What is the Patent Application Process?

Plant Patent

A plant patent is granted to anyone who has invented or discovered and asexually reproduced a distinct and new variety of plant, algae, or macro-fungi. Bacterias and tubers, such as potatoes, are exempt and they cannot be patented. The important thing is that the new plant must be asexually reproduced. This means that the new plant is propagated without the use of fertilized seeds. For example, this would include root cuttings, grafting, and other methods of asexual reproduction. New varieties of fruit such as apples, pears, and grapes can be derived by cuttings and can be patented.

Step 4.  Getting ready to apply for your patent

Once you have determined what type of Intellectual Property protection you need, whether your invention is patentable, and what kind of patent is appropriate, you must develop a strategy for applying for your patent. Each type of patent application requires different applications, procedures, and fees.

How much will this cost?

The filing fees are determined by what applications you need to file and are extremely hard to predict. If you are attempting to file on your own and you file the wrong type of application it is highly unlikely that the USPTO will refund your money. If you work with an attorney your attorney will give you a clear idea about filing fees are due will even get you an estimated “total cost”. In addition, your attorney will help you determine if the potential profits from your invention are worth the patent prosecution investment. You can see the entire USPTO fee schedule here. 

How long will the process take?

This entire process generally takes about three (3) years. It often takes over a year to receive what the USPTO calls the “First Office Action Pendency.” This is the amount of time between when you first apply for the patent and when the USPTO replies and starts working with you on your patent application. Then there is a period where the USPTO may ask for updates, clarifications, and supplemental information and materials. This process may take several months to a year. The USPTO keeps track of their current workload, and you can see the average pendency, or length of time it takes to finish the process, on their Visualization Dashboard.

It is important to remember that as soon as you apply for your patent you can mark your invention as “patent pending.” This will let others know that you have applied for a patent. It is also important to remember that if you receive the patent, you are protected from the date you applied, not the date the patent was approved.

Marking

Marking your products with the relevant U.S. patents that cover the products is referred to as “patent marking”. Proper patent marking serves as legal notice to an infringer, thereby allowing a patent owner to potentially sue an infringer and to demonstrate earlier infringement, thereby obtaining higher monetary damages if a patent infringement lawsuit commences. Accurately marking products is extremely important because improper patent marking potentially opens a manufacturer up to liability for false marking if there is deceptive intent. Therefore, manufacturers should have an active patent marking program that aids in deterring infringement while minimizing potential liability for false marking.

Do you need international protection?

The Patent Cooperation Treaty (PCT) makes it possible to seek patent protection in 155 countries. This will involve additional applications but may be worth your time, effort and money, depending on where you intend to sell your products. Your patent attorney will help you decide if additional international protection is needed for your invention.

Should you file for a Provisional Patent?

A Provisional Patent is a quick, inexpensive way to hold your place in the patent queue and to get you a “filing date” and to say that you are “patent pending”. It may help if you need more time to research your market, your sales opportunities, to track down investors, or to simply delay paying the patent fees and prosecution costs for a full blown utility application. It will give you some protection for one year. But it is NOT a patent and thus it is not a cheap way to get a patent. It will delay the utility patent filing process by at least one year but if you do not file your Nonprovisional Patent (the regular Utility Patent) by the time the Provisional Patent expires, you will lose all protection. Talk to your patent attorney to determine if a Provisional Patent is appropriate for your invention.

Step 5. Prepare and submit your initial application

It is your responsibility, as the inventor, to completely, accurately and comprehensibly explain your invention to your patent attorney. This includes but is not limited to what problems it solves, what difficulties you overcame in its creations, and any other prior patents or inventions or which you are aware. Your patent attorney will take this information and will draft a detailed description of your invention, will get detailed drawings created, and most importantly, will draft a complete Claim Set for your invention.   This claim set is the most important part of your application and should be reviewed carefully with your attorney prior to filing with the USPTO.

Your patent attorney will fill out the appropriate forms and applications and file them online, along with any filing fees. Your patent attorney will have access to the online filing and application (WE NEED THE HYPER LINK HERE) status system at the USPTO and will keep you updated on the progress and status of your application throughout the entire process.

Step 6. Work with your Examiner

Once your application is received at USPTO, it will be reviewed by a USPTO patent Examiner. This may take several months, see step 4. If the application is incomplete or deficient in any way, your patent attorney will be notified in an official letter from the USPTO. You will have a certain amount of time to correct the omissions. If this is not done in the specified time, your application will be returned, the filing fee will be refunded less a handling fee, and your patent will not be approved.

Once your application is accepted as complete, an examiner will review the application. If the examiner does not think your application meets the requirements, the examiner will explain the reasons. You and your patent attorney will be able to reply with an explanation or provide additional information to the examiner. If the application is rejected twice, you may appeal this decision to the Patent Trial and Appeal Board (PTAB) or file a request for continued examination, known as an RCE. Your patent attorney will advise and guide you through this process.

Step 7. Receive your approval

Congratulations! The examiner has determined that your patent application has met all the conditions and requirements. You will be sent a Notice of Allowance. This will list any issue and publication fees you must pay. Once the fees are received, an Issue Notification with your assigned issue date and patent number is sent to you. The patent grant is then mailed on the issue date and will include any references to prior patents, the inventor’s name(s), specifications, and any claims. This document is known as the “Ribbon Copy”.

Step 8. Maintain your patent

You must pay maintenance fees to keep the patent in force beyond 4, 8, and 12 years. If these fees and other applicable surcharges are not paid in a timely manner, your patent will expire and will become public domain. This means that you no longer maintain a monopoly on the patent and that anyone else can make, manufacture and sell the invention. Thus, it is important to calendar and timely pay the maintenance fees.

During the lifetime of the patent, it is also important to protect your patent from patent trolls and extortion. See our section on Patent Extortion.

You can get more information and details on the patent process from the USPTO Patent Process Overview page.

It is possible to find your way through the patent process maze on your own, but a good patent attorney knows the traps and dead ends. If you have invested a lot of time and resources in your invention, and hope to receive benefits from your invention, then having a patent attorney in your corner is extremely beneficial. Contact Apex Juris for a free, one hour consultation.

Learn more about the patent application process.