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?
Response:
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.
