principle counter consideration is the financial cost of the benefit. The USPTO will conduct a search upon filing an application.

Often inventors perform their own search of the market and then of patents in a public library. Legal counsel is brought in when quality becomes more important. The inventor should be specific as to what they would like counsel to perform. The search can come with a formal written opinion or simply be copies of the prior art found in the search. Costs vary depending on what the inventor wishes to have the patent lawyer perform as does the work involved and the quality of the information received from the patent attorney.

What is involved in preparing the patent application?

An inventor describes the invention to a patent professional, attorney or agent, and the professional drafts an application. This is typically done in the first meeting.

The patent lawyer or agent prepares the application based upon the inventor's description and models if available. This application is sent to the inventor for review. The inventor should be sure all information is disclosed and that the content is correct. The professional has the changes made to the application and sends out the application for signatures. The professional files the signed application with the USPTO. Formal drawings may be filed at this time or after the USPTO sends out the Notice of Allowance.

The inventor needs to identify all prior art, related products or methods known to the inventor at the time of filing. These need to be filed or the validity of any patent ultimately received can be jeopardized.

What is an Office Action?

The USPTO examines the application and in about 90% of the cases finds reason why the patent should not issue. Most professionals agree that an error, failing to ask for enough protection, occurred in those cases where the application issues without an Office Action. The examiner issues an Office Action usually in 6-9 months, although this timing can fluctuate considerably. The Office Action itemizes and explains the reasons why the application was not allowed. Typically, the USPTO issues two Office Actions before an application is allowed, however, the number of Office Actions may be higher or lower in uncommon circumstances.

How does the applicant respond to an Office Action?

The applicant has an opportunity to correct those points the USPTO considers to be basis for rejection/objection. Alternatively or additionally, the applicant can explain why they believe the examiner's assessment of the application is incorrect. The applicant's position is recorded and presented in a document called an Amendment or a Response. The applicant has three (3) months, extendable to six (6) months to file this document. The examiner sends out a Notice of Allowance if the applicant is successful in overcoming all objections and rejections.

What happens upon receipt of the Notice of Allowance?

The file is reviewed, formal drawings are made, if this has not already been done, and an issue fee is paid after receipt of the Notice of Allowance. A two (2) month period is provided to do this work.

Formal drawings are often delayed until this time to avoid paying the cost until necessary, since not every application is allowed. Although the national average of patents issuing per application is only about 50%, our experience shows competent professionals have a much higher success rate. We believe that pro se applicants and the former practice of submarine patents lower the average.

Non-obviousness is anything that is outside the ability of one having ordinary skill in the art. This is a subjective test that is difficult to explain and difficult to apply. In essence, one looks to two or more prior existing inventions to find the part of the invention in question. Typically, this can be found in all inventions. To combine the parts of different inventions there must also be a teaching to make the combination. Typically, this teaching is not present in patentable inventions.

About the Author:

N. Paul Friederichs, founder, started practice as a patent attorney in 1992 at a major Minneapolis, Minnesota law firm where he was the highest performing associate. In 1993, he started and developed Friederichs Law Firm with his father. Throughout this time Paul�s experience was heavily weighted toward litigation. He served such clients as Tonka Toys, American Harvest and Boston Medical.

He can be reached at http://www.angenehm.com/ and [email protected]

Return to Intellectual Property

Return to Law Dictionary Index