10 steps to obtain a US patent

Congratulations on your new invention! You may have done your homework on how patents can be valuable, and you may have decided to apply for a patent in the US since it is a relevant and large market for you. The next question that comes to mind is, “what do you have to do to, not only apply for a US patent, but get it granted?” The process of getting a patent granted involves many steps, and is cumulatively referred to as “patent prosecution”. There are specially qualified professionals called patent agents or patent attorneys who specialize in patent prosecution, and they can take you through the steps, however before you engage your patent attorney, it is also important for you to be aware of what you are getting into. Hence, without further ado, we list out the various steps involved in applying for and getting a US patent here.  

They are:

  1. Patentability search
  2. Preparation of the patent application
  3. Submitting the oath & declaration, and Power of attorney
  4. Executing and recording an assignment agreement
  5. Paying the filing, search and examination fees based on entity status
  6. Submitting an Information Disclosure Statement (IDS)
  7. Response to one or more office actions
  8. Request for continued examination
  9. Payment of issue fee on receipt of the Notice of Allowance (NOA)
  10. Payment of maintenance fees

The first step is to conduct a patentability search of prior art. Prior art includes any information that is available to the public prior to the date of filing the patent application.  The objective of conducting the patentability search is to determine whether the invention is novel and non-obvious with respect to prior art. By ‘novel’, it means that it should not have been described in any printed publication, information available to the public or on sale prior to the effective filing date of the invention. If the result of the search is that no prior art is found which is close or relevant enough to the invention and makes the invention novel and non-obvious, you can proceed with preparing and filing a patent application. 

The patent application can either be filed as a provisional patent application or a non-provisional patent application. If you file a provisional patent application first, you then have to file the non-provisional patent application within one year to get the effective filing date (which is called a priority date) of the provisional patent application.

At the time of filing the non-provisional patent application you have to submit the patent specification and drawings. The specification should include claims (which define the scope of legal protection), and a detailed description that describes the invention in sufficient detail to enable a person having ordinary skill in the field of the invention to implement the invention without undue experimentation.

In addition to this, you also have to submit an oath and declaration form that is signed by all the inventors. A power of attorney should also be submitted to authorize a US patent agent to represent you before the USPTO (United States Patent and Trademark Office). 

In case the applicant is a company, the inventor(s) and assignee have to sign an Assignment Agreement to transfer ownership of the patent from the inventors to the company.  The assignment agreement has to be recorded with the USPTO assignment database. In case the inventors, the applicant, or the patent agent are aware of any prior art that affects the patentability of the invention, they have to submit an information disclosure statement (IDS) to disclose the prior art to the USPTO office. 

Fees for filing, searching, examining, issuing, appealing, and maintaining patent applications and patents are reduced by 50 percent for any small entity that qualifies for reduced fees under 37 CFR 1.27(a), and are reduced by 75 percent for any micro entity that files a certification that the requirements under 37 CFR 1.29(a) or (d) are met. Applicants must determine their entity status before making an assertion of entitlement and paying a discounted fee.

Typically, a US patent application will be published within 18 months from the priority date (the earliest filing date). If you want to speed up the process of obtaining your US patent, you can avail of prioritized examination by filing a request for Track one prioritized examination along with the requisite fee. It will allow you to get a final disposition within about twelve months. For a regular examination it may take 2 years or longer to get a first Office Action. The office action is an examination report from the US patent office which may include objections, such as on the basis of lack of novelty or due to obviousness, which are covered in sections 35 U.S.C. 102 and 103 respectively.

The office action may also include objections due to non- patentable subject matter, which is covered in 35 U.S.C 101 and objections due to insufficient written description, ambiguity or lack of enablement, which are covered in 35 U.S.C 112. The first office action is called a Non-Final office action. The applicant has to respond to the office action within 3 months without late fees. The response may include a claim amendment but should include arguments to overcome the objections.  An office action response that can overcome these objections has to be prepared carefully and submitted within 3 months. The applicant can also request the examiner for a telephonic interview and then submit a written response after the telephonic interview.

Upon receipt of the response to the office action with a claim amendment, the patent examiner will conduct a new search if there has been any substantive amendment to the claim.  If the examiner is convinced that the patent application satisfies all statutory requirements including under 101, 102,103 and 112, a notice of allowance will be issued. If the examiner is not convinced, another office action is issued.

The second office action is called a ’final rejection’ or a ‘final office action’. At this point, while responding to the final rejection, if the applicant wants to amend the claims, a request for continued examination (RCE) would have to be filed along the 2nd office action response with the amended claims. Then the USPTO may issue a 3rd office action which will be a non-final office action and this process continues until the examiner either issues a notice of allowance or the applicant gives up and doesn’t respond within 6 months, due to which the patent application gets abandoned. 

Once a Notice of allowance (NOA) is issued, the applicant will need to pay a one-time issue fee after which the patent will be granted and the applicant will receive the granted patent number. The applicant will also have to pay maintenance fees and any applicable surcharge by the end of the 4th, 8th, or 12th years after the date of issue. Non-payment will result in a lapse of the patent rights and a Notice of Patent Expiration is sent to the fee address or correspondence address on record.

We, at Metayage IP appreciate the value that a granted patent can add to your venture. We have supported hundreds of brilliant innovators and start ups and seen them grow in leaps and bounds after creating a portfolio of granted US patents, which are valuable intangible assets for them. If you wish to get onboard this journey of converting your unique idea into a valuable intangible asset, please drop us an email to ip@myipstrategy.com