What’s the News on Patent Reform? All of the provisions of the America Invents Act are COMPLETED.  (See http://www.uspto.gov/aia_implementation/miscellaneous.jsp for this graphic and other COMPLETED aspects of the AIA.)

For filing tips, training materials, and updates directly from the USPTO see http://www.uspto.gov/blog/aia/.

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

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 PatentSearchSteps.com 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 Nonprovisional.com.


* 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.

Basic PCT Principles [International Patent Filing]

(extracted from http://www.uspto.gov/web/offices/pac/mpep/documents/1800_1801.htm)


The Patent Cooperation Treaty (PCT) enables the U.S. applicant to file one application, "an international application," in a standardized format in English in the U.S. Receiving Office (the U.S. Patent and Trademark Office), and have that application acknowledged as a regular national or regional filing in as many Contracting States to the PCT as the applicant "designates" or "elects," that is, names, as countries or regions in which patent protection is desired. . . . [T]he filing of an international application will automatically constitute the designation of all contracting countries to the PCT on that filing date. In the same manner, the PCT enables foreign applicants to file a PCT international application, designating the United States of America, in their home language in their home patent office and have the application acknowledged as a regular U.S. national filing. The PCT also provides for an international search report and written opinion [ ] that are established normally at 16 months from the priority date, and publication of the international application after 18 months from the priority date. Upon payment of national fees and the furnishing of any required translation, usually 30 months after the filing of any priority application for the invention, or the international filing date if no priority is claimed, the application will be subjected to national procedures for granting of patents in each of the designated countries. For any countries remaining whose national laws are not compatible with the 30 month period set forth in PCT Article 22(1), the filing of a demand for an international preliminary examination electing such countries within 19 months from the priority date will result in an extension of the period for entering the national stage to 30 months from the priority date. An up-to-date list of such countries may be found on WIPO's web site (www.wipo.int/pct/en/index.html). A brief description of the basic flow under the PCT is provided in MPEP § 1842.

The PCT offers an alternative route to filing patent applications directly in the patent offices of those countries which are Contracting States of the PCT. It does not preclude taking advantage of the priority rights and other advantages provided under the Paris Convention and the WTO administered Agreement on Trade-Related Aspects of Intellectual Property (TRIPS Agreement). The PCT provides an additional and optional foreign filing route to patent applicants.

The filing, search and publication procedures are provided for in Chapter I of the PCT. Additional procedures for a preliminary examination of PCT international applications are provided for in optional PCT Chapter II.

In most instances a national U.S. application is filed first. An international application for the same subject matter will then be filed subsequently within the priority year provided by the Paris Convention and the priority benefit of the U.S. national application filing date will be claimed.

More on the PCT

The Patent Cooperation Treaty or PCT is an international patent treaty, administered by the World Intellectual Property Organization (WIPO), between more than 140 Paris Convention countries. (See list of all Contracting Parties to the PCT.) The PCT makes it possible to seek patent protection for an invention simultaneously in each Contracting Party (or countries) by filing a single “international” patent application meeting the requirements of Article 11 of the PCT, instead of filing several separate national or regional patent applications. The granting of patents remains under the control of the national or regional patent Offices in what is called the “National Phase”.

Not Just Patents can write a new PCT application or reformat and add new specifications and claims (if necessary) to an existing priority patent application (provisional or nonprovisional) that has already been filed, and file your application as an international application through the PCT(filed electronically with PCT Easy zip file, the lowest cost filing format). We offer very competitive rates and fast filing. If your 12-month deadline is coming up soon, give us a call ASAP.

For more information on PCT Filing and a brief summary of the Steps to a PCT Patent Application, see http://nonprovisional.com/pctpatentapplication.html.

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Steps to a Patent    How to Patent An Invention

Filing Requirements for Patent Applications

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Common Law Trademarks  Trademark Goodwill  Abandoned Trademarks

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Patentability Evaluation

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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    Loss of Trademark Rights

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

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State & Federal Trade Secret Laws

Merely Descriptive Trademarks   Merely Descriptive Refusals

Chart of Patent vs. Trade Secret

Register a Trademark-Step by Step   Trademark Fixer

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

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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   ApplyToTrademark.com

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?

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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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