To obtain a U.S. Patent on a new invention, one must file a patent application that follows the rules and requirements of the PTO. A patent application must include a written description and drawings to permit one of ordinary skill in the art to make and use the invention. The application also includes one or more claims that designate what the patent applicant believes to be his invention.
A patent application is typically prepared by a patent attorney familiar not only with relevant legal requirements but also with the relevant area of technology. The patent attorney typically begins by learning about the new invention from the person or persons who thought of it (or conceived of it), often referred to as the “inventor.”
After preparing the patent application, the patent attorney submits it to the USPTO. At this point, the patent applicant can mark products that are made according to the application with “Patent Pending.”
Most patent applications are filed as non-provisional or “regular” patent applications, but may instead be filed as a provisional patent application. A patent examiner at the PTO examines each regular patent application and decides whether to issue a patent, but the PTO does not examine provisional patent applications – it simply holds them in secrecy for a year, in which time the applicant must take additional steps to preserve patent rights, such as by filing a regular application. There may be other reasons that require a patent applicant to file a regular patent application in less than a year from the date of the provisional application, such as a statutory bar. With either type of application, a fee is due to the USPTO upon filing, but the fee for a regular application is much greater than for a provisional applciation.
The main part of patent application prosecution is examination by the patent examiner. For a new regular patent application, examination typically begins at least a year and often much longer after filing. During examination, a patent examiner reviews the application and decides whether to allow it to issue as a patent. Usually, the examiner sends the applicant a communication (an Office Action) with reasons the application is rejected, and the applicant can then respond with changes in the application, called amendments, with arguments, and with evidence to overcome the rejections. Prosecution can last several years if the applicant and the examiner have difficulty reaching agreement. In such cases, prosecution may include an appeal within the PTO and, in rare cases, to a federal appellate court.
Finally, when the examiner allows the application, the applicant is required to pay an issue fee to obtain an issued patent. After a patent issues, additional fees, called maintenance fees, are required to keep it in force; maintenance fees are currently due 3.5, 7.5, and 11.5 years after a patent issues. If these maintenance fees are each paid, the patent will remain in effect until about 20 years from the patent application’s earliest filing date.