The patent process is lengthy and may take one to four years to complete. Additionally, the funds spent preparing and filing a patent application are not the only costs involved in securing a patent. There are additional examination costs that should be understood before seeking a patent.
The overall patent process can generally be divided into the cost of preparing and filing the application and the cost of prosecuting a patent application. These are the two major cost centers in securing a patent. The patent prosecution costs include petition fees, costs during the Office Action–Response Cycle, fees for the issuance and maintenance of the patent, fees for submitting an Information Disclosure Statement, and patent attorney fees.
Furthermore, the overall patent process is long and may take years to complete. This chapter will delineate the overall patent process including major costs and the general timeline (see Figure 4 below for a flow chart of the general patent process).
Step 1: The novelty search
The patent process begins with an optional novelty search. A novelty search is not always recommended. It depends on the inventor’s particular situation, as discussed in the section on novelty searches in Chapter 3.
The USPTO does not require the inventor to conduct a search of the prior art to find relevant references. It does, however, impose a duty on inventors to disclose information that is known to the inventors and that is material to the patentability of the invention. Material information is anything that the inventor knows of that might cause an examiner to reject the application for patent. If a novelty search was conducted, the results should be disclosed to the USPTO. The duty to disclose is satisfied by filing an information disclosure statement, discussed in the last section of this chapter.
If a novelty search is conducted and no prior art disclosing the proposed invention’s point of novelty is discovered, the next step is to prepare and file a patent application.
Step 2: Prepare and file a patent application
The preparation and filing of a provisional or nonprovisional patent application may take up to six weeks. Once the patent application is filed, the invention is considered patent pending at which point the inventor may safely disclose or share the invention publicly and begin marketing it.
Side Note: To begin the preparation, a patent attorney and the inventor will discuss the invention. Anything necessary to the understanding of how the invention works must be disclosed to the patent attorney. This may include a short-written description and a demonstration of a prototype (not required) of the invention. For me, a one-on-one discussion of the invention and also the background of the inventor and the vision going forward would be needed. This defines the scope of the work to be done. The patent attorney can then provide an accurate price. Before this, any price would be inaccurate. A detailed explanation of the efforts to prepare a patent application is discussed in Section 2.
The patent application may be filed as a provisional or nonprovisional patent application (see Chapter 4 for a summary or Section 2 for a more extensive discussion on provisional and nonprovisional applications). When a provisional application is filed, the invention is patent pending. The provisional patent application is automatically abandoned after twelve months. To avoid abandonment, a corresponding, nonprovisional application must be filed and priority claimed back to the provisional patent application.
Even if the provisional patent application is abandoned, the abandonment of the provisional patent application does not mean that the inventor cannot seek patent protection. For example, if an inventor begins marketing an invention after filing the provisional patent application, and a corresponding nonprovisional application was not filed before the provisional application expired, the inventor loses the ability to seek patent protection only after one year from the start of the marketing efforts, not when the provisional patent application is abandoned. Those marketing efforts would be prior art to any application filed more than one year after the start date of the marketing effort. If an application is filed more than one year after the filing date of the provisional patent application but prior to the one-year anniversary of the start of marketing, the marketing efforts are not prior art to that patent application. The one-year personal grace period, not whether the provisional patent application is abandoned, is the rule that prevents an inventor from securing patent protection. If the provisional application lapses, but the start of marketing efforts occurred less than one year ago, a patent application can still be filed as long as it is within the one-year grace period and as long as the start of marketing efforts do not become prior art to the patent application. Once the one-year grace period has elapsed and the provisional application is abandoned, the inventor is barred from seeking patent protection on the marketed invention.
Side Note: Patent attorneys often use the phrase “patent protection” in two ways, which may confuse inventors. An invention has “patent protection” when it achieves patent pendency status, which is discussed above. Patent pendency establishes the date of invention or the filing date of the patent application with the USPTO. The primary benefit of patent pendency is that third parties are barred from later filing and securing a patent on the same invention (or obvious variants). If an inventor begins marketing the product after filing the patent application, any third-party that files their own patent application based on the marketing efforts of the inventor will have junior rights to the inventor who first filed the patent application. Normally, in a dispute, the inventor who filed first, having “senior rights,” would be awarded the patent over the third-party that filed a later patent application. However, if the inventor decided to abandon the patent application, a third-party would have senior rights over other potential parties. This type of patent protection merely refers to patent pendency. No enforceable rights arise out of patent pendency and the inventor would not be able to sue a third-party for infringement until the patent is granted.
An invention also has patent protection when an application matures into an issued patent. An issued patent confers an exclusionary right to the patent owner to stop or exclude others from making, using, selling, or offering their patented product for sale in, or importing to, the United States. This enforceable right enables inventors and businesses to seek damages, royalties, and an injunction on third parties who are infringing on their patent.
Remember, patent attorneys utilize the phrase “patent protection” when speaking of both “patent pendency” and an “issued patent” without clarifying between the two. Be sure to keep this in mind when discussing patent protection with others.
Step 3: Waiting for a first office action from the USPTO and prioritized examination requests
After filing the patent application, the inventor usually waits one to three years before the USPTO begins an examination of the application for patent. This waiting period can be shortened to three to six months by filing a prioritized examination request and paying an additional fee. The prioritized examination request must be filed with the patent application. It cannot be requested after the patent application is filed. However, if an inventor has already filed a patent application without a prioritized examination request but would later like to have the invention examined sooner rather than later, a second nonprovisional application, along with a prioritized examination request claiming priority back to the first nonprovisional application, can be filed.
In lieu of the prioritized examination request, an applicant can also shorten the waiting period for examination by filing a “petition to make special based on age” for expediting examination at any time during patent pendency. This petition does not need to be filed with the patent application. To file this petition, at least one of the inventors must be at least sixty-five years old. If the prioritized examination request or the petition is granted, the patent application is examined out of turn and the first office action will be should be received within five to six months. Put simply, the patent application is pulled from the back of the queue for examination and placed up front. The patent application is not examined on a first-come, first-serve basis but out of turn. The prioritized examination request and the “petition to make special based on age” enable inventors to strategically approach the patent process by shortening the waiting period for the first office action, if and when desired.
Inventors who prefer to delay as much as possible the start of the examination of a patent application may choose to file a provisional application (instead of a nonprovisional patent application), which remains pending for twelve months without any examination. Twelve months after filing the provisional patent application, the inventor may file a corresponding, upgraded, nonprovisional application with a claim of priority back to the provisional patent application. The claim of priority attributes any subject matter disclosed in the nonprovisional application common with the provisional application as if it were filed on the filing date of the original, provisional patent application. If the applicant files a nonprovisional application without a prioritized examination request or a “petition to make special based on age,” examination will occur within the normal time-frame of one to three years. By not expediting the examination of the patent application, the patent examination costs associated with the patent process are delayed, and the extra time allows a business to increase revenue before spending more money on patent prosecution. If business picks up and the patent is vital to protecting a revenue stream, another nonprovisional patent application may be filed with the prioritized examination request, or the “petition to make special based on age” may be filed in the current nonprovisional patent application to speed up examination and, ideally, grant of the patent.
This strategy would be advantageous if, for example, a business files a provisional application after which demand for the product increases. The inventor could speed up examination to acquire a patent by filing a nonprovisional application during the twelve-month period along with a prioritized examination request or a “petition to make special based on age.”
On the other hand, if an issued patent is desired as soon as possible, a nonprovisional application can be filed immediately with a prioritized examination request or a “petition to make special based on age.” This would incur prosecution and examination costs earlier but would allow for the application for patent to mature into a patent as soon as possible. The current USPTO system permits flexibility to slow down or speed up the timetable before a patent application undergoes examination.
Step 4: Office action by the USPTO and response by the inventor
Once the patent application has been examined by the USPTO, its acceptance or rejection is communicated to the inventor through an “Office Action.” An Office Action is simply the official stance of the USPTO—to either reject or to accept the application for patent. Be forewarned: about ninety percent of all patent applications receive an initial Office Action rejection. This occurs by design since the goal is not merely to obtain a patent but to secure a patent with claims that provide sufficiently broad protections against competitors (see Chapter 2) while also avoiding the prior art. After a rejection, the claims can be narrowed slightly and resubmitted to persuade the examiner to allow the application to mature into a patent. Often, a balance needs to be found so that the claims are sufficiently broad yet narrow enough to avoid the prior art and be issued as a patent.
The cost to respond to an Office Action ranges from a few hundred to a few thousand dollars. This “Office Action–Response Cycle” can be repeated indefinitely, but it typically takes one or two cycles to develop an understanding of the examiner’s position. A telephone interview with the examiner to better understand his or her position can help expedite the Office Action–Response Cycle and examination process. The telephone interview can occur at any time but is normally conducted after the first office action is received.
Step 5: Application matures to a patent, expires, or is abandoned
After the Office Action-Response Cycle(s), the patent application may issue as a patent. Issue fees are due for the patent application to issue as a patent. Maintenance fees are due at three and a half, seven and a half, and eleven and a half years after the issue date. Maintenance fees are collected by the USPTO to generate fees to support the operation of the USPTO. If the maintenance fees are not paid, the patent expires. Hopefully, profits from the sale of the patented product would cover these fees.
If the inventor is not successful in the Office Action-Response Cycle, there are several options to minimize financial expenses. If business is lagging, the inventor may abandon the patent application. Alternatively, the inventor can appeal to the Office Action to the Patent Trademark and Appeal Board (PTAB), which usually takes a long time. The appeal is an administrative proceeding requesting the PTAB to determine whether the examiner’s decision is sound. This is a lengthy process and could take one to three years for the PTAB to render an opinion. I would not recommend the appeal process unless progress with the examiner is at a total standstill. Moreover, even if the appeal is won, the application will be remanded back to the same examiner, who can make a new rejection, though that is less likely. The recommended course of action is to work with the examiner as long as possible by addressing the examiner’s concerns, amending the claims, and providing arguments in support of patentability.
Information disclosure statement
The duties of candor and good faith are imposed on and require the applicant or anyone prosecuting the patent application (i.e., guiding the patent application through the USPTO) to tell the truth to the USPTO. Throughout the entire application pendency or appeal, the inventor has a duty to disclose material information that an examiner may want to know when determining whether to reject or allow the application to mature into a patent. If there are facts that might cause the USPTO to reject the application, the duties of candor and good faith require the applicant to make the examiner aware of this information. If facts are misstated, the applicant must alert the examiner and correct the facts on the record. Misrepresentations or omissions made with intent to mislead the USPTO on important aspects of the patent examination can make an issued patent unenforceable.
The information should be submitted to the USPTO in the form of an “Information Disclosure Statement” (IDS). The cost to file an IDS may be a few hundred dollars each time the inventor has new information to report. Normally, about one IDS is filed for each patent application.
The IDS form provided by the USPTO is merely a means by which an applicant can satisfy his or her duty of candor and good faith in conducting business with the USPTO. It generally contains information regarding prior art references relating to the invention including the results of a novelty search, similar existing technology, offers for sale, printed publications, or public demonstrations of the invention by the inventor that occurred more than one year prior to the filing of the patent application. As discussed in Chapter 5, this information would be relevant to the patentability of the invention and thus, material. If this information is not submitted to the USPTO, it is possible that a breach of the duties of candor and good faith has occurred, which could invalidate the patent if it is granted and if litigation occurs. Please note that the duties of good faith and candor do not require the applicant to search the prior art for relevant references. Hence, there is no duty to search the prior art, and the novelty search is an optional step.
It is preferable to submit more information in an IDS, even if it is unclear whether the information is actually material and relevant to patentability of the invention. A significant benefit of disclosing more, rather than less, information relates to the presumption of validity. Information disclosed to the USPTO is added to the file history (i.e., official record) of the patent application. If a patent is issued and relevant information has been disclosed in an IDS, the patent will have a “presumption of validity” over the information submitted in the IDS.
Conversely, if any information is withheld or mischaracterized, potential infringers could allege that the patent is both invalid and unenforceable based on inequitable conduct or breach of the duties of good faith and candor, causing the court to invalidate the patent. The duty to disclose extends to everyone involved in the examination or prosecution of the patent application.
Relevant information that should be presented to the USPTO could be presented in the background section of the patent application. Inclusion in the background section can mitigate a finding of an intent to mislead the examiner and avoid a finding of inequitable conduct. However, any information included in the background section and not in the IDS is not considered to be made of record in the patent application and the patent is not presumed valid over the information. Often, the background section is used to describe prior art when a printed reference is not available. However, because a patent is not presumed valid over the information presented in the background section but is presumed valid over information submitted in the IDS, it is preferred to disclose this information in an IDS to enjoy the presumption of validity over such information.