The following is a simplified description on one possible chain of events that occur in the patenting process. This is a hypothetical patent application flow chart. See my article on “Behind the First to File Rules“. Also review my article regarding “Patent Application Elements“.
Document invention in writing, signed and dated (Invention Disclosures.)
Do your best product literature search.
Include in your invention description what you believe makes your invention better, faster, cheaper, etc., from the prior art.
See also article “What Not To Do Before You File“.
See article “Patentable Invention“
File provisional patent application in USPTO. Include:
Sufficient written description to teach person skilled in art how to make or use the invention.
Full written description including all variations that you can think of.
Drawing of device (if applicable) or flow charts outlining method.
Incorporate references to drawing/flow charts in the written description.
Include “oath of Inventor” and at least one patent “claim”.
Note filing date (start of 12 month clock) and provisional application serial number*.
*Filing date establishes your priority for claiming the invention. It is recommended that a provisional application be filed as soon a reasonably possible. Supplemental provisional applications may be filed as any continuing development efforts further define the invention.
Do in-depth patent search.
Start development and implementation of business plan.
Continue research and evaluation of competing products/services. Consider filing supplemental provisional applications.
Non-provisional Application Filing
Within 12 months of earliest provisional filing date, file non-provisional application particularly describing invention and attributes over prior art as shown by evaluation of patent search results and product literature research. Non-provisional application should incorporate substance of all provisional applications that have been filed within 12 month term.
File Information Disclosure Statement (IDS) preferably within 3 months of filing non-provisional application. See article
Non-provisional application published 18 months after filing date of provisional application. The patent file is now publicly accessible on the Internet.
Examiner response (Office Actions)
First USPTO office action (likely 1 to 2 years after filing non-provisional application):
Restriction requirement issued by examiner? See Article “Restriction Requirement I“.
Rejection of claimed invention as anticipated by prior art (§102)?
Rejection of claimed invention as obvious in view of prior art (§103)? See Obvious Rejections
Allowance of claims? (Unlikely in first office action.)
Review Examiner’s Office Action carefully. Review any prior art cited by examiner and obtain understanding of why the claims of the application were rejected.
Respond to office action (within 1 to 3 months of office action):
If restriction requirement, elect subset of inventions and/or claims.
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 (recommended).
Second Examiner Office Action
Second office action (likely 3 to 4 months after your response is filed):
Is it marked by examiner as a “Final” action?
Any claims “allowed”?
Any suggestion of allowable claims if amended?
New art cited?
If second office action is marked “final”, you may also file a “Request for Continued Examination” (RCE) by paying filing fee (currently $600.00 for a small entity). This requires examiner to reconsider rejection and evaluate any amendments you include in response to “final” office action*. Alternative is to file appeal to the Patent Trial & Appeal Board (PTAB).
*Evaluate and respond to rejection. Response will include an RCE request and filing fee. Also consider amending claims. Also consider amending/supplementing specification and file as a Continuation in Part (CIP) application. A CIP application will require payment of a new application filing fee and it restarts the examination process.
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 CIP 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.
Copyright © David McEwing, 2019