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Leyendecker & Lemire, LLC 9137 E. Mineral Circle, Suite 280 Centennial, Colorado 80112 303-768-0123 info@coloradoiplaw.com |
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The following flow chart details the typical process involved in obtaining a utility patent. Please click on any box for more information concerning any box, or just scroll down and read the text. And if you want a hard copy just hit the PRINT PDF button above. Flash movie failed to load. Please hit refresh on your browser.
Idea Conception - Conception is the very moment you conceived of your idea. For all but the simplest inventions, there are probably a bunch of unanswered questions that must be worked through in order to reduce the invention to something that workable. Nevertheless despite the invention's nascent state, the date can be very important in determining whether you or another who invented and filed for a patent on a similar invention is deserving of the patent. While very few inventors we meet have actually done so, from the point of conception through to the moment a patent application is filed we suggest you keep a detailed record concerning the development of your invention.
Perform Patentability Search - For most independent inventors and entrepreneurial companies, this is a crucial step although one that is not mandatory under current patent law. There are several phases to the search process. First, the inventor or the inventor's agent should investigate what is publicly available that solves the same problem or offers similar advantages to their invention/idea. If an idea or invention is already known or on the market and was conceived of by someone other than you, even if the idea is not patented, you cannot receive a patent on the idea. This having been said, if your idea/invention differs from what is known even a small amount, your invention or embodiment of your idea may still be patentable provided that the difference offers real advantages over what is known and the difference is novel and non-obvious. Once you are convinced your product does not exist in marketplace, you should have a professional search of the patent records performed. Simply, there are a substantial number of inventions that although patented have never made it to the marketplace. A search of the patent records and a detailed search report prepared by a qualified attorney will give you a very good idea of your chances of getting a patent on your invention/idea. A typical patentability search and opinion requires 3-4 weeks to prepare.
Draft and File a Patent Application - Prior to beginning the preparation of the patent application, and inventor will typically spend anywhere from a few weeks to years perfecting his/her invention. The amount of time between conception and patent application preparation for your invention can vary greatly depending on a variety of factors BUT we strongly suggest you pay us a visit as soon as possible. We can give you advice on how best to proceed without jeopardizing your potential patent rights. Keep in mind the first ½ hour consultation is free. A patent application typically takes 4-12 weeks to prepare but one can be prepared in as short as a week or even a day or so if necessary and you are willing to pay a delta for the expedited process.
Receive First Office Action from USPTO - There used to be a time, more than five years ago, when a first office action would be received in between 6 and 18 months after filing. Nowdays, the period until the first action is closer to 2 years and often more. Anyhow, in about 90% of the applications, all or most of the claims in the patent application will be rejected. Don't lose hope. We can usually get around these rejections and despite the high initial rejection rate most applications will still issue into a patent.
Respond to First Office Action - Typically, we amend the claims and present arguments to the Patent Examiner in an attempt to persuade the Examiner to allow the patent application. Often, we will conduct a telephone interview with the Examiner. In most cases, an interview helps move the application towards issuance. We have three months to respond to the action but that term can be extended up to six months with the payment of an extension fee.
Receive Second Office Action - If we were unsuccessful in convincing the Examiner that he should allow the application with the First Office Action Response, the Examiner will issue a Second Office Action. In other instances where we have been successful in overcoming the Examiner's initial rejections but the Examiner may perform a new search and present new rejections. This Office Action is typically "Final" meaning that we must pay a continued examination fee if we would like to have a third or forth shot at the Examiner. The time span between our first Response and the Second Office Action is usually about six months or less.
Respond to Second Office Action - Typically, we file a second response trying to convince the Examiner to allow the application. Depending on our chances of success with the Examiner, we may put the application in better condition to bolster our case on appeal.
Receive Notice of Allowance - This means the Examiner has seen fit to allow your patent application with the current set of claims. With the payment of the issue fee, your patent will issue within a few months. Typically, an Examiner will issue the Notice of Allowance within a month or so of the last office action response. In very rare cases, a Notice of Allowance may be issued in lieu of the First Office Action.
Pay Issue Fee - The current issue fee, including the publication fee, is $1000 for individual inventors and small entities.
Patent Issues! - Most patent issue within 2-4 years from the filing date. However, certain types of applications, such as those pertaining to software and business method inventions, take much longer to work their way through the Patent Office.
Receive Advisory Action - If we are not able to convince an Examiner to allow the application in the Second Office Action Response, the Examiner will issue an Advisory Action. If we do nothing, the patent application will go abandoned. If we pay the appropriate fee, we can continue to prosecute the patent application. That is the examiner will issue more Office Actions and we can continue to respond until the Examiner allows the case or you give up. Truth be told, in most instances, most patent applications issue in the first go around but there are exceptions and it is important to know you need not give up if you feel the Examiner is getting it wrong. Finally, if we feel the Examiner is not budging and is unlikely to do so we can go over his head and file an appeal.
File an Appeal - For a variety of reasons, we like to avoid appeals but sometimes, especially when an Examiner is being particularly unreasonable, we may have no choice but to appeal. To summarize, the appeal process is expensive and can take an extremely long time (3-6 years), so keep this in mind. Only a few percent of our applications are appealed and we won't recommend it unless we are very confident in our chances for success. The first step is to file a Notice of Appeal and pay the appropriate filing fee. This particular step is relatively inexpensive but watch out for the second.
Draft Appeal Brief - This second step in the Appeals process is extremely expensive, often nearly as expensive as the cost of preparing the application itself. Simply, an Appeal Brief is like an Office Action Response on steroids: it often includes in depth analysis of statutory and case law as it applies to a patent application. It is very time consuming to prepare, hence the high cost. Typically, the brief is filed within a couple of months of the filing of the aforementioned Notice of Appeal. After it, the examiner can file an Answer or issue a new Office Action presenting new grounds of rejection or allowing the case. Traditionally, about 30-50% of all cases that are appealed get allowed by the Examiner without ever making it in front of the Board. That is a good thing, because the wait for the board to review and render a decision is very long.
Board Renders Decision - After years of waiting a Board comprising attorneys employed by the Patent Office review the Appeal Brief and the Answer and renders a decision. Generally, the applicant prevails largely because a competent patent attorney discourages proceeding through the costly appeals process unless he/she believes the applicant's chances for success are very good. Typically, the application is remanded to the Examiner who will usually allow the application but in rare circumstances, the Examiner may issue another Office Action rejecting the claims for a new reason.
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