Process to Get A Patent

Do you know how to file a patent?

The Process to Get a Patent. Do you know how to file a patent and the steps to get a patent?

Patent prosecution is the term used to describe the entire process of filing and seeing the patent through to a conclusion, which is issuance or rejection. But let's get a little more detailed about what happens after the patent is filed in a "normal" prosecution.

Here are some of the steps in the process 

First Office Action:

The first formal correspondence in the process to get a patent from the US Patent Office concerning the patentability of the invention is in the form of a first "office action," which is mailed to the applicant's patent agent or attorney. This first step in the process to get a patent is generally received about fifteen months after the application was filed, although the actual time can vary considerably depending upon the technical field of the invention.

The first office action will usually contain reasons for any adverse action, objection, or additional requirements. If the invention is not considered patentable subject matter, the claims will be rejected. If a patent is rejected, it is generally because the claims are not new in comparison to the prior art, or because the improvements made over the prior art are obvious. It is not uncommon for some or all of the claims to be rejected in the first step of the process to get a patent; relatively few applications are allowed as filed.

If two or more inventions are claimed in a single application, and are regarded by the US Patent Office to be of such a nature that a single patent should not be issued for both of them, the applicant will be required to limit the application to one of the inventions. The other invention may be made the subject of a separate application which, if filed while the first application is still pending, will be entitled to the benefit of the filing date of the first application. This separate application is referred to as a "divisional application."

Applicant's Amendment and Response:

In responding to the first office action of the process to get a patent, the applicant's patent prosecutor will draft an amendment and response. In this step of the process to get a patent the patent prosecutor will request reconsideration and will specifically address the perceived errors in the examiner's office action. Frequently, the response will include an amendment to the claims in order to clarify the invention and to overcome the prior art cited in the first office action. In addition to the amendment, the response may contain arguments as to how the amended claims are patentable in view of the prior art references cited or the objections made.

In this phase of the process to get a patent, the patent prosecutor must be careful not to add "new matter" to the applications. Under Patent Law, all amendments to the drawings or specifications must conform to part of the application as originally filed. Any matter involving a departure from or an addition to the original disclosure will be rejected as new matter. Typically, the new matter which an applicant would like to add includes new descriptions of how the invention works, or further clarification of the type of materials and components utilized. These types of additions are disallowed in order to prevent new inventions from being "piggy-backed" on to old patent applications.


Responses in the process to get a patent must be made before a prescribed deadline. Typically, the deadline is set three months after the office action was mailed, and can be extended one month at a time up to six months. Each one month extension requires the payment of an additional fee. If no reply to the office action is received before the six month deadline, the application is considered abandoned. However, if it can be shown that the failure to prosecute the application was unavoidable or unintentional, the application may be revived by the Commissioner. The revival requires a petition to the Commissioner, and a fee for the petition, which should be filed without delay. The proper response must also accompany the petition if the response had not been previously filed.

Final Rejection:

After response by the applicant, the application will be reconsidered, and the applicant will be notified if claims are rejected, or objections or requirements made, in the same manner as after the first examination. This second office action in the process to get a patent is usually made "final." In making such final rejection, the examiner repeats or states all grounds of rejection considered applicable to the claims in the application. The alternative to a final rejection is the allowance of the application - which is of course good news.

When an office action is final, the applicant's response is then limited. The applicant's choices are generally one of the following:

  1. abandon the application;
  2. convince the Examiner to allow the application through a request for reconsideration;
  3. appeal the final rejection to the appropriate party;
  4. or file a continuing patent application which will allow the examination to continue.

In responding to this final office action of the process to get a patent, the applicant must remember that a six month deadline will be established, just as in the first office action. If the applicant, in consultation with her/his patent prosecutor, believes the invention is not patentable, the application should be abandoned. Alternatively, the applicant may request reconsideration from the Examiner, but such a request must be made early and must include arguments or amendments which place the application in position for an allowance. The applicant must then wait for a response to the request for reconsideration, but the applicant cannot allow more than six months from the date of final rejection to pass.

Board of Appeals

The applicant may wish to appeal the examiner's rejection to the Board of Patent Appeals and Interferences in the Patent and Trademark Office. The Board of Patent Appeals and Interferences consists of the Commissioner of Patents and Trademarks, the Deputy Commissioner, the Assistant Commissioners, and the examiners-in-chief, but normally each appeal is heard by only three members. An appeal fee is required and the applicant must file a brief to support his/her position. An oral hearing will be held if requested upon payment of the specified fee.

If the decision of the Board of Patent Appeals and Interferences is adverse to the applicant, an appeal may be taken to the Court of Appeals for the Federal Circuit or a civil action may be filed against the Commissioner in the United States District Court for the District of Columbia. The Court of Appeals for the Federal Circuit will review the record made in the Office and may affirm or reverse the office's action. In a civil action, the applicant may present testimony in court, and the court will render a decision.

As an alternative to an appeal,and one that is much more cost effective, in situations where an applicant desires consideration of different claims or further evidence, a continuing patent application may be filed. The new application requires a filing fee and should submit the claims and evidence for which consideration is desired. If it is properly filed before expiration of the six month period specified in the final office action, the applicant will be entitled to the earlier filing date for subject matter common to both applications. Under recently adopted changes to the patent rules, some continuing patent applications will keep the same filing date and serial number as the original application.

Payment of the Issue Fee:

The applicant will be given three months from the date of the notice to pay an issue fee. In addition to paying the issue fee, the patent office will sometimes require that final corrections be made to the patent drawings. If the issue fee and the drawing corrections are not submitted in time, the application will be regarded as abandoned. However, the patent office may accept a late issue fee if the delay is shown to be unavoidable.

The patent is issued as soon as possible after the date of payment, dependent upon the volume of printing on hand. The patent grant then is delivered or mailed to the inventor's patent attorney. On the date of the grant, the patent and the US Patent Office's file on the patent are made available to the public. When the patent is received, the patent attorney and the inventor should review the patent for errors. Errors in the patent can usually be corrected through the issuance of a Certificate of Correction.

Patent Marking:

A person who makes or sells patented articles is required to mark the articles with the word "Patent" and the number of the patent. A patent holder may not recover damages from an infringer unless products produced under the patent were properly marked, or unless the infringer was duly notified of the infringement and continued to infringe after the notice. The marking of an article as patented when it is not patented is against the law and subjects the offender to a penalty.


Some persons mark articles sold with the terms "Patent Applied For" or "Patent Pending." These phrases have no legal effect, but only give information that an application for patent has been filed in the Patent and Trademark Office. They are perfectly legal (and ethical) if the patent is actually pending. But false use of these phrases or their equivalent is prohibited.

Maintenance Fees:

All utility patents which are issued from applications filed on and after December 12, 1980 are subject to fees which must be paid to maintain the patent in force. These fees are due at 3-1/2, 7-1/2 and 11-1/2 years from the date the patent is granted and can be paid without a surcharge during the "window-period" which is the six month period preceding each due date, e.g., 3 years to 3 years and six months, etc. The maintenance fees may be paid up to six months late with the payment of a surcharge. Failure to pay the current maintenance fee on time may result in expiration of the patent.

To get a patent you need a good general understanding of the process to get a patent of the US Patent Office as described here. But only general. The process to get a patent is rather arcane and bureaucratic. My suggestion is to let your patent prosecutor handle the nitty gritty of it.



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Mike Ervin
Mike Ervin - Cost Effective Small Business Patent Protection.

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