Lesson 4: The Patent Pro

The Patent Process Explained

To gain a better understanding of how the patent process typically works, we outline the steps below: 

1. Invention – new innovation is conceived (and possibly developed)

2. Patentability search (optional) – search is performed to determine if the invention is new.

3. Patent application is drafted and filed with the USPTO (with required forms and fees)

4. USPTO reviews application for compliance with administrative requirements and a filing date is assigned to the application.

1. At this point, an application is “patent pending”.

5. Application is published 18 months after earliest priority date of the application.

1. Published applications are publicly available and look very similar to issued patents.

2. Referred to as “Pre-Grant Publications” (PGPubs); state “Pub. No.” at the top rather than “Patent No.” The number format is also different (2021/0339962 vs. 10,339,962)

3. Applicant can request to have an application not published.

6. Applicant waits for substantive examination by USPTO (2-3 years on average, but it depends on technology area).

7. Examination – substantive review of the application by the USPTO examiner to determine if the invention is patentable.

1. Examination begins with a “First Office Action”.

1. Examiner provides detailed analysis of the claimed invention, and often “rejects” the claims based on one more legal requirement for patentability.

2. In case of “rejection,” applicant responds to the office action by (a) presenting arguments and/or (b) amending the claims.

1. While the specification and figures stay essentially the same, the claims (which are the legal protection of the patent) are often amended during examination to meet the legal requirements for patentability.

3. The examination process continues – back and forth arguments and claim amendments between applicant & examiner in the form of office actions (non-final and final), applicant responses, requests for continued examination (RCEs), appeals, etc.

4. The examination process ends when the examiner determines that all legal requirements for patentability have been met – examiner sends a “Notice of Allowance”.

8. Grant (Issue) – the patent application becomes an issued patent.

1. After the “Notice of Allowance”, applicant pays the required fees, and the patent is granted.

9. Not all patent applications become patents.

1. Instead, some applications will be “Abandoned” – this occurs when examiner cannot be convinced by applicant that the claims meet the legal requirements for patentability, or when applicant chooses to no longer pursue the patent.

10. After a patent is granted:

1. Maintenance fees must be paid at 3.5 years, 7.5 years, and 11.5 years (after patent grant)

2. Patents may be corrected by applicant via certificate of correction or Reissue application.

3. Validity of a patent may be challenged by others.

1. This may be done via Post-Grant Review (PGR), Inter Partes Review (IPR), and Ex Parte Re-examination