Patent Process Overview

Patent CoverThis is a quick overview of the things that occur between coming up with an invention and getting a patent for the invention.  Click the links for more details about any of the steps.

  1. Conception: thinking of the invention.
  2. Reduction to practice: working out all the bugs and learning as much as you can about the invention.
  3. Preparing the patent application: describe the invention in enough detail that one of skill in the art can make or use it themselves.  A critically-important part of the application is the claims.
  4. Filing the application: this is an important date!
  5. Waiting — the USPTO is backed up, so it may be a year (or three or five) before anything else happens.
  6. Non-Final Office Action — the Examiner took a look at your claims …

    1. … and allowed them!  Congratulations!  There’s some more fees to be paid, but you should get your patent soon.
      (This rarely happens on the first Office Action, though, and if it does, it means you probably didn’t claim your invention as broadly as you were entitled to.)
    2. … and rejects them.  Bummer.  Go on to the next step:
  7. Respond to Office Action: explain that the Examiner made a mistake (about your claims or about the prior art) and/or change your claims so they don’t cover the prior art
  8. If you convinced the Examiner without changing your claims, return to step 6.
  9. If you convinced the Examiner but had to change your claims to do it, or if you didn’t convince the Examiner at all, you will get:
  10. Final Office Action: repeated or new rejections of your claims, and that’s all the examining you’re going to get for your filing fee.  You can:
    1. Request Continued Examination: pay a new filing fee, maybe change your claims some more, and return to step 6 (after a shorter wait).
    2. Appeal: pay various appeal fees and submit your arguments to the Board of Patent Appeals and Interferences, a group of more-experienced Examiners who may agree that your Examiner made a mistake.  Wait several more years, then go to 11.
    3. Give up.  You’re done.
  11. Did the Board agree with you?
    1. Yes!  Congratulations!  Your Examiner should send you a Notice of Allowance, unless s/he finds some other reason to reject your claims.
    2. No.  Rats.  You can keep trying at the Patent Office, but your Examiner isn’t likely to budge unless you make significant changes — after all, the Board backed up his rejections.  Or, you can:
  12. Go to Federal Court: now you’re saying that both the Examiner and the Board were wrong, and a Federal judge should review everything.  Expensive and time-consuming, but if the invention is important enough, it might be worth a try.

There are a few places where you have to pay to play.  You might decide to hire a patent attorney to help prepare the application, and you definitely have to pay filing fees at step 4.  You might hire an attorney for step 7, and you probably ought to hire one if you ever get to step 12.  Requesting Continued Examination (step 10.1) and Appeal (step 10.2) also have filing fees attached.