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Filing a Patent Application in the United States

Patent forms an important role in the development which can technological or economic. Patents serve various purposes concerning the inventor and society. It provides an economic right to the inventor, thereby giving the inventor the right to commercialize the invention and earn economic benefit for the same. This patent also helps the inventor to protect the invention from being stolen and prevent others from commercializing. While on the other side, the patent also serves society, at large, by providing the disclosure of the invention. This disclosure helps in getting the knowledge of the invention, thereby making it in the public domain. Various jurisdictions have different ways for registration of the patent. Despite having different ways, the crux always remains the same. Let us try to understand the procedure in the US. The patents in the US are handled by the United States Patent and Trademark Office (USPTO).  

The development of an invention is not an easy process. Moreover, the steps that are involved in developing an invention and making it the patent are time-consuming and costly. It is highly advisable to conduct a strong prior art search. For this, conducting a patent search is always the first step in the way of filing the patent application. Having a strong search ensures a strong patent application. The aspects need to be disclosed in the patent application in the USA. Having a strong application will help in knowing what can be patentable and what cannot, and thereby, carefully designing the invention for focusing the patentable features of the invention. Moreover, this search also helps the inventor to understand what objection might come up in the due-course and how it can be effectively opposed. 

The search can be effectively done on the website of the USPTO. First, it is imperative to determine the class or subclass under which the invention will fall and that can be searched in the USPTO’s classification. Each classification contains a variety of elements. The PatFT Database of USPTO is more relevant for searching the relevant patents, documents, and images of the class. An in-depth review will be really helpful for ascertaining the similarities between the patent and respective prior art. 

Patent Application and Filing Fees

In the US, one can file a provisional patent application. The provisional patent application provides benefit to the inventor who still has not conceived the patent and more work is required. There are things you want to make better, things you need more time to research and develop, and in many cases, you are seeking to obtain patent pending status before you have 3D renderings, engineering drawings, or even an intermediate prototype. 

There are 3 types of patent of which the inventor must remain aware: 

  • Utility Patent
  • Design Patent
  • Plant Patent

Utility Patents are those which are non-obvious of others in the particular field and are grouped into five categories: a process, a machine, manufacture, a composition of matter, or an improvement of an existing idea. A typical new and original design associated with a device will constitute to be a design patent. Plant patents are generally granted for any novel, non-obvious, asexually reproducible plant. 

But the actual patent will only be granted to the non-provisional patent application that will constitute the whole disclosure of the invention. For filing the patent application, the inventor will be taking the help of USPTO’s EFS-Web. The important documents that are necessarily be expected while filing will be specifications containing the detailed written description of how an invention will work. It must be described in a manner so that any person skilled in the art can recreate it. Claims are also important where the functions of the inventions are being described. In case, the invention needs any drawing, it must also be mentioned. 

The fees payable at the patent office will vary according to the complexity of the invention. The lists of the fees payable at the USPTO are mentioned here. As mentioned earlier, one can go without an attorney but it is highly advisable since navigating the patent landscape is a long and difficult process and without the right knowledge, it becomes very difficult. A good patent attorney, in this instance, is well worth the money. Maintenance fees are also payable, which are due at 3, 7, 11 years and range differently from a small entity to a micro-entity, preferably ranging from $500 to $2000. 

Before attempting to apply, be sure to have all your research completed and documents ready. If all documentation is not completed or is completed incorrectly, the application will most likely be rejected. Other reasons for rejection include insufficient detail or the invention is too obvious. This is where it becomes necessary to hire a patent attorney who can help to avoid being rejected or assist you in altering your application to align more with what’s required. Since the claims need to be written in an extremely specific language, it is easy to trip up on this aspect of the application. The experts at the Global Patent Filing are well versed in writing technical claims in a much simpler manner and help to arrange the important documents needed for the filing. 

Author: Saransh Chaturvedi (an advocate) currently pursuing LLM from Rajiv Gandhi School of Intellectual Property Law (IIT Kharagpur).

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