The patent process

Jonah Probell(not an attorney)

The main steps

• White board• Provisional• Non-provisional filing• Foreign filings• Office actions– Amendments and arguments– Continuation– Allowance, issuance

• Maintenance

White board

Snap photos of the whiteboard often.Redraw it neatly in Visio or even PowerPoint.

ProvisionalYou may file absolutely any papers that describe your invention.You can even just file PowerPoint slides if you are in a hurry to filebefore you show your idea to a prospective customer.

But, to be worth anything, your filing must be enough to teach somebodyhow to make and use your invention.

Do not file information that you want to keep secret. If you want to decide onsomething later, file two provisionals.

A provisional can be used for multiple non-provisionals and a single non-provisionalcan draw from multiple provisionals.

My view: If you are working without professional help, do not try to write itin the language of a regular patent application. You risk implicitly admittingmatter, that could otherwise be claimed, as prior art.That could be an expensive mistake.

Non-provisional filing

I am not an attorney or agent, so trust my advice.Work with an experienced attorney or agent.

One poorly considered word in a patent applicationrenders a million dollar patent worthless.

Patents are big business.If you can not afford the $10k-$20k dollars to hire an attorney or agent,look for a partner/investor to put in the money.

I have written about 30 patent applications, and I still have an experienced attorney,who understands my business strategy, thoroughly review my writing before every filing.

Sections

Sections of an application

These pictures are from my template.In French, “toto” is equivalent to “foo” in English

Foreign filing

Consider your business (don’t rely on your attorney for this).

From what countries will your competitors come in 5 or 10 years?

In what countries do you expect most of the future sales revenue from your product?

One or two countries? You have one year from your first provisional or regular filing.

More countries? (Prepare to take out your wallet) You have one year to file aPCT application, then 30 months from your first provisional or regular filing to fileindividually in each country.

Your attorney will sub-contract the work for each country to firms in those countries.Translations will take time and money.

US office action processThese are some typical steps.

Office: Wait for 3 years.Office: “Non-final” rejectionYou: amendment / argumentOffice: “Final” rejectionYou: Request for continued examination (RCE)Office: Non-final rejectionYou: amendment / argument / add different claimsOffice: “Final” rejectionYou: file continuationOffice: Non-final rejectionYou: AppealOffice: AllowanceYou: file continuation and pay feeOffice: Issue patent numberYou: wait for continuation to be examined.

US office action examples

US office action examples

US office action examples

US office action examples

US office action examples

US office action examples

US office action examples

Maintenance / AnnuitiesDifferent in every country.

In US, due at years 3, 7, and 11 after issuance

Many other places, due annually during pendency and after issuance.Some due on anniversary of filing, others due at end of month.

If you have a lot of patents in a lot of countries, hire a maintenance paying service.