Patent Process Overview - Utility Patents
by Marin Cionca
Patent Search (USPTO) and Opinion Letter.
A patent search on the USPTO database, conducted before filing a provisional application for patent, may reveal identical or similar inventions, for which someone else already owns, or has applied for, a US patent. Therefore, the search report and the accompanying patentability opinion letter, drafted by a registered patent attorney, may help you, among other things, (1) assess the patentability of your invention when compared with existing US patents (should you move forward with your application as it stands?), (2) redraft your provisional patent application so that the invention you claim is different than existing US patents, and (3) determine what the direction of your invention development should be.
While we strongly recommend a patent search prior to filing, because of the relatively low-cost associated with the filing of a provisional application for patent, some people prefer to go ahead and file without a prior search. However, without a patent search, the benefits enumerated above are lost, and furthermore, [especially] if skipped now, a patent search will have to be conducted a few months later, before filing the non-provisional application. Also, please note that the patent search is conducted normally only on the USPTO database, which means that, in most instances, 85-90% of the prior art pertinent to your invention will be uncovered. Of course, with additional funding, the search could be expanded, as for example, to EPO and/or technical literature.
Provisional Application for Patent (PAP).
Filing a provisional application for patent (PAP) is optional. The inventor can file directly a non-provisional application. Furthermore, a PAP never matures into a patent. A patent can be obtained only by filing a non-provisional application. The non-provisional application, if not filed directly, has to be filed within 12 months of the PAP filing. However, the filing of a PAP has some benefits some of which are presented below:
- "Patent Pending." For 12 months, it allows the term "Patent Pending" to be used in connection with the description of the invention or products sold.
- Low Cost Filing. Since 1995, the provisional patent application provides a low-cost, first patent filing option in the United States. As of the date of this writing, if the inventor is a small entity, the filing fee is only $110. [In this context, small entity means independent inventor(s), a small business (with less than 500 employees), or a nonprofit organization eligible for reduced patent fees].
- Early Effective Filing Date. The filing of a provisional patent application provides the means to establish an early effective filing date in a later-filed non-provisional [full] patent application. The non-provisional application must be filed within 12 months.
- 12 Months of Additional Patent Term. By filing a provisional application first, and then filing a corresponding non-provisional application that claims the benefit of the provisional application within the 12-month provisional application pendency period, the 20 years utility patent term may be effectively extended by as much as 12 months.
When deciding whether or not to file a PAP, the above benefits, should be balanced against other considerations, such as, the additional cost for obtaining the patent caused by the PAP and the delay in obtaining the actual patent. Furthermore, care should be given when preparing and filing a PAP. Although the PAP's description and drawings can be less formal, a poorly prepared PAP may cause serious problems later, including the loss of the right to a patent.
Non-Provisional Application for Patent (N-PAP).
As noted earlier, the non-provisional application for patent (N-PAP) is the patent application which will eventually mature into a patent. Unlike a PAP, a N-PAP has to have formal drawings, an abstract, at least one claim, and other components, which are not required in a PAP. That's why, the N-PAP is often called the FULL application for patent, and obviously it takes longer to prepare, and consequently, it costs more.
The most important part of the N-PAP is the one containing the claims. The claims are the ones that ultimately define the invention. Therefore, considerable amount of time is generally spent with the drafting of the claims. In addition, in the claims area, more often than not, the "battle" between the patent examiner and the patent attorney takes place. One or more office actions are generally issued, and the patent attorney has to prepare appropriate responses. If the problems cannot be resolved between the examiner and the patent attorney, petitions, and/or appeals have to be filed, further delaying the patent issuance and increasing the cost of obtaining a patent.
If the patent examiner accepts the N-PAP as filed, or, after all the objections and rejections are resolved, the patent is granted. A patent issuance fee is assessed and has to be paid to the USPTO.
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Marin Cionca, Esq.
Registered Patent Attorney
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