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The Patent Process

Once you know that you are ready to apply for a patent, what is the process for obtaining a Utility Patent? In this fifth video, Rich describes in detail the steps from filing the application to the granting of the patent, and what happens if the application is rejected.

The road to securing IP rights to your idea

Once it’s been determined that what you have is novel, is non-obvious, and is worthy of a patent, the next step toward getting a patent is to file a patent application. But before you can file a patent application, the application has to be prepared.

Preparing a patent application means getting together information about what the invention is, what’s different about the invention, and why it’s worthy of a patent. A typical patent application can be 20, 30, even 40 pages in length. And the point of all this documentation is to begin the process of convincing the patent office to grant you the patent. So filing the application is the first official step in the patent process.

It’s important to know that not all patent applications are created equal. If you really want to protect your idea, you’re really hanging all your hope on the strength of this patent application. A poorly written patent application can sometimes result in a patent being granted. But it would not be a strong patent—one that you could use to stop people from stealing your invention. A patent application is only as good as it is well written. And the priority that is established for you as the first inventor of this product is only as good as the invention is well expressed in that patent application.

So the quality of the patent application is critical to getting a strong patent. We’re a patent firm, so it would seem natural that we would say you need a patent attorney to write a patent application—but it’s simply the truth. And while there might be elements of this process that you can do yourself—and that you should do yourself (such as the initial prior art search), writing a patent application is the most critical, the most technical, and requires the most skill of anything in this entire process. The one thing that truly has a chance of getting you strong patent protection for your idea is a patent application that’s been written correctly, with full understanding of what you invention is, full understanding of what’s distinct about your invention, full understanding of your goals for this invention—so that the patent that you end up getting is perfectly appropriate for what you need.

Assuming that your application has been prepared and is everything that it needs to be, it’s then filed with the United States Patent and Trademark Office (USPTO). On the day that it’s filed, your idea becomes “patent pending.” You’ve probably seen products marked “Patent Pending.” Basically, what that means is that the application has been filed, and the inventor is waiting for the patent office to review the application and grant the patent. When you’re in patent pending status, it becomes a bit of a waiting game as far as getting the patent itself. You’re waiting for the application to be examined. Your application will be assigned to a government patent examiner, whose job is to review your application, do his or her own prior art research, do his or her own comparisons, and make his or her own judgment as to whether your invention fits the criteria for patentability.

Now, assuming that the review by the patent examiner is favorable, you’ll be issued what’s known as a “notice of allowance.” When the patent office issues a notice of allowance, they are saying that you’ve been approved for a patent. Once you pay certain issuance fees, the patent will be granted.

On the other hand, sometimes the examiner’s review isn’t that favorable and the examiner might initially reject the application. If the application is rejected, though, the examiner has to give reasons why it’s been rejected. Now, you and your attorney can review the reasons for the rejection and determine whether they can be overcome. We’ve found that the majority of rejections can be overcome, and an initial rejection is not uncommon at all.

After any reasons for rejection have been overcome—in writing, to the patent office, then typically the examiner will remove the rejections and issue a notice of allowance. Again, after the appropriate issuance fees are paid, the United States Patent will be issued.

So, that’s the patent process, in a nutshell. Once the patent is issued, you have the right to exclude other people from making, using, or selling your invention within the United States. And this is a right that you can keep to yourself, you can sell to someone else, or you can license to a company who wants to make that product.

In part 6 of this series, we’ll share with you some of the common concerns that many clients had prior to working with us.

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