A patentability search is optional but is highly recommended to determine the state of the prior art in order to help determine if a application should be filed. I have years of experience searching the prior art both as a patent attorney and as a patent examiner
The application consists of the Specification, Claims, and Drawings. In some rare instances, drawings may not be required. The purpose of the patent application is to describe the invention clearly and with particularity so that the Patent Office can tell what the invention is.
After drafting the patent application by a competent patent lawyer, the patent lawyer files the patent application with the U.S. Patent and Trademark Office along with the appropriate government patent application filing fees.
The Patent Office receives the application and assigns it to an examiner who is a member of a group of examiners who constantly examine patent applications dealing with the same sort of invention. Upon receiving the patent application, the examiner queues the patent application based upon the filing date behind other pending patent applications. Once the application is taken up by an Examiner, the claims of the application which are based upon the specification and drawings will be searched to see if the claims may have been already invented. This is accomplished by a patent and published patent application search performed by the Examiner, who then reviews the results of the search. The examiner performs the search even if the inventor or the attorney has independently searched the prior art. Additionally, the examiner reviews the form of the patent application to determine if the patent application is written to the standard set forth by the United States Patent and Trademark Office, and the patent application may irrevocably fail if the patent application has not been written to the appropriate standard. After reviewing the patent application, the Examiner communicates in writing to the inventor or to the patent attorney representing the inventor whether or not the application can issue as a patent. If it cannot, the Examiner explains why not in an Office Action.
Very few patent applications are allowed upon submission without at least one office action. Drawings commonly have errors, but are used for examination purposes. Sometimes, the Examiner finds the invention has been invented before and no patent will issue. Sometimes, the Examiner will find patents that are not quite the same as your invention, but when combined, yield the same invention that you have.
If the Examiner has not allowed the claims, the patent attorney can respond in writing by amending the claims and/or indicating how the Examiner has misinterpreted or incorrectly applied the patents found or the laws applicable to patent applications.
The Examiner further examines the application in light of the amendments and/or remarks set forth in the Reply. If the Examiner is persuaded that the application should issue as a patent, a Notice of Allowance is sent to the inventor or the attorney. If not, the Examiner issues a Final Office Action setting forth why a patent cannot issue.
Final Office Action
The Examiner has determined that the claims are not patentable. The patent attorney may appeal to a group of senior patent examiners or re-file the patent application in order to pursue it further. If the inventor decides to pursue the patent application further, additional government filing fees may be required.
Reply After Final
The patent attorney can make a Reply after the Examiner has made a Final Rejection. Often, these Replies amend the application to conform with any requirements the application has made.
Appeal, Continuing Application or Abandonment
While an appeal can be made appealing the Final Rejection, the patent attorney may often either re-file the patent application or concede the Examiner's rejection(s) and let the application go abandoned.
Notice of Allowance and Issue Fee Due
The Examiner has determined that the application should issue as a patent. Formal drawings are usually submitted at this point. The government issue fee must be paid for the patent to issue.
Pay Issue Fee, Submit Formal Drawings
Upon receipt of these from the patent attorney, the Patent Office will proceed with issuance of the patent.
After the application issues as a patent and (upon payment of maintenance fees), the issued patent is enforceable for up to 20 years (utility patent) from the date of initial filing.
Maintenance Fees at 3.5, 7.5, and 11.5 years
To maintain the patent as enforceable, maintenance fees are due at these times to prevent the patent from lapsing and becoming unenforceable. The patent owner generally cannot sue for infringement if the patent has lapsed.
Patent Expires 20 Years From Filing (14 years for design and plant patents)By affording protection for inventors during the patent-enforcement period, society as a whole benefits from the disclosure of new and useful inventions. Having had exclusive rights to the invention for the period of the patent, anyone can practice the invention once it has expired.
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