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To get a U.S. patent, an application must be filed with the U.S. Patent and Trademark Office (USPTO), which determines whether a patent application meets the requirements for issuance.
Table of Contents
Starting the Process
Step 1: Is your invention patentable?
Before you file for a patent, you should determine if your invention can be patented:
The United States Patent and Trademark Office (USPTO) strongly recommends that all prospective applicants retain the services of a registered patent attorney or patent agent to prepare and prosecute their applications. The preparation of an application for patent and the conducting of the proceedings in the United States Patent and Trademark Office to obtain the patent is an undertaking requiring the knowledge of patent law and rules and USPTO practice and procedures, as well as knowledge of the scientific or technical matters involved in the particular invention.
Step 2: Conduct a search of prior art
A search of all previous public disclosures (prior art) including, but not limited to, previously patented inventions in the U.S. should be conducted to determine if your invention has been publicly disclosed and thus is not patentable. While a search of the prior art before the filing of an application is not required, it is advisable to do so.
A registered attorney or agent is often a useful resource for performance of a patentability search. After an application is filed, the USPTO will conduct a search as part of the official examination process. Conducting a thorough patent search is difficult, particularly for the novice. Patent searching is a learned skill. The best advice for the novice is to contact the nearest Patent and Trademark Depository Library (PTDL). You should also seek out search experts to help in setting up a search strategy.
Filing for a U.S. Patent
To get a U.S. patent, you must file an application with the U.S. Patent and Trademark Office. A patent application is a complex legal document, best prepared by one trained to prepare such documents.
There are two types of patent applications:
Publication of patent applications is required by the American Inventors Protection Act of 1999 for most plant and utility patent applications filed on or after November 29, 2000. On filing of a plant or utility application on or after November 29, 2000, an applicant may request that the application not be published, but only if the invention has not been and will not be the subject of an application filed in a foreign country that requires publication 18 months after filing (or earlier claimed priority date) or under the Patent Cooperation Treaty. Publication occurs after the expiration of an 18-month period following the earliest effective filing date or priority date claimed by an application. Following publication, the application for patent is no longer held in confidence by the Office and any member of the public may request access to the entire file history of the application.
View a flow chart visualization of the U.S. patent filing process.
Filing for a Patent Overseas
Since the rights granted by a U.S. patent extend only throughout the territory of the United States and have no effect in a foreign country, an inventor who wishes patent protection in other countries must apply for a patent in each of the other countries or in regional patent offices. Almost every country has its own patent law, and a person desiring a patent in a particular country must make an application for patent in that country, in accordance with the requirements of that country.
The laws of many countries differ in various respects from the patent law of the United States. In most foreign countries, publication of the invention before the date of the application will bar the right to a patent. In most foreign countries maintenance fees are required. Most foreign countries require that the patented invention must be manufactured in that country after a certain period, usually three years. If there is no manufacture within this period, the patent may be void in some countries, although in most countries the patent may be subject to the grant of compulsory licenses to any person who may apply for a license.
The Patent Cooperation Treaty was negotiated at a diplomatic conference in Washington, D.C., in June of 1970. The treaty came into force on January 24, 1978, and is presently (as of December 14, 2004) adhered to by over 124 countries, including the United States. The treaty facilitates the filing of applications for patent on the same invention in member countries by providing, among other things, for centralized filing procedures and a standardized application format. The timely filing of an international application affords applicants an international filing date in each country which is designated in the international application and provides (1) a search of the invention and (2) a later time period within which the national applications for patent must be filed. A number of patent attorneys specialize in obtaining patents in foreign countries. If you file for protection under the treaty within one year of filing in the United States, you will have up to 30 months from the original U.S. filing date to file in any of the other signatory countries.
Under U.S. law it is necessary, in the case of inventions made in the United States, to obtain a license from the Director of the USPTO before applying for a patent in a foreign country. Such a license is required if the foreign application is to be filed before an application is filed in the United States or before the expiration of six months from the filing of an application in the United States unless a filing receipt with a license grant issued earlier. The filing of an application for patent constitutes the request for a license and the granting or denial of such request is indicated in the filing receipt mailed to each applicant. After six months from the U.S. filing, a license is not required unless the invention has been ordered to be kept secret. If the invention has been ordered to be kept secret, the consent to the filing abroad must be obtained from the Director of the USPTO during the period the order of secrecy is in effect.
For more information on filing for a patent in the United States contact the USPTO at (800) 786-9199 or (703) 308-4357, or visit their website. To file electronically, visit USPTO’s Electronic Filing System (EFS) website. If you have questions regarding foreign patents, please call 1 (866) 999-HALT.