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The Patenting Process

   Have you ever wondered what the whole patenting process looks like from the inventor's perspective ?  Dollar figures below were current about 8 years ago, the overall process described is about the same as it was, but inflation and fee increases at the PTO mean the dollar values in what follows are on the low side.

    The first thing that happens is the inventor conceives a new idea for a process, machine, article of manufacture, composition of matter, plant, or ornamental design.  In the best case, though not necessarily always, they then proceed to build a working model, or to otherwise constructively reduce the invention to practice. 

    Sometime during the process it occurs to the inventor, as most are driven by economic considerations ($$$), that if they were to sell products which embrace their invention either in whole or in part, then others would be very likely to copy their invention.  Often, inventors come to the conclusion that by obtaining a patent, they may be afforded a legal remedy by which they can stop others from copying their idea, and hence prevent others from reaping where they have not sewn.

    So the inventor writes up, files, and prosecutes a patent application and is awarded a patent on her invention.  She then uses the patent to stop others from making, using, or selling her invention or articles embodying the same.  Simple.  Right ?

    Not quite.  Patent prosecution is a relatively complex matter, and most inventors are not well versed in it.  Accordingly, most inventors seek out the help of an experienced Patent Agent or Patent Attorney (hereinafter collectively referred to as "patent practitioner").  Doing it onesself the first time is akin to putting a roof on a house without experience.  There is a good chance it will leak.

    So, our inventor friend seeks out and locates a patent practitioner, either a patent attorney or agent.  The inventor discloses her invention to the practitioner in such full, clear, and concise detail as to enable the practitioner or anyone else to make and/or use the invention.  The inventor and practitioner come to agreement on a fee amount, schedule, etc., and the ball is rolling.

    The first thing which should be done is a search of what has already been invented by others, for two reasons.  First, the inventor and practitioner need to know if the idea is in fact new and not obvious, because being new and not obvious are requirements for patentability.  If the proposed invention is not new or non-obvious, then all effort and money spent in attempting to patent the invention may be wasted.

    In the event that the idea or proposed invention seems to be new and not obvious, an assessment should be made as to what breadth of coverage is likely to be allowed by the Patent Office.  If the breadth of coverage seems enough to afford the inventor a business advantage which would justify the cost of filing the patent, then the inventor may decide to have the practitioner go ahead and write up a patent application for the invention.  (If the coverage is marginal, or if only a miniscule portion of the invention is truly new such that the likely allowable claim breadth would not afford much of a business advantage, the inventor may elect to skip the whole patent idea, and just make and sell the invention, assuming nobody else has a patent which covers it.)  Patent searchers typically cost between about $ 500 and $ 1200 for the US only, depending upon the nature of the art to which the invention pertains, its complexity, and who is doing the search.

    Interestingly, the inventors themselves do not always fully appreciate the true scope of their own invention.  A creative and experienced practitioner can arrive at unique and sometimes powerful ways to claim the inventor's invention that the inventor themselves aren't aware of.  For example, an inventor with a new fluid pump may believe that the whole patentable aspect of their invention is in the structure of the pump itself.  However, a practitioner may be able to draft claims directed to a process for using the pump, in addition to claims on the pump itself.  If granted, the process claims may turn out to be even more valuable than claims to the pump itself.  Other claims may be drawable to the pumps' impeller, and the way it interacts with its surrounding components.  This is but one illustration, and having a creative practitioner can add tremendous value to the patenting experience.

    So, once the practitioner has been paid (usually between $ 1200 and $ 6000, depending upon the complexity of the invention), they proceed to write an application on the invention.   This takes between about 2 and 30 days depending on the practitioner and the complexity of the subject matter.  The practitioner usually has a draftsperson as an aide who is knowledgeable regarding drawings necessary, and who handles the creation of formal drawings for the invention (typically between $ 175 and $ 500 per case).  Once the application is prepared, it is filed with the patent office in Washington (filing fee to government = $ 500).  Then the waiting period begins.

    After filing, assuming all required parts of the application were sent in properly, the application gets docketed with a patent examiner at the patent office.  The examiner, upon coming to our inventor's case, will read the application and then do their own patent search in the patent office and other files.  The Examiner does the search to make certain that the applicant does not seek to claim subject matter which is already in the public domain, for such would be inequitable.  In the event that the claims in the application meet all requirements of law and procedure, the application will be approved and the applicant will be permitted to pay the publication and issue fees ($1000 to government), and the patent will be issued in about 2 months.  More typically, however, some or all of the claims in most pending applications are rejected by the Patent Examiner.  In rejecting the claims of the application, the Examiner will usually rely upon two sections of statutes: title 35 of the United States Code, 102, and title 35 of the United States Code, 103.  These rejections are known as anticipation-type rejections and obviousness-type rejections.  The patent examiner then sends either a rejection or a notice of allowability to the practitioner at a time between about 4 months and 18 months from the date on which the application was filed.

    After the practitioner receives a rejection of some or all of the claims from the Patent Examiner, he may amend the claims of the inventors application, usually narrowing the claims just enough to obviate the rejections cited by the Examiner and thus providing the inventor with as broad of claim coverage as possible. 

    In some instances, Patent Examiners are wrong about the rejections they make, and being mere mortals, make errors on occasion.   Accordingly, a practitioner's response to a rejection by the patent office may not be an amendment to the claims which narrows their scope, but may consist only of arguments directed at the Patent Examiner as to why the Patent Examiner is wrong.  (This is where tact comes in !) 

    Regardless of whether the response by the practitioner consists of arguments only, claim amendments only, or some combination of these, the practitioner next submits the arguments and/or amendments back to the Examiner for reconsideration.  Such re-submission does not result in any fee due to the government, but costs the inventor the money which the practitioner charges for his time in preparing the response, (which is typically between about $ 150 and $ 1000, depending on the nature and complexity of the rejection).

    The Examiner then reconsiders the application in view of the amendments and arguments presented.  If it appears that the practitioner has overcome all of the rejections, then the Examiner may allow the application to be issued as a patent (after applicant pays the $1000 issue and publication fees).  If certain circumstances exist, such as, for one, a new grounds of rejection being necessitated by the practitioner's response, the Examiner may issue a FINAL REJECTION of the application.   This is not as bad as it sounds - many issued patents had received a final rejection at some point during their pendency / prosecution.  At this point, the Applicant may either take the case to appeal before the Board of Patent Appeals and Interferences, or they may make further amendments to the case and file it as a continuing application under several procedural options, depending upon the facts existing in the case at the timer.  In such a circumstance, the applicant must pay a new filing fee of $ 500 to the government, and transmittal fees, which are ordinarily nominal, to the practitioner.  Often, Applicants find it helpful to file what is known as a Request for Continuing Examination, which allows for further claim amendments by the Applicant as a matter of Right.

    Usually, applicants know where the patent office stands with regards to the patentability of their invention by the time they get the second response back from the patent office (after the patent office reconsidered the application, including amendments and/or arguments).  We usually know whether we are going to get a patent or not, based on what the Examiner has brought to light.  On occasion, the second response from the patent office is NOT a FINAL REJECTION, and the Applicant is permitted to once again amend/argue the patentability of the case.  These fees that the inventor pays to the practitioner for responding to Patent Office rejections and other communications are collectively referred to as "prosecution fees".

    Once the prosecution is over before the Examiner, the case is either allowed to issue,  it goes to appeals,  the Applicant can re-file again as a continuing application, or the inventor may abandon the case if its apparent from commercial attempts that the invention isn't commercially-viable, has insurmountable technical hurdles, etc..  If the Applicant loses the appeal, she can sue the Commissioner of Patents and Trademarks in the District Court for Washington DC to have her patent allowed, or else take it to the court of Appeals for the federal circuit.  If the DC district court finds against her, she can go to the court of appeals for the federal circuit.   If the court of appeals for the federal circuit finds against her, she can potentially go all the way to the Supreme Court.  It's happened before.

    Typically, most patents are issued between about 1 1/2 and 2 1/2 years from the filing date of the application, with about 28 months being common.

    There you have it.  That's my view of the patenting process - others' views may differ.  There are other avenues possible, and if I've made any error let me know and I'll fix it.  I hope you have enjoyed this and that it has enlightened you somehow.  Please write me with comments, suggestions, or questions you may have regarding this brief overview.


call (512) 763-1142  

Christopher J. Whewell

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