For patent applications filed prior to March 17, 2013 in the United States, the right to receive a patent accrued at the time of invention. This was unlike everywhere else in the world, where the right to a patent accrues upon filing an application. But for applications filed after this date, the United States is now under a “first to invent” patenting system, which means an inventor’s rights originate when the application is filed, unless it is based on a prior-filed application to which it can claim priority either here in the U.S. or in a foreign country.
There is no requirement that an inventor conduct a patentability search prior to filing a patent application. In fact, the Patent and Trademark Office will conduct their own patent search during the examination of the patent application.
Patent practitioners like to have a patentability search performed before drafting the application for several reasons:
- A patentability search provides the information needed to determine whether an invention is likely to receive patent protection.
- In the event a search yields patents that would prevent an inventor from patenting his invention, these patents may be used by the inventor to “invent around” the revealed patents.
- It provides the patent practitioner information concerning relevant patents needed to better define the invention in the application and provide greater scope to the claims.
- It provides information about relevant patents the invention might infringe.
Filing the Application
An application must be filed with an application fee. The application fee is a charge the federal government requires for the application to be examined by the Patent and Trademark Office. The federal government sets the amount of the filing fee.
Filing a patent application with the United States Patent and Trademark Office establishes a filing date for the application. This is more important recently, due to changes in the patent law enacted by Congress. The term of a utility patent filed at this time is 20 years from the filing date of the application.
Prosecution of the Application
When a patent application receives a filing date, the application is forwarded to the corp of patent examiners. These examiners, typically engineers or scientists with a background in the relevant field check the invention, as described in the application, to determine whether it passes the tests for patentability. If all of the claims of the application meets the requirements of usefulness, novelty, and non-obviousness, the application is approved for issuance.
In the event the application does not meet the requirements, a response is issued to the applicant rejecting the application and detailing the objections and reasons for rejection. The patent practitioner replies to the patent examiners response arguing around the objections and rejections, or narrowing the claims in the application to avoid previous patents. This procedure is repeated until a final response is issued by the Patent and Trademark Office. The final response will allow the accepted claims to issue, or in the event no claims are accepted for issuance, reject the application.
Further prosecution after the final response is possible, but only recommended in rare cases.
Issuance of the Patent
When the Patent and Trademark Office allows a patent to be issued, another fee, the issuance fee, is required. This fee also changes frequently and on a regular basis.
Maintenance of the Patent
After a patent is issued, the protection provided is technically for 20 years from the date of application. In order to receive the full 20 years of patent protection, the owner of the patent must make three periodic maintainance fees at three, seven and 11 years. Each of these periodic mantainance fees is larger than the last and also changes on a frequent and regular basis.
If the maintainance fee is not paid on time, the Patent and Trademark Office provides a six month grace period in which to make the payment. Thus the maintainance fee may be paid at 3 1/2, 7 1/2 and 11 1/2 years.