Have Questions about The Basic Patenting Process ?

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When one applies for a U.S. patent, a patent application must be prepared and filed with the United States Patent and Trademark Office (USPTO). Usually, most Inventors hire patent counsel to do this for them, as there are very specific minimum legal requirements that the application must meet in order to avoid legal challenges of invalidity and the like that can present themselves in litigation even after a patent has been issued. The patent counsel should work closely with the Applicant/Inventor(s) to ensure that the nature of the invention is adequately captured in the application, and that the patent claims are strategically drafted to maximize the chance for success, to maximize the breath of coverage of the patent claims, and to meet the business needs of the Applicant(s) in view of the market space they operate in.

After filing, a patent application will eventually be assigned to a Patent Examiner in the USPTO, who will, at some point, pick it up for substantive examination to ensure that the claimed invention is novel and non-obvious in view of the relevant prior art. This starts what could be considered a "trial" phase of the patent application (called "patent prosecution"). It is the job of the Patent Examiner to protect the public from a patent applicant from obtaining an unfair legal monopoly, which is why the vast majority of utility patent applications will be rejected at least once (whether they deserve to be or not). When rejections are received from a Patent Examiner (in the form of a letter called an "Office Action"), the rejections must be somehow overcome by the patent counsel (usually by way of a combination of technical and legal arguments) before the USPTO will issue a Notice of Allowance leading to an issued patent. Some patent applications go through many rounds of rejections and many years of prosecution before resulting in a Notice of Allowance from the USPTO, depending on factors that include the subject matter, how crowded the field of prior art is, and how reasonable the Patent Examiner and/or Applicant is in making concessions to resolve a case.

The average amount of time of pendency between the original patent-application filing and either patent issuance or patent-application abandonment (usually due to the inability to overcome a Patent Examiner's rejections) is roughly three years, during which time an Applicant can assert that their invention is "Patent Pending" (which can have some business/marketing advantages). The pendency time can be significantly reduced via various special government programs designed to "fast-track" the examination and prosecution of certain classes of patent applications, if certain requirements are met (and in some programs significantly higher government filing fees are required). A couple of examples of such "fast-track" programs are the USPTO's "Track-I Program" and the "Patent Cooperation Treaty Patent-Prosecution Highway Program" (PCT-PPH).

For those who want to protect their invention in non-U.S. jurisdictions, there are various international treaties that help keep those processes and associated costs down, such as the Patent Cooperation Treaty ("PCT"), which currently has 151 Contracting Members, the 1999 Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs ("The Hague Agreement"), which currently has 66 Contracting Members, and The Paris Convention for the Protection of Industrial Property ("The Paris Convention"), which currently has 176 Contracting Members. SIPL is knowledgeable and experienced in helping its Clients in pursuing foreign patent protection.

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  • Startup IP Law, LLC

    Aurora, CO 80014

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    Email: Terry.Wyles@startupiplaw.com
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