Comprehensive Patent Roadmap

I. Prior to Filing

A. General Procedures

1. Ensure that all employees and independent contractors that might contribute to an invention and contractually obligated to assign their rights.

2. Train staff – scientists and engineers are trained to look for inventions.

3. Staff performs research and collects and analyzes data.

4. Staff performs a prior art literature search and collects references.

i. An optional prior art search can be performed by a patent searcher.

5. Staff writes and submits Invention Reports (IRs) to leadership.

6. CTO or committee evaluates and categorizes each IR into one of the following categories:

i. Trade Secret

ii. Hold

iii. File in patent application

7. A lead inventor is identified to be the interface with the drafting attorney.

B. For each prospective invention, determine the business purpose that would be served by patenting.

1. “Invention by Direction” – a unique approach in which the area for patenting is identified but there is no pre-existing research. Technical experts and a patent attorney meet to develop inventive concepts for filing in a patent application. This is a rarely used procedure that does not relate to the general procedures.

II. Patenting Schedule

A. Optional Prior Art Search

B. Preparation and filing of Initial Application

1. Submit to the drafting attorney the following:

i. The IR

ii. Description of experimental work and data

iii. Prior art literature

2. For more complex illustrations, a drafter may be needed to produce formal drawings

3. Provisionals are active for 12 months from filing date

4. Related new concepts can be filed in additional provisional filings

5. Instead of a provisional application, the initial filing can be a US non-provisional or a PCT application.

C. During the provisional period:

1. Decide whether to file nonprovisional (US-only, PCT-only, or US and PCT)

2. If the decision is ‘yes’, then prepare and file nonprovisional prior to 12-month expiration of provisional

D. PCT applications

A PCT application provides an extended time period (30 months from the initial filing date) in which to decide whether to proceed with the patenting process in countries that are members of the Patent Cooperation Treaty (PCT). Although most of the world’s industrialized nations are members of the PCT, some countries, such as Taiwan, are not members of the PCT. For countries that are not PCT members, the deadline for a patent filing is typically 12 months from the earliest priority date.

1. The International Bureau will review within 6 to 12 months. They will send:

i. A number of notifications

1. Some may require responses

ii. An International Search Report

iii. A Written Opinion

2. Deadline to enter national phase is 30 months from provisional filing date

3. Select countries to enter

i. Foreign patent applications are filed and prosecuted through patent attorneys registered in the selected country.

ii. Foreign Applications typically are not patented for several years. For many countries, annuities/maintenance fees are due every year.

E. US applications

1. Prosecution of US applications will typically occur over a 3-year period. US patent applications can be expedited by payment of additional fees.

2. Information Disclosure Statement – prepare and file within first 3 months

i. Includes all known information relevant to patentability. This obligation continues until issuance of the patent application.

ii. Updates must be filed when new literature from foreign applications, including the PCT application, are referenced.

3. Completion of application period – First 6 months

i. Includes notices for correction of informalities. Examiners may request additional corrections all the way up to issuance of claims.

ii. An Examiner will be assigned upon completion.

4. Examination period – 12 to 36 months after filing

i. Examination usually begins with a Restriction Requirement, which is typically issued 12 to 18 months from filing.

1. The Restriction Requirement typically limits initial examination to one or two independent claims.

2. Nonelected claims can be pursued in a divisional application that can be filed any time prior to issuance of the first application.

ii. The Examiner will send office actions detailing any reasons for objection to or rejection of claims. These require a response to address the objections and rejections.

5. Allowance

i. If the Examiner is satisfied that all objections and rejections have been addressed, then the Examiner will issue a Notice of Allowance.

ii. The issue fee must be paid.

iii. Any divisionals/continuations must be filed before issuance of the patent application.

6. Issuance

i. The USPTO will notify of the issuance date.

ii. Information must be submitted to annuity service.

iii. Payment of maintenance fees (also called annuities) are required to keep the patent in force.

1. No annuities are due while a patent application is pending.

2. Maintenance fees are due 3.5, 7.5 and 11.5 years after issuance.

7. Any products or services covered by a patent application or granted/issued patent should be labeled patent pending or US Patent No. ###.