Patenting process and timeline

The timeline below is an example of a typical patenting process.   It is divided it into three time periods:  pre-filing, during which time the patent application is written; post-filing, when the patent application is prosecuted with the Patent Office; and post-grant, after the patent issues.

Meeting or Telephone Call with Patent Attorney – Once you have decided to hire a patent attorney, the first step is to schedule a meeting or telephone call with the attorney to discuss the details of the invention.  Prior to this meeting, you should gather all of your information about the invention and any representative figures and prototypes.  If possible, you should provide these to the patent attorney in advance of the meeting.  One useful way to provide this information to the patent attorney is in an information disclosure form.  The form includes a series of questions about the invention and important dates.  It guides the inventor to provide the key information that the patent attorney needs to know to understand the invention as well as to uncover any patentability or other legal issues.  During the meeting or phone call, you will discuss the invention in more detail and decide upon the appropriate next steps.  The meeting or phone call usually takes about an hour.

Patentability Search – If you decide to do a patentability search, it usually takes about 2 weeks to get the results.   Your patent attorney will then revew the results and discuss them with you.

Draft Patent Application –Your patent attorney will then write a first draft of the application and send it to you for review.  The first draft usually includes questions about various details about which the attorney needs additional input.  You will review the draft, making edits and comments and answering the questions.  The attorney will revise the draft accordingly and send it back to you for any additional comments.  In some cases, there may be further rounds of revisions.

File the Patent Application – Once the patent application is ready, your patent attorney will file prepare the supporting documentation and file the application with the patent office, typically as either as a provisional or a non-provisional application.  Once this is done, you can refer to your invention as “patent pending.”

The normal timeline from first meeting with a patent attorney to filing a patent application is about 1 – 3 months.  However, in some circumstances the patent application must be filed much more quickly.  In such cases, the process can be shortened as necessary.

File Information Disclosure Statement – If you are aware of any references which may impact the patentability of your invention, you have an ongoing duty to provide them to the patent office by filing an Information Disclosure Statement, or IDS.  The IDS is preferably submitted before the patent office begins examining the application, though additional IDS’s may be needed if you discover more references.

File Non-provisional and/or foreign or PCT applications – If the application was filed as a provisional application, then it must be “converted” to a utility application on or before the one year anniversary of the original filing date.  This is also the deadline for filing any foreign or international (PCT) applications. 

Patent application publishes – Unless the application is filed with a request for non-publication and a statement that it will not be filed outside the United States, the application will be published at 18 months.

Receive Office Action from Patent Office – Substantive examination by the Patent Office often begins between 1.5 and 3 years (or maybe even longer) after the application was filed.  The first Office Action is typically a restriction requirement, to which you must respond by electing the claims to a single invention as identified by the examiner.  Shortly thereafter, the Patent Office will issue an Office Action on the merits (that is, addressing patentability).  It is common for the examiner to reject all of the claims, but this does not mean that the invention is not patentable.

File Office Action response– In response to the Office Action, the patent attorney may file a response explaining why the rejection is wrong and/or amending the claims.

Further Office Actions and responses – The Examiner may issue further Office Actions, and you may file responses to each of these.  Sometimes the Patent Office requires additional fees.  The time between a response and a next office action may be from a few months to more than a year.

Patent is allowed (or abandoned) – If the Examiner is persuaded by the response, the Patent Office will issue a Notice of Allowance.  However, if it appears unlikely that the application will be allowed, you may decide to allow the application to go abandoned.

File related applications – You may file additional related patents (continuations or divisionals) which claim priority to the original application, provided that the patent is still pending.  Once the patent issues, it is too late.

Patent issues – The patent will issue a few weeks after you pay the issue fee.  In many cases, this occurs between 2 - 5 years afte the initial filing of the patent.

Payment of Maintenance Fees – In order to keep the patent alive and enforceable, you must pay maintenance fees to the Patent Office.   If these are not paid, the patent will lapse.  Maintenance fees are due during three time windows: 3 - 3.5 years, 7 - 7.5 years, and 11 - 11.5 years after the patent issues.