Thursday, November 10, 2011

The Patent Process - Part 6 in our Patents and IP Series

This is the sixth in a planned 20-part series of articles on intellectual property protection. In future articles, we will also explore licensing and commercialization of products in later posts.

In this article, we will provide a brief summary of the patent process – what is involved and what to expect.

Assuming you need to file a utility patent (the most common type), the first thing you should do, in our opinion, is contact a qualified patent attorney or agent.  Patent laws are complex as is the filing process, and a good patent attorney or agent will know the intricacies involved and ultimately save you from making mistakes and missteps that would cost you money, time and possibly jeopardize your invention. 

The process that a good patent attorney or agent will walk you through, will include the following:

International protection?

Getting a patent in the United States means you have patent protection in the United States.  However, in and of itself, a US patent grants no protection in other countries.

The Patent Cooperation Treaty (PCT) established a union, which now includes most of the world’s nations, for “cooperation in the filing, searching, and examination, of applications for the protection of inventions.”[1]   The PCT reserves the right to file a patent in any of the 140+ countries that are members of the union, for a specific period of time.

By filing a PCT application you are giving yourself time to consider which additional countries you might want to file in as well. 

Provisional application?

One way to get a fast priority date and save money in the short term (but maybe not the long term) is to file a provisional application.  This consists of a “filing without a formal patent claim, oath or declaration, or any information disclosure (prior art) statement.”[2]

These are easier documents to file, can generally be filed faster and will ensure that the priority date is as early as possible. 

One of the good things about provisional applications is that it delays the need to submit a full application for 12 months, while protecting the priority date.  That will give you time to put together a good, solid complete application and to consider whether your invention is worth patenting and protecting for 20 years.

One of the bad things about a provisional patent is that it does not allow for any new matter on the invention.  So, if something comes up during the year that would apply to the invention, it cannot be added to the provisional application.  In addition, while it is less expensive to file a provisional application, and will generally cost less attorney’s fees to prepare and file, at the end of the day it will probably cost more in attorney’s fees to file the provisional, plus the full application later than if you just bit the bullet and filed the full application to begin with.

Other things to consider

There are some other things to consider, such as an expedited application, which your attorney or agent can discuss with you.  Once the application is completed and filed, the US Patent and Trademark

Office will send an acknowledgement that it received the application.  After that, it becomes mostly a waiting game.

An examiner will eventually analyze the application and will respond with an office action.  At this point, the inventor and the attorney or agent will need to respond to the office action.

If the patent is allowed, the applicant needs to pay the issue and publication fees, as well as any maintenance fees in the future.  If the patent is not allowed, the applicant may still be able to request a reconsideration or appeal. 

In summary, the single best piece of advice we can give is to contact a good patent attorney or patent agent.  In our opinion, the best way to find a good patent attorney or agent is to seek out the recommendations of colleagues.

In our next installment, we will discuss an overview of patent and intellectual property licensing.

[1]  The PCT’s website can be found here:

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