12 Sep 2019

Patent filing Procedure in US

US Patent and Trademark Office (USPTO) is one of the oldest patent offices in the world. For obtaining a Patent, two types of patent applications can be filed:

  • Provisional:- It is a quick and less expensive means of filing application however, it only survives when a regular non-provisional patent application within one year is filed.
  • Non provisional/Complete:- It is the final application on the basis of which the patent is granted after being examined by a patent examiner.

Also there are 2 types of patent applications in US- Design patent, Utility patent

1) Preparing a patent application

The first thing in patenting of the invention is preparing a patent application.  There may be different requirements which may be complied depending on it is design patent or it is utility patent. The requirements may be complied and written description, claims and drawings are drafted carefully.

There should be effective communication between the inventor and the person who may be drafting patent specification. The patent application should disclose al relevant details. It should meet § 112 enablement and also it should meet best mode for carrying invention.

Another important step in preparing a patent application is identifying true inventors who contributed claims of an invention in actual sense.

2) Filing

Filing of Non Provisional Application

Although a non provisional utility patent application can be filed through the Office’s electronic filing system called EFS-Web, delivery by U.S. mail, or hand delivery to the Office in Alexandria, Virginia. However, if the application is filed via mail or hand delivery, it would incur extra payment of $400 called “non-electronic filing fee” subject to certain exceptions.

Filing of Provisional Application

A Provisional Application is not require to have a formal patent claim, an oath or declaration, and information disclosure statements as such application are not examined. It is helpful in establishing an early effective filing date in a later filed non provisional patent application filed. Corresponding non provision application has to be filed within 12 month of the filing of the application of provisional application.

The non-provisional utility patent application will be along with transmittal forms and application data sheets. The filing receipts is issued by USPTO (United States Patent and Trademark Office)

The patent filing fee may vary according to the size of the application, claim no.s, whether it is paper-filing or electronic and whether the applicant is a small entity or company etc.  The filing fees may be reduced in half for small entities.  A small entity is an individual, a small business (500 or fewer employees) or a non-profit organization subject to certain limitations.  The filing fees may be in the range of $1,000, or $500 for small entities.

3) Publication of Patent Applications

Publication is done after the expiration of an 18-month period following the earliest effective filing date or priority date claimed by an application. After the publication, applicant gets the provisional rights.

4) PROSECUTING APPLICATION-Examination of Applications and Proceedings in the USPTO

In the examination, the concerned application is tested on the parameters of patentability, its compliance with the legal requirements and if such application satisfies a patent is granted. At the time of examination, the Patent Office will issue the Examination Report (FER) / Office Action with a set of objections/requirements response to which must be filed within at least 2 months from the date of issue of the FER. The patent attorney may file response no later than 6 months after the date of the First Office Action.  Patent Examiner will set “shortened statutory period” to respond, which is usually 3 months for an Office Action. The shortened statutory period is the time in which you can respond without having to pay a fee to respond. You can respond up to 6 months but only if you request AND pay for an extension.

After prosecution is over, one can accept some claims which are allowed, or all being rejected or all being allowed. In many situations, few claims will be allowed and few may be rejected. There is also another provision of “Request for Continuing Examination (RCE)” where the prosecution gets restarted.

5) ALLOWANCE

United States Patent and Trademark Office(USPTO) access the patentability aspects of invention and if found patentable, it sends a Notice of Allowance to the applicant.  It may include requirements to be met by the applicant before the patent gets issued, but the requirements are more formalities rather than substantive requirements. In response to notice of allowance, the applicant do correct formalities and pay the issue fee accordingly.  The issue fee is reduced in half for small entities.

6) ISSUANCE

Once USPTO receives issue fee, it assigns a patent no. to the patent application and the same application in published in official gazette being published weekly.

7) MAINTENANCE/Annuities

Annuity for 3’rd year onwards is to be paid after grant of the Patent. Protection of the Patent is for 20 years from the International Filing Date.  The maintenance fees are not applicable for Design patents.  The maintenance fees are due 3.5, 7.5 and 11.5 years from the date of filing of original patent grant. The maintenance/annuity fees are reduced in half for small entities.

If you have any doubts or questions about the patent process in US, feel free reach out at Info@effectualservices.com

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