As a patent lawyer, people commonly ask me about what it takes to file a patent for “an idea.” While there isn’t a one-size-fits-all approach, developing a patent filing strategy is crucial for inventors, entrepreneurs, and businesses alike.
This guide aims to demystify the patent filing process for provisional and non-provisional patent applications. The aim is to provide you with actionable advice and strategies to protect your inventions with patent application filings.
Whether you’re a serial entrepreneur or just created your first invention, we hope the following will help you understand the basics of a patent filing strategy. Then, you can work with an experienced patent law firm, like Schell IP in Boulder, Colorado, to develop a robust strategy and file your patent.
Understanding Patent Filing
Generally speaking, a patent filing is a legal process that involves dissecting an invention, preparing one or more patent applications, and then submitting the application(s) to the United States Patent and Trademark Office (USPTO). In the case of a utility patent application, this is an important step for securing exclusive rights to an invention.
Though it might seem excessive for simpler inventions and products, you should always work with a patent attorney to build and file your patent application. There are so many pitfalls and risks associated with improperly drafted, filed and monitored patent applications. Reputable patent attorneys are experts in intellectual property (IP) law, and they can help you craft a strong application strategy.
After you submit one or more patent applications, a patent examiner reviews the application and assesses if the invention is novel, useful, and non-obvious – three requirements for new patent approval.
Generally, there is a process of negotiation with the patent examiner. Commonly, patent application filers will receive at least one office action, which is written correspondence delivered to the patent attorney and responding to a particular patent application from a patent examiner, that explains why the claims – which define the scope of exclusive rights in the invention described in the patent application – do not meet the requirements for patentability.
In such a case, the office action will contain a rejection. Often, after effective negotiation with the patent examiner, which may include oral and written communications between the patent attorney and the patent examiner, the patent attorney will overcome the rejection and receive an allowance respective to the claims within the patent application describing the invention.
Following allowance, the patent application can become an issued patent. With respect to the claims contained within the issued patent, the inventor gains exclusive rights to the invention for 20 years from the filing date of the patent application.
But, people inexperienced with the patent process often fail to recognize that a patent filing strategy is not just about protecting an invention; it’s also a strategic move.
A well-executed patent filing strategy can provide a competitive edge to a business or startup. It can also attract investors and increase the company’s value. As patent attorneys experienced with fundraising like those at Schell IP in Boulder, Colorado recognize, patent filings often are a prerequisite for investors before deciding to allocate capital to a founder or startup.
Other important patent filing considerations for those unfamiliar with the process should include:
- Knowing the difference between provisional and non-provisional patents
- Conducting a thorough patent search before filing
- Determining if your invention is patentable
- Understanding the role of patent drawings and specifications
- Writing patent claims that protect your invention effectively
Provisional vs. Non-Provisional Patent Filing
In the U.S., there are two types of domestic patent applications pertinent to utility patents: provisional and non-provisional patent applications. There is also an international patent filing option called a patent cooperation treaty (PCT) patent application, which leads to a national phase non-provisional application filing in the US (and similar analogous filings in other countries).
A provisional patent application can be thought of as a placeholder to preserve the critically important priority date associated with an invention. It allows inventors to file without a formal patent claim, oath, or declaration. It also establishes an early effective filing date – which establishes the date of priority to the invention in our “first to file” system – and allows the use of the term, “Patent Pending.”
A non-provisional patent application, on the other hand, is an application with several additional formalities examined by a patent examiner at the USPTO. It includes a detailed description of the invention and patent claims.
The key differences between provisional and non-provisional patent applications include:
- Cost: Provisional applications are generally cheaper to prepare and file.
- Examination: Non-provisional applications undergo examination, provisional applications do not.
- Patent Pending: Both applications allow the use of “Patent Pending”, but generally only non-provisional applications are examined by a patent examiner and can lead to an issued patent.
- Duration: Provisional applications last for 12 months before becoming abandoned if the applicant neglects to file a subsequent patent application, non-provisional patent applications, once issued, can remain in force as patents for 20 years from the filing date.
Understanding these differences is crucial as one application may make more sense for your invention and strategy. Often, a patent lawyer will recommend filing multiple provisional patent applications, for example, to capture various aspects of an invention, or to capture improvements of an invention over time.
Sometimes, it makes sense to combine one or more provisional, non-provisional, or PCT patent application filings with a design patent application, which protects the way an item looks (instead of how it works). If you have questions about the different types of patent applications or need assistance determining which is right for you, we recommend consulting a patent attorney.
The Patent Filing Process: A Step-by-Step Guide
Preparing and filing a patent is an intricate and complex process that requires careful planning and attention to detail. We always recommend consulting an expert patent attorney like the team at Schell IP in Boulder, Colorado when filing a patent application or building a patent strategy.
Here is an exemplary step-by-step guide to help you navigate the process:
- Preparation Invention Disclosure: Document your invention in detail. Include how it works, how to make it, and its unique features.
- Patent Search: Conduct a thorough patent search of existing patents. This helps to determine if your invention is novel and non-obvious. This sometimes should happen after you file an initial provisional patent application to preserve an early priority date.
- Patentability Assessment: Evaluate the patentability of your invention. Consider its novelty, utility, and non-obviousness. A patent attorney can help with this step.
- Prepare Patent Application: Have a patent attorney draft your patent application Include detailed descriptions, claims, drawings, and an abstract.
- File Patent Application: Have a patent attorney submit your application to the USPTO. Your patent attorney can file the application on your behalf.
- USPTO & International Patent Office Examination: The USPTO will examine your application. This process can take several years and generally involves strategic and persuasive communications among your patent attorney and the patent examiner at the USPTO or other international patent offices.
- Respond to Office Actions: Your patent attorney will consider and address any objections or rejections from the USPTO in the form of briefings containing legal arguments and amendments to the claims of your patent application known as “Responses to Office Actions.” This may require amending your application or arguing against the patent examiner’s rejections.
- Patent Grant: If some or all of the claims of your patent application are allowed by a patent examiner, you can request that the USPTO issue a patent grant. You will then have exclusive rights to your invention for a set period.
In general, the above process takes between 18-36 months, but can take shorter or longer in part depending upon the approach that you take to prepare your patenting strategy.
Strategies for Speeding Up the Patent Examination Process
As the above makes clear, the patent examination process can be lengthy.
One way to speed up patent examination is the Track One program offered by the USPTO. This program expedites the examination process for a fee. This might involve skipping the process of filing a provisional patent application, and first engaging the patent office by filing a non-provisional patent application with a request to expedite the process. If your request to expedite is accepted by the patent office (and various other requirements are met), you will receive a final decision on the patent application within twelve (12) months.
There are other programs available to expedite in other circumstances as well. For example, you can petition the patent office to make your patent application special based on your age or based on the status of your health.
In other cases, you can petition the patent office to make your application special because it relates to certain areas including: quality of the environment, development of energy resources, or terrorism. Your patent lawyer can help you determine whether any of these factors relate to your invention.
Another strategy is leveraging a tool called the Patent Prosecution Highway (PPH). The PPH speeds up the examination process for applications filed in participating intellectual property offices, if the invention is subject to an allowed patent application in such other jurisdictions.
Lastly, simply having a well-prepared and thorough patent application made by a professional patent attorney can also help accelerate the process. It reduces the likelihood of receiving excessive office actions, which can delay the examination.
Budgeting for Patent Filing: Costs to Anticipate Based on Data from the Latest AIPLA Survey
Patent costs can vary widely, and navigating the patent process involves more than just filing fees. The latest bi-annual survey from the AIPLA sheds light on the financial landscape of patenting, offering insights into both USPTO fees and average patent attorney fees across different stages of the process.
Average Patenting Costs at a Glance (from the AIPLA):
Pre-filing Professional Patent Search: The step of conducting a professional patent search typically ranges from $1,500 to $4,000.
Drafting and Filing:
- Biotechnology/Chemistry Patent: USPTO fees total $660, while average patent attorney fees for preparation and filing (of a non-provisional application) average $11,400.
- Electrical/Software Patent: Similarly, USPTO fees are $660, with average patent attorney fees for preparation and filing (of a non-provisional application) at $10,923.
- Mechanical: USPTO fees are $660, with attorney fees averaging $9,500.
Amendment/Argument after Rejection:
Costs here vary from $0 to $660 for USPTO fees and $2,300 to $4,000 for attorney fees per office action.
Examiner Interview:
This important interaction with the patent examiner can range from $1,000 to $2,000.
Miscellaneous Fees:
Additional charges for assignments, information disclosure statements, declarations, and more can amount to around $1,500.
Issue Fee Payment:
Finally, the issue fee payment is typically $480 for USPTO fees and final pre-issue response preparation averaging $1,500 for attorney fees.
It’s important to note that these costs are not fixed and can vary based on factors such as the complexity of the technology involved and the amount of back-and-forth with the patent examiner. On average, there are 4.2 office actions or rejections per utility patent, indicating the potential for a lengthy and iterative process.
Responding to USPTO Office Actions
During the examination process, the USPTO will issue office actions. These are official communications about issues with your application. If you have a patent attorney, one of their responsibilities is to respond to actions on your behalf.
Office actions may require you to make changes to your patent claims or provide more information. It’s crucial to respond to these actions promptly and accurately, as failure to do so can result in your application being abandoned.
Building a robust patent filing strategy is crucial for protecting your invention. Because filing a patent requires a deep understanding of patent laws, filing processes, and strategic considerations, consulting a patent law firm can set your patent application up for success.
Choosing the Right Law Firm
Selecting the right law firm is crucial in navigating the patenting process efficiently. Smaller law firms may be particularly suitable for companies seeking personalized attention and responsiveness from their legal representatives. In such firms, clients are valued as meaningful contributors to revenue, ensuring that lawyers are attentive and accessible.
While giant corporations often opt for large law firms to handle complex issues requiring significant resources, smaller corporations find that smaller law firms align well with their needs for dedicated attention and service.
Ultimately, finding the right fit between your company and your law firm ensures that you receive the attention and support necessary to navigate the patenting process effectively.
Ready to get started with your patent application? Book a free consultation with the Schell IP patent law firm in Boulder, Colorado now.
