The Second of Four Articles on the Patent Process

Fritz Klantschi

This is the second of four articles discussing the basics of filing a U.S. patent. Once all searching has been completed with no major conflicts, the patent application must be prepared.  The Drafting Stage is the formal process of preparing a patent application for filing with a country’s patent office.  This discussion is directed towards the preparation and filing of utility patents which are the most common patents.  There are two other types of patents in the U.S., design patents and plant patents.  Design patents provide protection for the ornamental design of a functional item.  Plant patents provide protection for any novel, non-obvious, asexually reproducible plant.  Design patents and plant patents will be discussed in future articles.

Drafting the Application

Innovation within a company is generally defined by inventors through Invention Disclosure Forms.  These disclosures are generally reviewed by a committee comprised of engineering staff, business decision makers, and an intellectual property attorney.  The committee may be assisted by the results of one or more of the above-described searches.  Once the committee greenlights an innovation and determines there is value in obtaining patent protection, the drafting stage begins.

The drafting stage generally commences with a meeting between the patent attorney and the inventor(s).  From this meeting preliminary drawings may be produced and a set of patent claims identified.  The United States Patent and Trademark Office (USPTO) rules require that a patent application contain at least one patent drawing depicting the invention, whenever the invention is capable of being graphically represented.  Patent drawings aid in the understanding of the invention.  Patent claims define the invention.  The patent attorney prepares a first draft of the patent specification and drawings which are reviewed by the inventor(s) and other engineering staff.  Comments/suggestions are incorporated and a final draft specification and set of drawings are distributed for review and approval.  Depending on the complexity of the technology and the completeness of the design, the drafting stage can take one to four months.

Filing the Application

The USPTO allows for the filing of different types of patent applications.  With respect to utility patent applications, a company/applicant can file a provisional patent application or a non-provisional patent application.  A provisional application is a legal document that establishes an early filing date, but does not mature into an issued patent unless the applicant files a regular non-provisional patent application within one year of the filing date of the provisional patent application.  A complete non-provisional application differs from a provisional application in that a non-provisional must contain at least one claim and is to be examined.

One or more provisional patent applications may be filed when the commercial embodiment of the invention is not yet defined.  As the product design is refined, additional provisional patent applications may be filed.  Within one year of the filing date of the first provisional patent application, a non-provisional patent application incorporating the subject matter of previously filed provisional patent application(s) has to be filed to maintain the priority date of the first provisional patent application.

Provisional patent applications in this situation are used to obtain priority dates for the invention and developments as they occur.  Provisional patent applications are not examined or ever published by the USPTO.  Filing multiple provisional patent applications is a cost-effective way to obtain priority date(s) for product development because the filing fee for a provisional patent application is considerably less than the filing fees for a non-provisional patent application, and provisional patent application(s) do not commence the USPTO examination process.

Filing a non-provisional patent application starts the examination stage of the patent process.  Once a non-provisional patent application is filed with the USPTO, other documentation such as an Assignment, Oath and Declaration, and Power of Attorney also need to be filed.

International patent applications must be filed within one year of the earliest-filed U.S. patent application to obtain the priority date from the U.S. filing.  There are two ways to file a foreign patent application, direct filing and through the Patent Cooperation Treaty (PCT).  A description of foreign patent applications (filing and examination) will be discussed in a separate article.