Utility patent registration in the US typically includes several stages, including a patentability search, preparing and filing a patent application, prosecution with the US Patent and Trademark Office (USPTO), and issuance of the patent. The process can take several years to complete and requires the guidance of a registered utility patent attorney or utility patent lawyer.
In this article, we’ll provide an overview of the utility patent registration process, including all the major steps involved.
Patentability search for utility patent
A patentability search is conducted to determine whether an invention is new and non-obvious. This can help the inventor decide whether to pursue a patent application. It can also help the inventor identify areas of the invention that may need further development to increase its patentability.
The search involves an extensive examination of the prior art, including any public information related to the invention. This includes patents, published applications, scientific publications, and other relevant literature. Here you can find a step-by-step guide on how to conduct a patent search as well as useful links and resources.
Formal examination
At this stage of the utility patent registration process, the application is checked for compliance with the formal requirements of the patent office. For example, it may be the availability of documents or the payment of official fees. Here you can find a comprehensive list of requirements and documents for registering a utility patent in the US.
If your application is incomplete, you will be notified of the deficiencies by an official letter from the USPTO. You will be given time to complete the application filing (a surcharge may be required.) If the omission is not corrected within a specified period, the application will be returned or otherwise disposed of; the filing fee, if submitted, will be refunded less a handling fee as outlined in the fee schedule.
Publication
Publication occurs after the expiration of 18 months following the earliest effective filing date or priority date claimed by an application. After publication, the patent application is no longer held in confidence by the Office, and any public member may request access to the entire file history of the application.
As a result of this step of the utility patent registration process, an applicant may assert provisional rights. These rights provide a patentee with the opportunity to obtain a reasonable royalty from a third party that infringes a published application claim, provided actual notice is given to the third party by the applicant and patent issues from the application with a substantially identical claim. Thus, damages for pre-patent grant infringement by another are now available.
Substantive examination
A substantive examination is a step of the utility patent registration process that automatically initiated by filing a patent application in the USA. Once your application has been accepted as complete, it will be assigned for analysis. Substantive examination is the most important step of the utility patent registration process.
Your examiner will review the contents of the application to determine if the application meets the requirements of 35 U.S.C. 111(a). If the examiner does not think your application meets the requirements, the examiner will explain the reason(s). You can make amendments or argue against the examiner’s objections.
Your application will be abandoned if you fail to respond to the examiner’s requisition within the required time. If your application is rejected twice, you may appeal the examiner’s decision to the Patent Trial and Appeal Board (PTAB.)
Granting of a utility patent
If the examiner determines that your application is in satisfactory condition and meets the requirements, you will receive a Notice of Allowance. But the utility patent registration process isn’t finished, you must pay the issue fee for a patent in the USA within three months of mailing the Notice of Allowance.
The notice of allowance will list the issue fee and may also include the publication fee that must be paid before the Patent is issued.
Utility and reissue patents are issued about four weeks after the issue fee, and any required publication fee are received in the Office. A patent number and issue date will be assigned to an application, and an Issue Notification will be mailed after the issue fee has been paid and processed by the USPTO.
Maintenance fees are due at years 3.5, 7.5, and 11.5 from the patent issue date and may be paid within 5 months preceding the due date without a surcharge. Late payment with a surcharge is possible within six months after the expiry period. Early payment is not available
Final thoughts
Utility patent registration process requires careful consideration and planning. Understanding the requirements and steps involved in utility patent registration is crucial for protecting your invention and securing your rights as an inventor or business owner. Consulting with a licensed attorney for expert advice and guidance throughout the process can be of great help.
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