The utility patent process, from start to finish

The patent process can seem daunting if you’re not familiar with it, but understanding the steps is integral to the success of your product. Our friends at Keeley DeAngelo LLP are IP experts who know all the intricacies of securing a patent. In this post, they took the time to break down the process for us to make it clear and accessible. They estimate the whole process takes about two to four years. The graphic below offers a visual timeline, including the associated costs. Read on to learn more.

Step 1: Conduct a prior-art search.

After an invention is ready to claim as intellectual property, you must first determine whether the invention already exists with a prior-art search.  Prior art is any previous public disclosure of an invention just like yours. This includes anything published or disclosed anywhere in the world. Prior art is any evidence that your invention is already known.

The United States Patent and Trademark Office (USPTO) advises inventors to do a prior-art search before they consider applying for a patent. It’s optional, but we strongly advise it. Why? So that you don’t waste time and money developing something that’s already patented, or already in the public domain.

Step 2: File a provisional patent application.

A provisional patent application is often the first step in intellectual-property protection. The quickest and least-expensive starting point, it gives you one year to research, develop, and fine-tune an invention before making official claims.

Filing a provisional patent application gives inventors a “priority date,” a U.S. filing date that holds their place for one year, until they file a nonprovisional application. Once the provisional application is filed, you may claim patent-pending status. Provisional applications are not examined by the USPTO.

Step 3: File an information disclosure statement. 

You should also file an information disclosure statement any time before the first office action (more on this below), or within 12 to 20 months of filing your provisional patent application. 

Step 4: File a nonprovisional patent application.

Within one year of filing, you must file a nonprovisional patent application. This application goes through the rigorous examination process at the USPTO. Then, sit tight; initial examination can take from 6 to 20 months. You may check on your application at the USPTO’s Patent Center by entering your application number. You’ll have patent-pending status during the entire pendency of your patent application. 

While a patent is pending, your competitors don’t know how your invention will evolve; this keeps them guessing and puts them on notice that any development they think might get around yours could later be taken away from them if and when your patent issues.  

Step 5 (optional): File a continuation-in-part application for changes.

In the event of a substantial change to an existing nonprovisional patent application, you may opt to file a continuation-in-part (CIP) application any time after the nonprovisional patent application is filed. Continued innovation builds a patent portfolio, and may serve to keep patent-pending status going while keeping your competitors guessing.  

Step 6: Receive an office action.

The actions between filing and grant are referred to as prosecution. The first communication from the patent examiner comes in the form of an office action. Office actions represent the patent examiner’s formal examination of your application. These may list prior art and rationales for allowed (approved) claims or rejected claims. Initial office actions include the common “non-final rejection,” where some or all claims have been rejected; and “ex-parte quayle” actions, where claims are allowed with minor adjustments.

Don’t be discouraged when you see an examiner’s rejections. It often takes a few tries to overcome prior art that the examiner has cited. Sometimes an application is immediately granted, but this isn’t optimal; it could indicate that the invention’s claims were too narrow, and you’ve left something on the table. A good patent practitioner knows how to walk this line carefully. They write your application to be as realistically broad as possible within the boundaries of your invention, in light of the prior art.   

Step 7: Receive a final office action. 

After the non-final action, a patent examiner will submit a final office action. You get three months to reply before you face an extension-of-time fee, with a total of six months before it’s considered abandoned. Before the six-month deadline, you may appeal the patent examiner’s decision, or file an optional Request for Continued Examination, a continuation application, or a continuation-in-part application.

Note: At any of these stages, you may be eligible to fast-track prosecution. That’s outlined on the USPTO’s Patent Application Initiatives Timeline.

Step 8: Receive a notice of allowance and pay fees. 

The next-to-last step in patent prosecution is, optimally, the Notice of Allowance. Here’s where you congratulate yourself on your hard work, pay an issue fee, and wait for notification of your patent number.

Once issued, a typical U.S. patent is in force for 20 years from the file date. This date is fungible when there are continuations involved. After issuance, maintenance fees must be paid every few years. See our blog post on the subject for more.

USPTO fees vary depending on the type of patent application. Fees may also vary by the number of claims made. 

The three basic fees for utility patents are:

• A non-refundable filing fee
• An issue fee (paid only when an application is allowed)
• Maintenance fees that maintain your legal protection, paid at 3-1/2, 7-1/2, and 11-1/2 years after your patent is granted  
• Professional fees charged by a patent practitioner

Always check the current fee schedule before submitting an application. More information can be found at the USPTO’s Patent Process Overview page and in their informative video.

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