Chem-STEPS

STEPS

SummaryThe steps to filing patent include, e.g., determination of the likely new and non-obvious aspects (e.g., by patent search), drafting initial claim set, drafting a specification (description) of the invention in support of the claims, drafting any necessary drawings, review of the application, filing the application, responding to a restriction action from the Patent Office (splitting the application into two or more separate inventions), responding to a first office action on the merits of the case, and responding to a final office action. Claims are often found allowable by the final office action stage. Prosecution can further include, e.g., abandonment of the case, interviews with examiners, filing requests for continued examination, filing appeal briefs, and petitions.

STEPS TO OBTAINING PATENTS*

I. Drafting a Patent

  1. Search journals, internet, US patents, International published patents etc. to find the closest similar inventions (e.g., do a novelty search).
  2. Draft claims (a unique skill of patent professionals) tailored to be as big as possible without claiming old art.
  3. Draft application to support claims (you can only claim what is disclosed in the application).
  4. Prepare any Figures necessary to the understanding of the claims (near mandatory for system, device, and mechanical claims).

II.  Provisional Patent

  1. Informal provisional application establishes a filing date.
  2. Not searched or examined by the Patent Office.
  3. Low filing fee.
  4. 12 months to file formal application(s).

III.  U.S. Utility Patent

  1. Must be filed within 1 year of the Provisional filing date, or can be filed instead of a Provisional application.
  2. Utility applications include: Inventors list, Summary of the Invention, Figures, Detailed Description, Claims.
  3. Other documents filed: Transmittal, Assignments, Declarations of Inventors, Fee Transmittal.
  4. Application text must support the claims.
  5. Figures necessary to understand the claims.
  6. Claims filed will be searched and examined.
  7. Prosecution of the application: Office Actions, Applicant Response, Appeals.
  8. Application published 18 months from first filing date.
  9. Issue of a Patent: Fees, Maintenance.

IV.  Patent Cooperation Treaty (PCT - foreign filing) Application

  1. File PCT application within 1 year of the Provisional filing date.
  2. File with or instead of the U.S. Utility application.
  3. Application can include same text as U.S. application; PCT Request forms, Figures.
  4. Request for  preliminary opinion can be made.
  5. International Search Report (IPR) identifies relevant prior art references.
  6. Application published 18 months from first filing date.
  7. Applicant choice of countries for National Phase prosecution.

V.  National Phase Applications

  1. Filing in Patent Offices of selected countries.
  2. Necessary translations.
  3. Filing fees for each selected country.
  4. Hire licensed professional in each country.

* This Web Page is intended for general education.  This page can not be considered legal advice.  Please contact your Patent Professional before attempting to file or prosecute a patent.