After you receive the patentability opinion, you will want to then file a patent application to protect your invention. A patent application includes an abstract, a specification, at least one claim, a Declaration, a filing fee, and usually at least one drawing.
The most important part of the patent application is the Claims, which describe the scope of coverage that the inventor is attempting to receive from the United States government. An experienced patent lawyer is typically required to receive the most preferable patent coverage for your invention. Adequate patent coverage ensures that potential infringers will be prevented from making, using or selling your invention even if they make a slight modification.
E-FILING YOUR PATENT APPLICATION
After your patent application is drafted, you will then file the patent application with the Patent Office. Neustel Law Offices files all of its patent applications electronically with the U.S. Patent Office via the e-File process which provides us with immediate confirmation that your patent application has been filed along with your official serial number. It is not recommended that you file your patent application via U.S. Mail because of the significant advantages of e-filing your patent application. After your patent application is filed electronically with the Patent Office, you will officially have “patent pending.” It is important to note that a patent application filed with the Patent Office does not provide you with any legal rights to sue an infringer – only a granted patent provides this valuable legal right.
PROSECUTION OF YOUR PATENT APPLICATION
Your patent application will remain at the Patent Office for 1 to 3+ years before the assigned Patent Examiner will review your patent application. During the review by the Patent Examiner, they will perform their own independent patent search and typically find patents different from what is found in your patent search.
After the Patent Examiner has performed the patent search, they will make a determination as to whether any or all of the claims in your patent application are allowable. The Patent Examiner will prepare an “Office Action” which is similar to a patentability opinion. In the Office Action, the Patent Examiner will typically reject one or all of the claims in the patent application.
After receiving the Office Action, you will have up to three months to file a Response (up to 6 months total if you pay extension of time fees). In the Response, your patent attorney will argue how your invention is different from the patents cited by the Examiner. The patent attorney may also amend your claims in order to place the application in better condition for allowance.
The Patent Examiner will review your Response and may do a second patent search in view of the arguments/amendments. The Patent Examiner will then typically issue either a Final Office Action or a Notice of Allowance. A Final Office Action indicates that you have a limited amount of time to convince the Patent Examiner that the patent application is in condition for allowance. A Notice of Allowance indicates that your patent application is in condition for allowance and will be granted as a patent after you pay the USPTO Issue Fee.