When filing for a patent it is important for inventors to understand the process so as to know what to expect upon filing. While the road to acceptance can take some time, obtaining a patent is the first step towards protecting and monetizing all the hard work put into an invention.
Filing a Provisional Application
Ideally, the first step in the process is filing a provisional application. Because the U.S. has switched to a first inventor to file system, it is imperative to file an application as soon as possible. Filing a provisional application allows the inventor to secure a priority date upon realization of a patentable invention but before they have a finished perfecting it. Provisional applications are less expensive than non-provisional applications and are easier to file due to their lack of formal requirements. As soon as a provisional is filed the inventor can use the term patent pending and market the invention freely without fear of losing any rights.
Within a year of filing a provisional application, the inventor must convert it into a non-provisional application. Filing a non-provisional application is a required step to securing patent rights. This is the application that can issue into enforceable claims. As mentioned above, non-provisional applications have formal requirements, and so, generally take longer to prepare. However, taking time to craft proper claims is crucial to ensure the patent covers the broadest scope of material possible.
After filing a non-provisional application, a patent examiner will search for what’s called prior art (information that has been disclosed to the public prior to the priority date which is possibly related to the application’s claims). The examiner will then either argue under various rules that the claims have been disclosed based on the search or allow the claims to issue. If the examiner argues the claims have been disclosed, it is up to the inventor or their attorney to present persuasive arguments to the examiner as to how the application distinguishes itself from the prior art.
Once the examiner finds the application to be in satisfactory condition for approval the inventor will receive a Notice of Allowance. The inventor will then have to pay an issue fee and about four weeks later a patent number and issue date will be assigned! The issued utility patent is enforceable for 20 years and is measured by the priority date secured by the filing of the provisional or non-provisional application, whichever is earlier.
While much of the hard work is over after the patent issues, patent owners must still be vigilant in protecting their rights. Maintenance fees are required to keep a patent enforceable after 4, 8, and 12 years after the issue date of utility patents. Patent owners must also keep apprised of the market and their competitors should the choose to prevent others from practicing their issued patents.
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