US Patent Filing Process

During this post I will be explaining the first to file process explained by Efrat Kasznik in class. 

Step 1 Research and Development 

This part is fairly straight forward. The innovating company must invest the resources to create a invention that is non-obvious and novel to qualify for patentable status. This processes often extensive monetary and time costs to the company with little guarantee of success. 

Step 2 Invention Disclosure

Here is where the first to file and first to declare systems differ. Under the the first to file system, the invention must then be publicized and filed for as a patent to be recognized. Under the first to invent system, this qualification was not necessary as merely maintaining proof of the date of invention was enough to warrant protection. 

Step 3 Provisional Application

A provisional application for patent has a pendency lasting 12 months from the date the provisional application is filed. The 12-month pendency period cannot be extended. Therefore, an applicant who files a provisional application must file a corresponding nonprovisional application for patent (nonprovisional application) during the 12-month pendency period of the provisional application in order to benefit from the earlier filing of the provisional application. However, a nonprovisional application that was filed more than 12 months after the filing date of the provisional application, but within 14 months after the filing date of the provisional application, may have the benefit of the provisional application restored by filing a grantable petition (including a statement that the delay in filing the nonprovisional application was unintentional and the required petition fee) to restore the benefit under 37 CFR 1.78.

Step 4 Non-Provisional Application

When filing a nonprovisional utility patent application, it must be submitted in the English language or be accompanied by a translation in the English language, a statement that the translation is accurate, and have payment of the fee set forth in 37 CFR § 1.17(i). If an applicant files a nonprovisional utility application in a language other than English without the translation, statement, or fee, the applicant will be given a notice and time period to submit the missing item(s).

A nonprovisional utility patent application must include a specification, including a description and a claim or claims; drawings, when necessary; an oath or declaration; and the prescribed filing, search, and examination fees.

Step 5 Patent Issued 

Patent is issued. Let the royalty collection commence.