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Patent Applications - Step by Step

Reviewing the individual steps necessary to obtain a patent is kind of like trying to review the collective events that scored a point in a particular sports play. Specifically, what

 works once might not work again or, what didn’t make sense before might make sense now. Often, you will need to adaptively react to a series of events that hopefully allow you to advance the play. Sometimes, you will need to double back and come at things from a different approach.

What we are trying to say here is that patent law is a complex and fluid sport. So, with apologies to our international clients and friends, we will borrow from American football to illustrate the steps involved in getting a patent:

Step 1 – Kickoff (drafting the application)
Step 2 – First down (securing priority)
Step 3 – A series of plays (overcoming objections)
Step 4 – Touchdown (registering a patent)

Step 1 – Kickoff (drafting the application)

There are rules about what you can or cannot patent, which is not what we will discuss here. But anybody hoping to protect their inventions should be prepared to discuss what actually makes their idea patentable. When a client of ours puts into writing what makes their idea unique we call that the “inventor’s notes”. How we then dress it up, explain it, and package it up into a formal, legal-based argument addressing the “points of novelty” is what we call a “patent application“.

This is a document that is written by lawyers and for lawyers, and can sometimes feel a little funky to the client, but it is like arranging your team on one side of the field just before the play so that you are in the best position to advance the ball down the field. It is important to keep in mind that we may not know exactly how things will play out (football is popular because nobody really can) but our practice and experience prepares us to anticipate many of the common issues that will come up during the patent process and to incorporate protections and defensive measures within the application itself before its even filed.

So first and foremost we are positioning, preparing, and then drafting a document that we hope will overcome the obstacles (both seen and unseen) that are very likely standing down the field and gearing up to stop your play. This is the kickoff stage of your application.

Step 2 – First down (securing priority)

Despite all the preparation and planning from step 1, nothing really happens until we obtain your permission to file the application. A patent application, once filed, achieves some very specific and important goals. First and foremost your application will receive a time-stamp (to the second) of exactly when your application was submitted to the United States Patent and Trademark Office (USPTO). This time-stamp is important because it establishes what is called your “priority” in the idea and is what allows you to state that you are “patent pending“. This matters because you are not the only person in the world with ideas and if there is ever a debate about who thought of it first, the USPTO will point to whoever has the earliest priority date. Period. Don’t be fooled by anything online talking about a “poor man’s patent” or mailing the idea to yourself for proof of when you thought of it. If you’ve got the earliest priority date you win, otherwise…you just don’t. This is why we say its like having a first down. Everyone can point to exactly where on the field the football touched the earth and say, “unless something really crazy happens, the plays do not go backwards from here“. So it is with the priority date of your application. You will find that date will

 impact your efforts to enforce your patent against third parties, both within the United States, and internationally, if you choose to apply for such protection. Unless you abandon it, your application will be “patent pending” until you actually obtain the registration!

Step 3 – A series of plays (overcoming objections)

Thus far in the process you and your lawyer have been calling all the plays and driving the pace of things. But eventually the decision making shifts to the USPTO, and in particular the Examiner assigned to review the application. If we stick with our football analogy here the USPTO is the other team. Its not that they intentionally are blocking your plays, but that it is simply human nature when you give a kid a coloring book and a red pen. (And in case it is not absolutely clear, the Examiner is the kid, and your application the color book, sorry). So here you have the Examiner blocking your plays, which takes the form of an “office action” wherein the come up with all the reasons why they think your application is not patentable. We must overcome these rejections by convincing the Examiner that they either made the wrong conclusions, hadn’t fully considered the application or, by compromising with

 the Examiner so that they get a little and you get a little. This process is as complicated, ugly, and lengthy as the Examiner makes it, which is going to depend on a lot of things neither you nor your lawyer are going to be able to control. This is why it’s so important to do Steps 1-2 properly, so that you are in the best position to outmaneuver the USPTO on the field and hopefully score that touchdown. Statistically speaking, this will likely require between 2-4 plays before you make it to the end-zone.

Step 4 – Touchdown (registering the patent)

If you were diligent and your lawyers outmaneuvered the Examiner’s objections, then you will eventually receive a “notice of allowance” meaning that the USPTO will register  your patent application and you can begin actually enforcing it against people retroactively to your priority date! There will of course be a registration or allowance fee and several maintenance fees over the years but you’ve officially scored your touchdown, congratulations. But before you part ways with your attorney you should review with them what exactly has made it through after all those plays and modifications, and whether you should file supplemental patent applications to fill in any gaps. This is the easiest time to get that done.

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