The first step to obtaining an utility patent is to prepare and file a non-provisional utility patent application.
In order to obtain a filing date and an examination of a non-provisional utility patent application, one must file a specification, drawings (if needed to understand the invention); at least one claim; a signed declaration; and payment of a government filing fee (currently $400 for a Micro-Entity and $800 for a Small Entity). Similar to a property deed to a parcel of land, the claims of an utility patent application define the metes and bounds of the patent right - specifically, the right to "exclude others." In order to be patentable, the claims of an utility patent application must be new and non-obvious in view of the "prior art." Prior art includes any public disclosure or use of a product or process anywhere in the world prior to the filing date of the patent application. The claims of an utility patent application must be supported by the specification so that one skilled in relevant art can make, use, and practice the invention as claimed.
After a non-provisional utility patent application is filed, the USPTO will issue a formal Filing Receipt confirming the application's serial number and filing date. Within three (3) months from the filing date of the utility patent application, the applicant must disclose any prior art he or she is aware of that is "material" to the examination of the patent application. This is known as the "duty of disclosure." Failure to disclose material information to the USPTO can result in any patent being held unenforceable by a court if the patent is subsequently enforced and litigated. Although it may not be required, if a patent search has been conducted, the results of any patent search should be disclosed to the USPTO by filing an Information Disclosure Statement.
Depending upon the technology and art unit, within 1 to 3 years, a Patent Examiner will examine the patent application and issue a first Office Action either rejecting or allowing the claims. Prior to issuing the first Office Action, the Patent Examiner conducts a patent search to uncover prior art that would anticipate and/or render obvious the invention as claimed in the patent application. If rejected, the Examiner cites the prior art relied upon to support the rejection. If the USPTO issues an Office Action rejecting one or more claims, the applicant may file a response (with or without amendment of the claims) within three (3) months asserting why the claims are patentable over the prior art cited by the Examiner. At FOXPATENT, we find it helpful to have a telephone interview with the Examiner prior to filing a response to an Office Action in order to make sure the Examiner understands the invention as claimed and the prior art with the goal of achieving allowance of the claims. If the Examiner agrees that the claims (as filed or as amended) are patentable over the cited prior art then a Notice of Allowance will be issued providing a period of three (3) months to pay the government issue fee. As of January 1, 2014, the government issue fee is $240 for a Micro-Entity and $480 for a Small Entity. Upon payment of the government issue fee, the USPTO shall issue a letters patent. An utility patent has a term of twenty (20) years measured from its filing date. To keep the utility patent in force for the entire term, government maintenance fees must be paid 3½, 7½, and 12½ years from the issue date.
