Starting the Patent Process

April 2011

The first two issues I address with every new patent client who contacts me are ownership and disclosure. Before you proceed with the patent process, you need to make sure you own the patent rights to the invention, and you also need to make sure that your invention is not in the public domain due to previous public disclosures, offers for sale, public use, etc. For more information on ownership and disclosure, please see our videocasts here.

To begin the patent process, we require three things of inventors: a signed engagement letter, a completed disclosure form, and a retainer for the patent search. A prototype is not required for the patent search, but it is highly recommended because it will enable the search firm to focus more specifically on those structural aspects of your invention that are potentially patentable.

There are limitations to any patent search, four of which are mentioned here. The first is that most patent applications are published 18 months after filing, and applications filed with a nonpublication request are not published until the patent issues. This means that the patent search will not include any applications filed in the 18 months prior to the search. Second, a typical patent search will include U.S. patent references only; foreign searches may be conducted, but they are quite costly. Foreign patent references may be cited by the examiner, however, in reviewing your application. Third, a typical patent search includes patent references (issued patents and published patent applications only). Other types of publications (such as articles) are also considered prior art but are not typically included in a patent search. Fourth, there are issues with the patent office's classification system (classifications are not always consistent or accurate) that sometimes result in a reference not being included in a patent search that was conducted according to the most relevant search classes and subclasses. For all of these reasons, I tell inventors to consider the patent search a "snapshot" of the prior art but not to treat it as a guarantee of patentability.

Once the search is completed, we provide our best assessment as to the chances of patentability. If the client decides to move forward, then we usually file a nonprovisional patent application. I personally discourage the filing of provisional patent applications unless they are fully enabled and filed with formal drawings and a complete set of claims. Although claims are not required in a provisional application, the provisional patent application will not effectively provide you with a priority date (i.e., a date on which your filing cuts off all prior art pertaining to your invention) unless the claims that are ultimately included in the nonprovisional application--which must be filed within one year of the provisional--are fully supported in the provisional application. The only way to ensure that this requirement is met is to draft a comprehensive set of claims and prepare the full write-up and figures in connection with the provisional application. Although it may be cheaper, a "quick and dirty" provisional application is a trap for the unwary because it may turn out that you are in fact not protected during the one-year provisional period and that your invention is ultimately rejected on the grounds of intervening prior art (i.e., someone who did file a fully enabled patent application for the same or similar invention, or even for an unrelated invention that relates to a single aspect of your invention, during that one-year period).

The patent office typically takes anywhere between six months and four years to issue the first Office Action. The length of time it takes to the first Office Action is dependent on the art unit to which your application is assigned, as well as the workload of the particular examiner to whom your application is assigned. Generally speaking, apparel and fairly simple mechanical inventions (like truck bed covers) will be processed more quickly than software and medical devices. The patent office is supposed to issue the first Office Action within three years of filing, and if they do not, then for every day of delay, a day is added to your patent term. Similarly, the patent office is supposed to reply to your filing in response to an Office Action within four months, and if they do not, then a day is added to your patent term for each day of delay on the part of the patent office. It is not uncommon for us to see patent term adjustments of one to three years.


Amicable photo of Toni

Antoinette M. Tease, P.L.L.C.