Document invention in writing, signed and dated (Invention Disclosures.)

Do your best product literature search.

Include what you believe makes your invention better, faster, cheaper, etc., from the prior art.

File provisional patent application in USPTO.

Include “oath of Inventor” and at least one patent “claim”.

Do in-depth patent search.

Start development and implementation of business plan.

Continue research and evaluation of competing products/services.

Within 12 months of filing provisional, file utility application particularly describing invention and attributes over prior art as shown by evaluation of patent search results and product literature research.

File Information Disclosure Statement (preferably within 3 months of filing utility application).

Utility patent application published 18 months after filing date of provisional application. The patent file is now publicly accessible on the Internet.

First USPTO office action (likely 6 to 12 months after filing utility application):

Restriction requirement?

Rejection of claimed invention as anticipated by prior art (§102)?

Rejection of claimed invention as obvious in view of prior art (§103)?

Allowance of claims? (Unlikely in first office action.)

Response to office action (within 1 to 3 months of office action):

If restriction requirement, elect subset of inventions and/or claims. (Also object?)

If §102 rejection, demonstrate cited prior art does not include all the elements (claim limitations) of your invention.

If §103 rejection, show there is no suggestion to combine prior art references to create your invention and/or the combined prior art does not disclose the invention.

Consider amending claims.

Consider requesting interview with examiner.

Second office action (likely 3 to 4 months after your response):

Is it a “Final” action?

Any claims “allowed”?

Any suggestion of allowable claims if amended?

New art cited?


If “final”, consider amending claims to overcome examiner’s rejection. Alternative is to file appeal to Commissioner or request examiner to reconsider rejection. You may also file a request for “continued examination” by paying new filing fee.

If non-final rejection, evaluate and respond to rejection. Also consider amending claims. Also consider amending specification and file Continuation in Part application.

If claims allowed, consider filing divisional application (with new filing fee) for non elected claims or inventions (see restriction requirement above) and pay issue fee for allowed claims. You can accept the allowed claims and consider filing a continuation or continuation in part application. These options and fees must be paid prior to paying the issue fee. Upon payment of the issue fee, you will receive a notice (2 to 4 months) of issuance with an assigned patent number and issue date.

The above outline is not exhaustive and is oversimplified for most real life situations. Failing to timely and completely respond will result in your application being abandoned.