For filing tips, training materials, and updates directly from the USPTO see

The USPTO has issued an updated Nonprovisional (Utility) Patent Application Filing Guide (pdf) that incorporates and strongly encourages electronic filing. (The USPTO now charges substantially more for applications submitted on paper.)

The USPTO also has available A Guide To Filing A Design Patent Application.

Steps to Patent an Invention-

Short Summary


*  Idea to conception:  Develop your idea or innovation to a complete description of a machine, part, process, or other acceptable subject matter (a patent cannot be obtained on an idea or suggestion).  While developing, testing, and preparing to patent, Avoid Public Disclosure: There is a one year US limit (a ‘grace’ period) on public disclosure, offer for sale or publication after which you are completely barred from getting a US patent. See How to Keep a Trade Secret for more information on public disclosure.

* Patent Search-New Invention (novelty): An invention must be ‘new’ to be patentable. Any published source of prior art that discloses an invention can make an invention unpatentable. (“Prior art” refers to all that is already public knowledge in the areas of science and technology.) See for information on how to do a quick patent search and why it is important to go beyond that. Patent Search-Non-obvious: An invention must be ‘non-obvious’ to be patentable. Any published source of prior art that discloses an invention or suggests that invention can make an invention non-obvious and therefore unpatentable. A patent that issues in spite of all prior art has the presumption of validity in respect to that identified prior art. (“Prior art” refers to all that is already public knowledge in the areas of science and technology.)

* Reduction to Practice:-The building of a prototype (actual reduction to practice) develops the idea into an invention and provides the basis for completing the Enablement Requirement of a patent application.

MPEP 2164: The Enablement Requirement: The enablement requirement refers to the requirement of 35 U.S.C. 112, first paragraph that the specification describe how to make and how to use the invention. The invention that one skilled in the art must be enabled to make and use is that defined by the claim(s) of the particular application or patent.

* File a Non-Provisional Patent Application or Provisional Application with the USPTO. All steps in a patent application are accomplished in writing with a collection of documents that support the invention and support all of the procedural steps of obtaining an issued patent. See Compact Patent Prosecution for an example of the document steps to obtain a patent. An inventor may file themselves or they may hire a patent agent or patent attorney to write and file the application. Provisional Applications are not examined by the USPTO and do not use the rest of the steps until they are claimed in non-provisional patent applications or filed under the PCT. For more information on provisional and nonprovisional patent applications see


* Patent Pending/Publication of Patent Application: An inventor may place the words ‘Patent Pending’ on an invention after a patent application has been filed. These words (with actual notification) only take on legal effect, known as provisional rights, after the patent application has published which is generally 18 months after the Non-Provisional Patent Application is filed. Provisional Patent Applications are not examined, do not publish and, ironically, have no provisional rights.


* Office Actions: If the examiner finds an application does not have patentable subject matter, the application will be rejected or if the examiner finds that the claimed invention lacks novelty or differs only in an obvious manner from what is found in the prior art, the claims may also be rejected. Some or all of the claims in an application are usually rejected on the first Office action by the examiner; relatively few applications are allowed as filed. An average first Office action currently is about 25 months from the filing date of a non-provisional application.

* Responses to Office Action-Applicant’s Reply(s): The applicant must request reconsideration in writing, and must distinctly and specifically point out the supposed errors in the examiner’s Office action. The usual period for reply to an Office action is three months. After reply by the applicant, the examiner will respond and determine if any claims are patentable and the applicant can respond. A second Office action is usually a final Office action.

* Final Disposition: Allowance and Issue of Patent or Final Rejection and Abandonment or Appeal. If an examiner finds that a patent application meets the requirements, the patentee will receive a notice and has a limited time to pay the issuance fees. See USPTO Fee Schedule for more information on issue fees.

If the examiner finds that the patent application does not meet the requirements, the patentee will receive a Final Rejection and can then either Abandon or Appeal the application or continue with a new application.

After Issue

* Patent Marking; A patentee was previously required to mark the articles with the word “Patent” and the number of the patent. Sec. 16 of the America Invents Act spells out the new law on Patent Marking:

  • Provides for virtual marking by posting patent information on the Internet.
  • Virtual marking provisions apply to all pending and future infringement cases.
  •  Provides that only the U.S. may sue for the penalty authorized by the false marking statute.
  • Civil suits re false marking are limited to persons who suffer a competitive injury; damages adequate to compensate for the injury may be recovered.

* Patent Maintenance/Enforcement: USPTO Fees are due at 3-1/2, 7-½ and 11-½ years. See Fee Schedule.

U.S. Patents protect patents in the U.S. only. Foreign patents must be obtained to protect in foreign countries.

Protection from counterfeit imports into the U.S. may be obtained through the International Trade Commission.

Note: Every patent prosecution is different and the steps shown here are illustrative, not all-inclusive.

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For more information from Not Just Patents, see our other sites:      

Steps to a Patent    How to Patent An Invention

Filing Requirements for Patent Applications

Trademark e Search    Strong Trademark     Enforcing Trade Names

Common Law Trademarks  Trademark Goodwill  Abandoned Trademarks

Should I Get A Trademark or Patent?

Patentability Evaluation

Trademark Disclaimers   Trademark Dilution     Oppose or Cancel?

Examples of Disclaimers  Business Name Cease and Desist

Sample Patent, Trademark & Copyright Inventory Forms

Verify a Trademark  Be First To File   How to Trademark Search

37 CFR § 1.53 Application number, filing date, and completion of application

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

Difference between Provisional and Nonprovisional Patent Application

Opposition Pleadings    UDRP Elements    Oppositions-The Underdog

How To Answer A Trademark Cease and Desist Letter

Shop Rights  What is a Small or Micro Entity?

Trademark Refusals    Does not Function as a Mark Refusals

Converting Provisional to Nonprovisional Patent Application (or claiming benefit of)

Acceptable Specimen       Supplemental Register  $199 Statement of Use

How To Show Acquired Distinctiveness Under 2(f)

Patent Pending see also Patent Marking

Trademark Attorney for Overcoming Office Actions

Functional Trademarks   How to Trademark     Surname Refusal

Patent Drawings

Grounds for Opposition & Cancellation     Cease and Desist Letter

Valid/Invalid Use of Trademarks     Trademark Searching

How to Respond to Office Actions

What is a Compact Patent Prosecution?

Examples and General Rules for Likelihood of Confusion

USPTO Search Method for Likelihood of Confusion

Examples of Refusals for Likelihood of Confusion  DuPont Factors

Patent search-New invention

Color as Trade Dress  3D Marks as Trade Dress

Patent Search-Non-Obvious

Ornamental Refusal  Standard TTAB Protective Order

How to Keep A Trade Secret

Descriptive Trademarks  Likelihood of Confusion 2d

State & Federal Trade Secret Laws

Merely Descriptive Trademarks   Merely Descriptive Refusals

Chart of Patent vs. Trade Secret

Register a Trademark-Step by Step   Protect Business Goodwill

ID of Goods and Services see also Headings (list) of International Trademark Classes

Likelihood of confusion-Circuit Court tests

Pseudo Marks    How to Reply to Cease and Desist Letter

Geographically Descriptive or Deceptive

Overcome Merely Descriptive Refusal   Overcome Likelihood Confusion

What Does ‘Use in Commerce’ Mean?    SCAM Letters

Section 2(d) Refusals

Trademark Incontestability  TTAB Manual (TBMP)

Typical Brand Name Refusals  What is a Family of Marks?

TTAB/TBMP Discovery Conferences & Stipulations

TBMP 113 Service of TTAB Documents  TBMP 309 Standing

Trademark Steps Trademark Registration Answers TESS  

Trademark Searching Using TESS  Trademark Search Tips

TSDR Trademark Status and Document Retrieval

What are Dead or Abandoned Trademarks? Can I Use An Abandoned Trademark?  Can I Abandon a Trademark During An Opposition?

Published for Opposition see also Opposition Steps/Cancellation Steps

Counterclaims and Affirmative Defenses

Differences between TEAS and TEAS plus  

How do I Know If Someone Has Filed for An Extension of Time to Oppose?

Protecting Trademark Rights (Common Law)

Steps in a Trademark Opposition Process

Zombie Trademark  Not Just Patents Often Represents the Underdog  

What Does Published for Opposition Mean?

What to Discuss in the Discovery Conference

What is the Difference between Principal & Supplemental Register? What If Someone Files An Opposition Against My Trademark?

Acquired Distinctiveness  2(f) or 2(f) in part

How to Respond Office Actions  DIY Overcoming Descriptive Refusals

Extension of Time to Oppose

Trademark Clearance Search   DIY Trademark Strategies

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