United States: Procedures for Obtaining a U.S. Patent

Last Updated: December 19 2014
Practice Guide by Brinks Gilson & Lione

1. Patent Searches. The process of obtaining a U.S. patent begins with the preparation of a patent application. Generally speaking, it is desireable to conduct a patent search before preparing an application. This search seeks to find issued patents and other published articles that are related to the invention.

If the invention appears patentable after an inspection of the prior art, then the application may proceed.

Note that there is no requirement that a patent search be conducted before filing a patent application. There are often cases where inventors are very familiar with the activities of their competitors and of the market in their area of business.

With this knowledge, they feel confident that they are aware of the most relevant prior art without having to conduct a search.

2. Preparing a Patent Application. An inventor can prepare, file and prosecute a patent application, which is known as proceeding “pro se.” However, the USPTO urges applicants to seek out the assistance of a patent agent or patent attorney, who is registered to practice before the USPTO.

For both non-provisional and provisional utility patent applications, the application includes a written “specification” that is typically divided into the following sections:

  1. Title of the Invention.
  1. Cross-Reference to Related Applications, which specifically identifies any and all prior U.S. patent applications, both provisional and non-provisional, from which the applicant claims may benefit.
  1. Background of the Invention, which describes the “technical field” of the invention and provides information such as the known technology, problem solved by the invention and, perhaps, the failures of the prior art to either recognize or adequately address such problems.
  1. Summary of the Invention, which provides a brief summing up or general statement of the invention, and often points out the invention’s advantages and how it solves a problem or design challenge.
  1. Brief Description of the Drawings, which describes the subject matter illustrated in one or more accompanying figures.
  1. Detailed Description of the Invention, which describes the best mode of practicing the invention and provides a sufficiently detailed disclosure to enable those skilled in the art to duplicate and practice the invention, with cross-references to any drawings provided.
  1. Claims, which seek to describe the extent of the invention to be protected. A non-provisional patent application must include at least one claim; by statute, no claims need to be presented in a provisional patent application. This is the critical part of the patent application and defines the legal scope of protection being sought. These claims are not unlike a legal description of real estate.
  1. Abstract of the Disclosure, which summarizes the disclosed embodiments of the invention to facilitate searching for relevant prior art.
  1. Drawings, which illustrate examples described in the detailed description section.
  1. Oath or Declaration, in which each identified inventor states that he or she is an inventor of the subject matter recited in the accompanying claims and that they are making or authorizing the application for patent.

The non-provisional patent application typically is published for public viewing once 18 months have elapsed from the effective filing date claimed by the applicant. Once published, all papers related to the application, including those of any related U.S. patent applications identified, are available for public inspection.

In certain circumstances in which foreign patent filing is not sought, the applicant can request that the application not be published.

Unlike utility patent applications, U.S. design patent applications are not subject to publication at 18 months. Instead, design patent applications are published only when they actually issue as patents.

3. Patent Office Examination Procedures. After the patent application is filed and the USPTO assigns an application number and filing date, a non-provisional patent application is assigned to a patent examiner. This examiner conducts an independent patent search of the invention using prior art materials available to the examiner, including any prior art the applicant has furnished.

Specifically, the rules require the applicant and the patent attorney/agent prosecuting the application to disclose to the patent examiner all information “material to patentability” of an invention claimed in a non-provisional application.

This includes information of which they become aware while the patent application is pending before the USPTO. Information may be provided to the patent examiner in the form of an Information Disclosure Statement (IDS).

The examiner evaluates the application in view of the prior art and checks for compliance with various formal requirements.

Often, the claims presented in the application are initially “rejected” in a communication called an Office Action. The applicant’s patent attorney or patent agent, often with inventor assistance, must then file a reply to the examiner, pointing out the reasons why the claims, either as originally filed or with appropriate amendments that may include the presentation of additional new claims, should be allowed. Generally, if the application is rejected a second time, the applicant must either appeal the decision or request continued examination to avoid abandonment of the application.

In 2011, the average time to obtain a patent was about 34 months from the application filing date to patent issue date. Note, however, that in certain technology areas, and particularly in the biotechnology, computer software, and business method fields, average pendency is in excess of that average. While the USPTO is working to reduce the pendency period, the average time in 2011 for issuance of a first Office Action on the merits of the application was 28 months.

In order to protect against invention infringement during these delays, U.S. patent laws provide provisional remedies—generally a reasonable royalty—for infringement of claims that were both published in a pending patent application and subsequently issued in “substantially identical” form in a U.S. patent.

To have this remedy available, the alleged infringer must have had actual knowledge of the published patent application.

To find out more please access our IP Primer page.

This document is not intended to create an attorney-client relationship. You should not act or rely on any information in this document without first seeking legal advice. This material is intended for general information purposes only and does not constitute legal advice. If you have any specific questions on any legal matter, you should consult a professional legal services provider.

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The IP primer provides an overview of the complexities of IP law, is an excellent resource for both new and experienced professionals and available in a number of languages.
A collection of recent and significant publications by the Experts at BGL.
USPTO is the federal agency for granting U.S. patents and registering trademarks.
Administers the U.S. copyright law and advises Congress and other government agencies regarding copyright issues.
WIPO is the global forum for intellectual property services, policy, information and cooperation.
INTA is a global association of trademark owners and professionals.
The Intellectual Property Owners Association is a trade association for owners of patents, trademarks, copyrights and trade secrets.
The AILPA is an innovator, powerful advocate, and visible global leader in intellectual property.
AIPPI is an international organization comprised of business firms, executives, lawyers, educators, patent and trademark agents, intellectual property owners, and other persons interested in the worldwide protection of patents, designs, trademarks, trade names, know how, goodwill, copyright, and other intellectual property rights and the elimination of unfair trade practices.
BIO is the world's largest trade association representing biotechnology companies, academic institutions, state biotechnology centers and related organizations across the United States and in more than 30 other nations.
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