The Patent Application Process
Our primary business is the writing of patent applications for utility patents such as machines, articles of manufacture, methods, chemical compositions and so forth. It should be understood from the outset that as registered patent attorneys and patent agents all information is held in the strictest of confidence as required by United States Patent and Trademark Office (USPTO) regulations. In order to understand your concept, the patent process typically begins by the collection of various useful items of information regarding the general nature of your invention and your goals. Once we have sufficient information you can choose the type of application suitable to your business objectives.
Application Type?
Applicants have the option of choosing between three different types of application types that Patent CEO works with; these are Design, Provisional or Non-Provisional Applications. A design application covers the ornamental appearance of an item and not the specific functional and or structural features that make the invention unique. If your invention is about the appearance of your item choose a Design Application.
If there are functional characteristics embedded in your process, machine, electronics, software or article of manufacture then you should choose between two types of utility applications, namely, a non-provisional and a provisional application.
Provisional Or Non-Provisional
A Non-Provisional application will be examined for patentability and its claims will be vetted against the prior art within the selected and related technical fields. When a non-provisional application is allowed by the patent examiner and becomes a patent, it has a lifecycle of twenty years from the earliest priority date. This date extends from previous applications upon which the issuing application can claim a co-pending chain of common subject matter.
In contrast to the non-provisional application, applicants can also elect to file a Provisional Application for Patent which in and of itself can never become a patent. However, it does provide a one year grace period for filing a complete non-provisional utility application. At first, this option is less expensive then a regular application; but since a provisional patent never matures into a regular patent, an applicant will have to cover the expenses of a provisional application and later in the year the cost of a regular application.
Patent CEO will deduct a reasonable amount of the provisional application cost from the later price structure of the regular application. Choose this option only if you are not sure about filing your regular non-provisional application because your are still experimenting, modifying the concept, seeking financial backers, testing your product or similar types of situations.
Contract Signature
Once you have elected the application type and we have collected sufficient technical information, a contract is signed covering various items pertinent to the application process. Among these are a description of the specific work to be performed, time period for its completion, responsibilities of each party and any unique characteristics required by the situation.
Typically, we accept a fifty percent fee before commencement of the work. After that, we collect the other fifty percent once a first written specification is complete but not yet filed at the appropriate government agency such as the United States Patent and Trademark Office (USPTO), Patent Cooperation Treaty (PCT), and other national patent offices.
Drawings
Getting a correct set of drawings is critical to your invention as it forms the framework of the written description. Thus, it is imperative that you work with us to make changes early on when the draftsman comes back with a first set of drawings. When an applicant is careful to make necessary corrections and or changes to the drawings in the first set of drawings, this prevents later unnecessary delays and potential cost overruns. Patent CEO works with several draftsman to provide the best quality drawings for your utility and design patents. Once you have approved the drawings we can proceed to creation of your written description.
Written Spec
Then we will proceed forward to the writing of your specification including the Background of the Invention, Summary of the Invention, Listing of Drawings, Detailed Description of the Embodiments and Claims. The claims represent the boundaries of your invention as broadly viewed in light of your written specification. After you have finally reviewed your written specification and drawings and approved both, we will collect other auxiliary documents and arrange for the payment of fees and the transmission of all paperwork to the patent office you have selected. These include but are not limited to: Declaration(s), Power of Attorney(s) and more. These will be collected and forwarded to the appropriate agency electronically.
Waiting on the Examiner
Once we have filed the application electronically, a legal instruments examiner reviews all documents and notifies us as to their initial acceptance. Then the waiting game begins; since the USPTO has thousands of patent examiner and manages a workload of hundreds of thousands of pending cases their is a backlog of applications in the patent docketing system. Depending upon the art unit and or technology center your application is classified in the application can have anywhere from six months to a year or more of delay in examination. This is internal to the patent office and we have no control over this.
Examiner Action
When the application moves up on the docket, the patent examiner will carefully review it for various characteristics primarily focusing on the existing prior art. The prior art is all disclosed inventions in this or a foreign country that are closely related to your invention. Having conducted a thorough investigation of this material, the patent examiner will send us an office action having an opinion either a) passing the application to allowance and issue; or b) demonstrating why the application is not allowable based upon existing law. Typically, the examiner will discuss whether it exists verbatim in the prior art or whether it is believed to be obvious to one of ordinary skill in the art. This latter opinion can be somewhat irritating to applicants because it can seem like it is a forced reconstruction of your invention with dissimilar technology that at times makes no apparent sense.
Applicant Response
When the patent examiner allows an application, an issue fee is required for permitting the application to be printed and officially become a patent. If the office action does not allow the application then we will take a look at the specifics of the opinion. Then after reviewing the patent examiner action, we will provide you with a cost quote based upon a proposed response to his opinion and any items that need action therein.
If you decide to respond, we will prepare an amendment and or a request for reconsideration that fully responds to his most recent action. In particular, the response treats each point of the examiner action 1) delineating errors in the logic used in the opinion and 2) highlighting relevant case law that benefits your case. Once filed, the amendment and or request for reconsideration is forwarded to the examiner and we will receive a response in several months.
Examiner Reply
Upon receipt of the response the examiner will take it up as his docket permits and analyze the arguments and changes made therein based upon patent law and examining procedures derived from the aforementioned. At this point the examiner has the options of: a) allowing the application; b) finalizing the rejection; c) explaining how to change the application to make it allowable by providing insights into how this can come about, either by objecting to dependent claims that would be allowable or even suggesting language that would make it so.
However, if no agreement can be reached, the applicant has the options of 1) requesting continued examination (RCE) by paying an appropriate fee and submitting an amendment paper; 2) appealing the decision to an appeal board; 3) continuing the case with a regular continuation, divisional or continuation-in-part adding new subject matter to the application.
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