U.S. PATENT APPLICATION PROCESS
Step 1: Why relying
on USCWC for
Patent Application?
USCWC is a worldly authority in next generation wireless
and mobile communications technology based in the heart
of Silicon Valley and San Francisco Bay Area, the most
influential global hub of Information and Communication
Technology (ICT) of the world. USCWC is backed up by
world's leading IPR lawyers, law schools, venture capitals and PR
firms to protect and promote your inventions to become a
successful business case. .
Step 2: Contact USCWC
to discuss your invention, patent application and
protection process, and fee arrangements
After you decide to protect your invention with
USCWC, please work out a detailed Microsoft Word
documents containing the drafts of your invention
including Drawings, Abstract, Claims, Specifications and
References. Study and analysis of your invention
compared to the referenced prior art is preferable. The
complete MS word document should be around 30~40 pages.
Step 3: Patentability
Search and Opinion
This step is optional (it is not required by the Patent
Office). However, there are a number of reasons why
conducting a patentability search is a good idea. The
most important reason is to find out (before you spend a
lot of time and money on the development and marketing
of your product, not to mention the cost of filing and
prosecuting a patent application) whether your invention
is likely to qualify for a patent. Additionally, a
patentability search will help uncover prior-art patents
and literature on inventions similar to yours, which
will provide you with potentially valuable commercial
information, provide useful background information to
assist in the preparation of your own patent
application, and in some cases assist you in determining
if your invention is likely to infringe any in-force
U.S. patents. After your receive the results of your
patentability search and opinion, you will be in a
better position to decide whether or not to file a
patent application.
Step 4: Preparation
and Filing of Patent Application
There are three types of patents -- (1) Utility Patents
protect anything that can be made by humans that
functions in a unique manner to produce a useful result;
(2) Design Patents protect the visible shape or design
of an object (i.e., ornamental features); and, (3) Plant
Patents which provide protection for certain types of
plants. For purposes of this estimate, we will assume
that you are interested in filing a utility patent,
which is the most common type. Utility Patent
applications typically include a specification and
claims, as well as an abstract, drawings and the
inventor's declaration. If you qualify as a "small
entity" -- an independent inventor who hasn't assigned
or licensed their invention and is under no obligation
to assign or license the invention to a large, for-
profit business (over 500 employees); OR a small
business (under 500 employees); OR a nonprofit
organization -- you receive a 50% discount on many of
the filing fees charged by the U.S. Patent & Trademark
Office (USPTO).
Step 5: Information
Disclosure Statement (IDS)
This is a document listing all references cited in your
patent application and any other prior art or any
circumstances known to you that may potentially affect
the novelty or obviousness of your invention. This
document can be filed with your Patent Application but
is most often submitted within three months of the
application's filing date. There is no Patent Office
Filing Fee associated with this document if it is filed
within the three-month period or before receipt of the
First Office Action (described in further detail in Step
7). Otherwise, the "late fee" for filing an IDS will
apply.
Step 6: Notice to
File Missing Parts
When your application is received by the U.S. Patent and
Trademark Office (USPTO), their clerical personnel will
deposit your check, put all of your papers in a folder,
and assign a filing date and serial number to your
application. The postcard is stamped with this
information and returned. If you file your application
without a signed Declaration, you will then be sent a
Notice to File Missing Parts. "Missing Parts" is a
reference to signed formal documents, including the
Declaration of Inventor(s), Assignment (if any), Small
Entity Declaration (if any), and Power of Attorney. A
response to the Notice to File Missing Parts is due one
month after the mailing date of the Notice (otherwise, a
late fee will be charged by the Patent Office. Sometime
during this stage of the patent process, the USPTO will
assign your application to a Patent Examiner for review.
Step 6a: Notice to
Comply with Sequence Rules
If your patent application includes nucleotide or amino
acid sequence information, you are required to submit a
"Sequence Listing." A Sequence Listing discloses
relevant information about each sequence referred to
and/or being claimed in your patent application and must
be presented in paper form as well as on a
computer-readable diskette. It is prepared using a
software program provided by the USPTO known as "Patentin."
The Sequence Listing can be submitted contemporaneously
with the Patent Application, but in some instances will
not be provided until after the "Notice to Comply with
Sequence Rules" is received. This Notice is typically
included as a part of the Notice to File Missing Parts (See
Step 6 above).
Step 7: Office Action
and Response to Office Action (Amendment)
About six months to two years after the filing date of
your application, you will receive a communication from
your Patent Examiner known as an "Office Action." In
this document, the Examiner describes what is wrong with
your application and why it cannot be allowed (rarely is
an application allowed in the first Office Action). The
Examiner may also object to one or more aspects of your
specification. Typically, Examiners reject some or all
of your claims because of imprecise language or reject
some or all of your claims because of unpatentability
over the prior art. To overcome these objections and/or
rejections, an "Office Action Response/Amendment" will
be prepared. The Office Action Response focuses on claim
changes and arguments to convince the Examiner that the
invention is patentable. The Amendment will make
changes; however, once an application has been filed,
substantive changes to the specification and drawings
are prohibited. Thus changes to the specification and
drawings are typically made to correct typographical
errors. The time allowed for preparation and filing of a
Response/Amendment is 6 months after the date of the
Office Action. Late Fees will be charged by the Patent
Office for all Responses/Amendments filed after the
first 3-month deadline (See USPTO Fee Schedule). In some
cases, you will receive a Second Office Action by your
Examiner (about 2 to 6 months after you file your first
amendment) before the application is finally Allowed
(see Step 8a) or Rejected (see Step 8b). Some findings
by the Examiner in the Office Action(s) may prompt you
to file a "Divisional Application" or "Continuation
Application" (See Extension Applications below).
Step 8a: Notice of
Allowance
If the Examiner is satisfied with the merits of your
application and you have submitted everything required
by the Patent Office, you will be sent a Notice of
Allowance and Issue Fee Due, indicating that all of your
claims are allowed. The Patent Office will make a
request at this time that you pay an "issue fee" (See
USPTO Fee Schedule) and submit "formal drawings" within
3 months if formal drawings have not already been
submitted. Several months after the issue fee is paid,
your patent will issue and you will receive a formal
copy.
Step 8b: Final
Rejection
If your application receives a final rejection by the
Examiner, you will have the option to (1) File an
Amendment After Final Rejection (although these are
discretionary - the Examiner is not required to enter
them into the record); (2) Appeal; (3) File a
Continuation Application; and/or (4) Abandon Your
Application.
Amendment After Final Rejection
After a final rejection, you may submit an "Amendment
After Final Rejection" narrowing your claims or
submitting other claims, provided you raise no new
issues. If your Examiner agrees that the amendment
narrows or changes the claims sufficiently to place the
case in condition for allowance, he/she will authorize
its entry and allow the case (See Step 8a above).
Otherwise, your Examiner will send you an "Advisory
Action" reiterating the reasons for rejection (and you
will then have the option to appeal). Even if your
Examiner will not enter the amendment because it raises
new issues, the Advisory Action will state whether the
amendment will be entered for purposes of appeal.
Appeal
If you don't see any further way to improve the claims,
and if you believe the examiner's position is wrong, you
can file an appeal brief with the BAPI (Board of Appeals
and Patent Interferences). USCWC has
found that appeals are sometimes necessary to initiate a
more serious dialogue with the Examiner. To effectively
do this with an appeal, however, one needs to have
narrowed the issues. Please contact us if you are
considering an appeal. If the Board upholds your appeal,
your application will move to allowance (See Step 8a
above). If the Board upholds the Examiner's rejection
and you still believe your invention is patentable, you
can take a further appeal within 60 days of the date of
the BAPI's decision to the Court of Appeals for the
Federal Circuit (CAFC). If the CAFC upholds the USPTO's
decision, you can then request the U.S. Supreme Court to
hear your case (although the grant of this is rare).
Continuation Application
If you want to continue the examination of your patent
application, you can file a Continuation Application
(with the option of filing it as a Continued Prosecution
Application) (see Extension Applications below). Filing
a Continuation Application then involves writing new
claims, paying a new filing fee, and sending documents
identifying the application as a Continuation. A
continuation application receives the filing date of
your original patent application for purposes of
overcoming prior art, but receives its own serial number
and filing date for USPTO administrative purposes
(unless filed as a Continued Prosecution Application).
This option starts the whole patent process over again.
Abandon Your Application
If all claims of your application are rejected in the
final Office Action and you agree with your Examiner
that there is nothing patentable in your application, or
if you simply do not wish to further pursue patent
protection for your invention, you can allow the
application to become abandoned (your application will
go abandoned automatically if you do not file a timely
reply by way of one of the options listed above to the
Final Office Action). Keep in mind that once an
application has gone abandoned, it can be difficult to
re-file the application. In some cases, however, if you
allow the application to go abandoned you will be able
to resurrect the application. In any event, we invite
you to contact us before making the drastic decision to
abandon.
EXTENSION APPLICATIONS
All of these applications must be filed before
issuance or abandonment of the parent application.
Continuation*
If you want to continue the Examination of your
application or a chance to try a new and different set
of claims after a final Office Action rejecting your
application, you may file a continuation application. A
Continuation is an additional application for the same
invention claimed in your original patent application
(typically containing the exact same specification as
the original application but with new claims) and filed
before your original application issues or becomes
abandoned. A continuation application receives the
filing date of your original patent application for
purposes of overcoming prior art and for patent term
determination, but receives its own serial number and
filing date for USPTO administrative purposes (unless
filed as a Continued Prosecution Application).
Divisional*
You may be prompted by an Examiner in an Office Action
to file a Divisional Patent Application if it's found
that there is more than one distinct invention claimed
in your original patent application. This type of
finding is referred to as a "restriction requirement"
because you are restricted to claiming only one
invention per patent application. If you receive a
restriction requirement in which the Examiner indicates
that there are claims directed toward 2 inventions, you
must "elect" the claims you wish to pursue in this
application and cancel the remaining claims. In the
Divisional Application you pursue claims that were
directed to the 2nd invention and cancelled. A
divisional application receives the filing date of your
original application for purposes of overcoming prior
art and for patent term determination, but receives its
own serial number and filing date for USPTO
administrative purposes.
Continuation-In-Part
If you've improved your basic invention in some material
way while your original patent application is still
pending and you want to obtain specific claims to the
improvement, you may file a continuation-in-part (CIP)
application. A CIP application receives the filing date
of your original application for purposes of overcoming
prior art related to material disclosed in your original
application, but receives its own serial number and
filing date for USPTO administrative purposes. Since
GATT was enacted, USCWC cautions that
the benefit of designating an application a "CIP" is of
greatly diminished value.
Reissue
If you've received an original patent, but you want to
revise the claims of the patent or correct significant
errors in the specification for some valid reason, you
should file a reissue application. A reissue patent
takes the place of your original patent. There are
specific rules that apply to these applications and
USCWC recommends detailed discussion
before making such a move. You will need to discuss this
option with us, if you are interested in
obtaining a Reissue Patent.
*A
Continuation Application may be filed as a Continued
Prosecution Application (CPA), which option cuts
down on paper work and ensures faster turnaround time in
the receipt of your First Office Action. This option,
however, also automatically ABANDONS your original
patent application as of the filing date of the CPA.
Disclaimer:
This website is provided for informational purposes
ONLY. It is not a substitute for obtaining legal advice.
Neither reading the information provided nor contacting
us via Internet e-mail creates an USCWC/client
relationship. Please do not e-mail us any confidential
information. If you are seeking patent counsel, contact us by telephone
or e-mail.
