Patent Filing FAQs

I have an idea or suggestion for something that I think can be unique and useful, can it be patented?

An idea or a suggestion has to be converted into a tangible invention, process, device, gadget, or any contraption that is unique and different and can add value for the end user. It is this tangible invention that can be patented; not the idea or suggestion directly.

If want to obtain a patent for something, How would I know that it has been patented previously by someone else or not?

This requires thorough research using different sources and resources. One of the best places to search is the USPTO website that has a very strong advanced search facility. On this website, you will be able to search for patents dating back to 1790. To search across countries and geographies, there are plenty of search engines that can help you to search for prior patents. Some of them are free to use whereas others require paid subscriptions. Some of these are listed below with their URLs:

United States Patent and Trademark Office
Espacenet Patent Search
Japan Patent Office
Google Patents
Patent Lens
Delphion

Apart from using these websites to search for existing patents, it is recommended that you engage the services of patent specialist Attorneys. Apart from searching, they can also help you with the entire patent filing process.

I am confused among Patents, Copyrights and Trademarks. What is the difference among these?

All of these are mechanisms to protect intellectual property. However, they have different scopes of operation and enforcement.

Trademark – this refers to the protection given to a word, phrase, symbol or logo that is used in conjunction with goods and/or services. Trademarks do not have an expiry date.

Copyright – this refers to an exclusive and assignable legal right that is given to an entity for a specific duration in years for any form of literary, artistic or musical material.

Patent – this refers to a government authority or license bestowing an exclusive right or title during a set period that prevents others from making, using or selling an invention.

If I file a patent request then from when or from which date it will be in effect after obtaining the patent?

There are several dates associated with the patent filing process. As per the USPTO, the actual filing date corresponds to the date of the patent filing application. After 18 months, these are published in the USPTO Gazette. This date is called as the publication date. When the examiner approves and grants the patent, this date is called as the Issue Date or Patent Date.

If I successfully obtain a patent for something, then for how long it will be in existence.

The patent is valid for 20 years from the filing date or 17 years from the issue date.

If my previously obtained patent has been expired, can it be renewed?

Once a patent is expired, the invention is placed in the public domain. Expired patents cannot be renewed. However, this procedure varies from country to country. Some countries do have a provision to extend the life of the patent post expiry.

What will be the geographical scope of the patent obtained by me?

The geographical scope of the patents depends on the scope defined at the time of filing the patent application. Generally, the scope is limited to the country of application by default. However, there is a provision to apply for patents in other countries to penetrate other markets apart from your own country.

Is there any inspection is done before granting the patent?

Yes, all the patent applications are subject to scrutiny and review. Some countries have rules defined regarding inspection of patent applications.

Who does the inspection of patent applications before approving them or reject them?

The applicant, a patent practitioner of record, the assignee, inventor or joint inventor, a registered attorney or agent, all of these have the power to inspect the patent application. Apart from these, members of the general public can also inspect the patent application.

In general how many patent applications are received in a year?

The number of patent applications varies from country to country. The below link gives US Patent Statistics Charts from 1963 to 2015. From the year 2013 onwards, there are nearly 600,000+ patent applications filed every year with 629,647 patent applications filed in the year 2015 alone.

Source: https://www.uspto.gov/web/offices/ac/ido/oeip/taf/us_stat.htm

Is there any cost I need to pay for obtaining a patent?

Yes, there are various fees associated with patent filing process and can be found from the USPTO website (link mentioned below).

Source: https://www.uspto.gov/learning-and-resources/fees-and-payment/uspto-fee-schedule

What is the total cost for obtaining a patent including all expenses?

The total fees can vary depending on how complex the application is, what is the product type of the patent that is applied for, and other factors. Refer to the link to the USPTO website that mentions the different charges that are payable for different aspects of the patent application. Some of these are also mentioned as maintenance charges during the life of the patent.

Source: https://www.uspto.gov/learning-and-resources/fees-and-payment/uspto-fee-schedule

How many ways, I can file a patent application?

Patent applications can be filed online or offline by sending a physical document set to the Commissioner of Patents. It would be best to engage the services of a Patent Attorney to help with the patent application filing process as they would have the expertise to address the legal aspects of the filing process.

Is it possible for me to get the information about previously granted patents till the date?

Yes, information about previously granted patents is publicly available.

Where I can search for previously granted patent approvals?

There are country specific patent databases that can easily be accessed either for free or for a fee. Some of the websites are listed below.

United States Patent and Trademark Office
Espacenet Patent Search
Japan Patent Office
Google Patents
Patent Lens
Delphion

Who are registered Attorneys and Agents?

Patent Attorneys are lawyers who have passed the mandatory state bar exam and additionally have passed the “patent bar exam”, which is a federal exam, which grants them the right to represent clients before the United States Patent and Trademark Office (USPTO). These lawyers specialize in Intellectual Property law as it pertains to securing and protecting an inventor’s property rights to a unique invention.

Patent Agents are similar to Patent Attorneys in many aspects, however, they cannot represent the client for prosecuting a patent infringement.

What is the role of Attorneys and Agents while applying for a patent?

USPTO website recommends hiring a Patent Attorney for filing a patent application. These attorneys can help at all stages of the application process such as filing, responding to queries, representing the client in the USPTO, protecting client’s rights during infringement, etc. They have passed an additional exam and are licensed by the USPTO for patent applications and they specialize in intellectual property law.

Is it necessary to employ a registered Attorney or Agent while applying for a patent?

It is not necessary to employ a registered Attorney or Agent while applying for a patent, however it is recommended that the services of one are availed to better guide through the entire patent application process.

Is there any knowledge of patent law and rules and office practice and procedures is required for obtaining a patent?

It is not necessary to know the patent laws, rules, office practices and procedures. This is where the Patent Attorneys would be very helpful as they are well versed with these. They can give the necessary guidance to the client.

How to identify an actually registered Attorney or an Agent?

Registered Patent Attorneys and Agents have cleared a federal exam called as “patent bar exam” and have been issued a license by the USPTO. Hence these license holders’ names are published on the USPTO’s website. If their names are not published, then these can still be verified by contacting the USPTO.

If I employ an Attorney or agent, USPTO will be communicating with me directly or not for further proceedings?

The USPTO will communicate directly with the applicant for more information related to the patent application. There would be different types of communication which need timely responses. The Patent Attorney is well equipped to handle the responses for the various types of communication and letters that are sent by the USPTO. Some of the letters that are sent by USPTO are as mentioned below:

Office Action – this is generally issued when there are concerns or disputes regarding the patent application. The first time this type of letter is released, it is a non-final letter which seeks to address the queries raised. However, if the applicant fails to satisfy the disputes or queries raised, then a final office action letter is issued.
Examiner’s amendment – this is issued as a confirmation of the amendment in the application. This does not require a response unless the applicant does not agree with the amendment.
Priority Action – This is issued by the examining attorney after discussion with the applicant to confirm the points discussed. This requires a response within six months else the application will be canceled without fee refunds.
Suspension Letter – this is an information letter in which the applicant is notified that the patent application is suspended. This letter does not require a response.
Suspension Inquiry Letter – this is issued by the examining attorney when a suspended application is reviewed after six months. This requires a response and if none is given, the patent application is canceled without fee refunds.

Is there any guideline defined for charges or fee for professional services of Attorneys or agents by USPTO.

There are no fixed guidelines as such, however, the fees for a non provisional application vary from $10,000 to $15,000 on an average depending on the complexity of the application. The fees also depend on various factors such as geographical location, attorney experience, complexity of the application, efforts involved, etc.

If I and my two other friends have contributed in the invention, then can we obtain a joint patent for our invention?

Yes, the patent application can have the names of all the inventors and stakeholders involved.

I have invented something and one of my friend has contributed money for it, can we obtain a joint patent for it?

Yes, the patent application can have the names of all the inventors and stakeholders involved.

If I am an employee of USPTO, can I apply for a patent?

No, employees of USPTO cannot apply for patents.

If I do not want to employ any attorney or agent for obtaining the patent, is there any resource provided by USPTO to get essential information about rules and regulations and proceedings?

The USPTO website (https://www.uspto.gov/) has information in the form of guides, search, rules, guidelines that are available for those who do not wish to employ a Patent Attorney to help with the application process. Apart from this website, there are plenty of other third party websites that provide this information and act as facilitators. These are readily available on Google search.

How many ways, Infringement of patents is possible?

There are many ways in which patents can be violated listed below.

  1. Direct Infringement
  2. Indirect Infringement
  3. Contributory Infringement
  4. Induced Infringement
  5. Willful Infringement
  6. Literal Infringement
  7. Doctrine of Equivalents
    1. Doctrine of Equivalents
    2. Doctrine of Complete Coverage
    3. Doctrine of Compromise
    4. Doctrine of Estoppel
    5. Doctrine of Superfluity
What would be my next step if I find any infringement of my patent?

When you find that your patent has been violated, then the first step is to send a written warning to the infringer to stop. Then file a lawsuit against the infringer and demand monetary compensation. If the patent has not yet been granted, there will be an injunction in your favour and still get time to file a lawsuit to claim for damages.

I often see patent markings or “patent pending” quotes, what does it mean?

“Patent Pending” means that the patent application has been filed and is currently under review. The application has neither been rejected nor approved.

If I want to obtain a patent in other countries for my invention, then what is the procedure?

The more reliable method of applying for a patent in other countries is to apply in the patent offices of those countries directly and individually. The procedure is more or less similar. However, each application will be associated with its own set of fees in their respective currencies.

If I am not a citizen of United States, would I be able to obtain a patent for my invention in US?

Yes. There is a provision for doing so provided your home country grants the same rights to US Citizens. Generally, a patent application needs to be filed in the home country and then filed in US within one year of the filing date in the home country.

The other option is to file a PCT (Patent Cooperation Treaty) Application in the country of residence to file patent applications that will be applicable in other countries. However, this will work if the countries are part of the PCT agreement.

How to determine that my invention is patentable or not?

Primarily, the invention must satisfy the initial criteria as described below:

Novelty – This requires that the invention description is not part of any prior published or unpublished patent application nor has it been in public use. The description should not have been part of any publication including those published by the inventor. After first publicly describing his invention, a patent application can be filed within one year. A year after public declaration, the invention is not patentable.

Usefulness – The invention must be useful although the interpretation of usefulness is vast. The marketability of the invention is not a parameter of its usefulness; nor does the applicant have to demonstrate that the invention is needed.

Obviousness – This is a subjective requirement. The invention should not be an obvious result of previous developments of any individual component. In the assessment of novelty and obviousness, the USPTO does consider relevant prior art, which is the state of technological knowledge up to the time of the patent application.

Once these criteria are satisfied, then a thorough patent search must be conducted with the help of Patent Attorneys. Own research must also be conducted to supplement the professional search for prior patents. This is necessary to avoid patent infringements and to increase the probability of acceptance.

Is there any way to have a track of my pending patent application?

Patent Applications can be tracked online. When patent applications are filed, they are generally given an allotment reference number. For patents filed with USPTO, this website gives the facility to track the application status online. The same is the case with the other patent applications in other countries.

What is “small entity status” and “micro entity status” in terms of reduced maintenance fees?

“Small Entity Status” enjoy a discount of 50% on the fees as described on the USPTO website. These entities must meet one of the below criteria:

  1. The owner is an individual who has not assigned, granted, conveyed or licensed any rights in the invention. The individual is under no obligation by contract or law to assign, grant, convey or license any rights in the invention. If the individual has transferred or is under obligation to transfer some rights in the invention to one more parties, can also qualify under small entity status either as an individual, small business or non-profit organization.
  2. The owner is a “small business concern” which means a business that meets the size standards set forth in 13 CFR 121.801 through 121.805 which state,
    1. Whose number of employees, including affiliates, does not exceed 500 persons.
    2. Which has not assigned, granted, conveyed, or licensed (and is under no obligation to do so) any rights in the invention to any person who made it and could not be classified as an independent inventor, or to any concern which would not qualify as a non-profit organization or a small business concern under this section.
  3. The owner is a Non-Profit Organization.

“Micro Entity Status” enjoy a discount of 75% on the fees prescribed on the USPTO website. These entities must meet one of the below criteria:

  1. The applicant, the inventor or the joint inventor (if any) should not have had a gross income (as defined by the IRS) exceeding three times the median household income for that preceding calendar year (as most recently reported by the Census Bureau). The “Maximum Qualifying Gross Income” to avail the fees at the micro entity discount rate is set at $169,548 as of March 2013.
  2. Not named on more than 4 previously filed applications.
If I have applied for a patent, how would I come to know that my application has been submitted and received by USPTO successfully?

It is recommended that you check the status of your application at least once every six months on the USPTO website. USPTO would update the status within three weeks of filing the patent application. So within a month of filing the application, there will be a confirmation which will tell you the movement of the application. It is advisable to update your current contact details especially your email address with the USPTO and ensure that their email addresses are added in the safe sender’s list of your email providers. This will enable you to receive timely notifications of the status updates regarding your application as and when it happens.

What is the use of EFS while applying for a patent?

EFS-Web is the online web portal provided by the USPTO for filing patent applications online. This is convenient as both, US and non-US residents can file patent application online. The additional advantage is that applications file using EFS are examined on priority, hence, this also speeds up the process to a certain extent.

How long it takes to process a patent application?

After the filing date, the status is updated within a month. After 18 months, the application is published in the USPTO gazette. On an average, the results of the Patent Examiner’s first substantial review of the patent application are made available within 21 months.

I will be able to build or sell my invention without any objection after getting a patent or not?

Yes, once the patent is granted, it means that your invention is unique and that nobody else has any objection to it. You have got exclusive rights and ownership of your invention for 20 years from the filing date. This is the time you have to mint money from your invention and/or your patent.

What are the steps to obtain a patent for my invention?

The steps to obtain a patent for your invention are beautifully outlined on the USPTO website (https://www.uspto.gov/patents-getting-started/patent-process-overview). Broadly, the steps are outlined below. Visit the link for detailed explanation of the steps.

  1. Determine the type of protection for your Intellectual Property you are looking for.
    1. Patent
    2. Trademark
    3. Copyright
  2. Check if your invention qualifies to be patented. This also involves conducting a search on prior patents.
  3. Determine the type of patent that you are looking for.
    1. Utility
    2. Design
    3. Plant
  4. Prepare the application. This also involves consulting a Patent Attorney, preparing the fees to be paid at various stages and to the Attorney (if his/her services are availed).
  5. Submit the initial application online.
  6. Coordinate with the Patent Examiner to resolve and answer any queries that arise within the given timelines.
  7. Receive the approval for the patent.
  8. Maintain the patent by paying the maintenance fees on time.
Is it necessary to publish the patent application?

All patent applications received in the USPTO are published after 18 months in the USPTO gazette. These may be published earlier upon request by the applicant. However, there are a few exceptions under which patent applications are not published, which are:

  1. The application is no longer pending.
  2. The application is subject to secrecy order under section 181.
  3. There is a provisional application filed under section 111(b).
  4. An application for design patent is filed under Chapter 16.
Is it necessary to file a provisional patent application before applying for full patent application?

This is a facility that has been provided by the USPTO for filing a provisional patent application to establish an early effective filing date. Filing a provisional patent application is purely optional and not mandatory. Provisional applications are not examined.

How license of a patent can be used by invention owner to sell his or her invention?

A profitable way for a patent holder is to issue a license to a company or several companies to manufacture, sell and/or use the product. As a patent holder, you are the exclusive holder of the invention and you earn royalty on the sales of the product. The licensee assumes liability of any product issues as they manufacture it. The downside is that licensing usage rights do not assure financial riches. Considering the royalty rates that vary from 5% to 20%, substantial amounts of the product will have to be sold to get good returns. It would also depend on the product performance in the market. If the product is a bestseller, then it will rake in the moolah else it could be a flop.

If I apply for a patent and it gets rejected, will it be published to the public?

The rejected patents are not published in a public domain. Only, the received patent applications are published after 18 months from the filing date.

If I send any inquiry to the office concerning the novelty and patentability for my invention before filing an application, will I get any response or not?

There is no assurance that you will get a response. However, the services of a Patent Attorney or a Patent Agent may be engaged to get an initial review done.

Can I employ an attorney or agent to perform the preliminary search only?

Yes, you can employ the services of a Patent Attorney or a Patent Agent only for the preliminary search. However, it is recommended that their services are availed for the life of the patent.

If I am not able to go to the public search facility, may I get the copies of previously patented inventions?

Previously patented invention copies can be availed of from the USPTO website on payment of a fee. There are various methods of requests that can be sent on payment of the requisite fees for each of the corresponding methods. Requests for copies of prior patents can be sent either online, by mail, by facsimile or in-person.

Can USPTO recommend any particular attorney or agent?

The USPTO will not recommend any specific Patent Attorney or Patent Agent. However, they do have a list of all the licensed Patent Attorneys on their website for the people to view and choose.

What is the use of power of attorney while employing an attorney or an agent?

A Power of Attorney in a patent application is used to name a representative as specified below:

    1. One or more joint inventors.
    2. Registered patent practitioners who have a customer number.
    3. Ten or lesser patent practitioners, the names and customer numbers of each have to be mentioned in the power of attorney document.
If I give power of attorney to an agent, would it be possible to revoke it at any point of time?

Yes, a power of attorney can be revoked at any point of time by the applicant or patent owner. The revocation application has to be given in writing to the USPTO office.

If I forgot to name the other inventor or I have named him or her incorrect, then is it possible to make correction in patent application?

Yes, minor corrections can be made to the patent application upon payment of a small fee as long as the correction does not constitute re-examination.

If I am an employee of USPTO, would I be able to apply for a patent or not?

USPTO employees cannot apply for patents.

Is there any barrier for use of language in the patent application documents?

No, there is no barrier on the language used in the patent application documents. However, after filing the original application, within two months, a translation also has to be filed in one of the official languages as specified.

If there is any document is pending to proceed with the patent application, will I get a time frame to complete it or it will get rejected then and there?

If there is a pending document or an office action response is raised, you will recieve letter in the mail. This mail must be responded to within a maximum of six months from the mailing date. This is applicable if no time frame is specified in the mailer. The mailer would specify the time frame to submit the requisite documents within either two to three months else within six months if no time frame is mentioned.

If I have failed to complete the required documents within the time period given to me, will I get the refund back or not or is there any deductions for the same?

If no timely response is given to the office action letters, then the application is abandoned. No refunds are made.

What is the significance of Oath or Declaration while filing a patent application?

The significance of Oath or Declaration while filing a patent application is that the inventor and/or joint inventor affirm that the information provided in the patent application is true and accept the warning that any wilful false statements would be punishable by fine and/or imprisonment. These are certain statements that are required by law and the USPTO that need to be sworn to by the inventor and/or the joint inventors before the notary public.

If I want to file a provisional patent application, in that case will I need to submit the claims and oath declaration or not?

No, a provisional patent application does not require the claims and oath declaration. The provisional patent application is a facility to get an early effective filing date only.

Can I file a provisional patent application for my design invention?

No, a provisional patent application cannot be filed for design inventions.

If I have filed a provisional patent application, then how much time will I get to file a non-provisional patent application?

After filing a provisional patent application, a non-provisional patent application has to be filed within 12 months of the provisional application filing date. This is a non-extensible grace period provided.

The term of provisional patent application will be counted as including term of subsequent non-provisional patent or not?

The duration of the patent term is measured from the patent application filing date or the effective filing date, whichever is earlier.

If I do not want my invention to be published then is it possible or not?

Generally, all patent applications received in the USPTO office are published in the USPTO gazette within 18 months or earlier upon request. Exceptions to this rule are the below patent applications:

The application is no longer pending.
The application is subject to secrecy order under section 181.
There is a provisional application filed under section 111(b).
An application for design patent is filed under Chapter 16.

Hence, if your patent application satisfies the above criteria, then the patent application will not be published.

What is the total claims limit to fall in the “excess claims” criteria?

There are various limits defined in terms of the number of claims as per the fee schedule of the USPTO website. There are no claim amounts defined (https://www.uspto.gov/learning-and-resources/fees-and-payment/uspto-fee-schedule).

What happens if I exceed the excess claims limit?

If you exceed the excess claims limit, there will be extra fees that will need to be paid for processing the patent application.

The title of my invention is quite long, is there any character or words limit is defined for the title?

Yes, there is a limit on the number of characters in the title. Title should be short and limited to 500 characters.

What are the things that I should include in the description of my patent application?

The description should have a detailed narration of the invention, the process and methodology of making/manufacturing it, its usage and claims. The specifications should be clear, complete, concise and have specific terms that can easily be interpreted by any individual who has the knowledge to replicate it. If the invention involves computer programming, the complete program listing should also be submitted as part of the specification as defined in 37 CFR § 1.96(b) and (c).

What is “Abstract of the disclosure”? What should I write under this title?

This is a short narrative that mentions the technical disclosure of your invention. This contains what is new in the contraption conceived by you. This should be on a separate page and should be restricted to 150 words in a single paragraph.

Is there any words limit for writing “Abstract of the Disclosure”?

Yes, the limit is 150 words in a single paragraph.

If I file a patent application for my invention, how many claims I can mention in the application and how to write those claims?

Patent Applications can have upto three independent claims, upto twenty total claims and/or a multiple dependant claim. Patent Applications filed under 35 U.S.C. 111(a) do not have claims. Claims in excess of these will attract excess claims fee.

For examples of corrrectly writing different types of claims (refer website – http://www.ipwatchdog.com/2014/07/12/understanding-patent-claims/id=50349/)

What are the “Multiple Dependent Claims”?

These are smaller claims that are defined in the application that refer back to and limit the other claims in the same application. Patent applications have multiple dependant claims defined as this limits the associated fees charged by the Patent Office. Fees are dependant on the number of Independent claims mentioned in the application.

What is the significance of a drawing in a patent application?

Drawings are diagrammatic representations of the invention described in the patent application. Drawings should represent each and every aspect and feature of the invention as described in the claims. Drawings have to be present at the time of filing the patent application and cannot be added later due to the prohibition against new matter policy in effect.

Can I include symbols in the drawing for my invention description in the patent application?

Yes, symbols and special text such as chemical or mathematical formulae, electrical waveforms corresponding to electrical signals, computer program code and listing, tabular representations, etc., must be represented separately using brackets as necessary. Appropriate graphical symbols can also be used for conventional elements and should be clearly identified in the specifications.

Do I need to include a model or exhibit in my patent application?

A model, exhibit or specimen is not required at the time of filing the patent application. However, it may be needed at the time of prosecution of the application (37 CFR 1.91 and 1.93, MPEP § 608.03).

In what case I need to furnish specimens for my invention?

Specimens of the invention are asked for during prosecution of the application (37 CFR 1.91 and 1.93, MPEP § 608.03).

If I have two inventions and want to obtain the patent, would I be able to apply for the single patent for both with single patent application?

Yes, a single patent application can contain multiple products/inventions. During examination, if it is determined that these are independent, then the Patent Examiner may ask separate patent applications to be filed.

If I think that one of my patent application got rejected by office due to some error of examiners, what should be my next step in that case?

Patent Application rejections are based on the patent statute, specifically 35 U.S.C. §§ 101, 102, and 103. Claims can be rejected for failure to comply with requirements set forth in § 112. The first office action from the Patent Examiner will always be a non-final rejection. The mailer will specify a time frame in which a response has to be filed. If no timeframe is indicated, then you have six months from the date of the mailer to submit your response. Effectively, based on the first office action rejection mailer received, you do have time to prepare and file an appropriate response, even if the rejection is an error by the Patent Examiner.

How many times I can send my patent application for reconsideration?

As per section 37 CFR 41.31(a)(1), “Every applicant, any of whose claims has been twice rejected, may appeal from the decision of the examiner to the Board by filing a notice of appeal accompanied by the fee set forth in §41.20(b)(1) within the time period provided under §1.134 of this title for reply.” Hence, if the patent application has been rejected twice, a notice of appeal can be filed to the Patent Board upon payment of the requisite fees.

If my patent application got rejected somehow and I realize that the application was rejected due to wrong or incorrect reason then what all the things should I check before sending it for reconsideration?

The first office action mailer would cite the reason(s) for rejection. However, the below mentioned reasons can possible help to reevaluate the patent application before submitting for reconsideration:

  1. Invention is “Obvious” – This implies that the invention’s claimed elements are found in prior arts and there is reason to believe that these claimed elements can combine to build your invention.
  2. Lack of “Novelty” – This implies that there exists at least one prior patent, application, disclosure, article, product, etc., which resembles the claimed invention.
  3. Claims listed incorrectly – There are very strict guidelines for listing and writing the claims in a patent application that have been laid down by the Supreme Court. Hence, claims have to be accurately written else they will be a plethora of reasons for rejection.
  4. Inconsistent Drawings – drawings have to be strictly in black and white only. No other colour or shading is permitted. Presence of grey on the drawings is also a cause for rejection. Smudges, stray marks, or extra lines on the drawings will also be a cause for rejection of the drawings.
  5. Issues with written description – this is very subjective, however, there are three main reasons why this can be a reason for rejection. Firstly, the description may not describe the invention completely and/or correctly. Secondly, the manufacturing method and its usage may be missing. Thirdly, details mentioning the invention and its inventor may be missing or incorrectly mentioned.
After the first action taken by the office, how much time I will get in order to reply?

When the first office action letter is issued, you will need to send your response within six months from the date of the mailer. This is applicable if there is no timeframe specified in the letter. If the timeframe is mentioned, it would be two to three months, if not, you have six months from the mailer date.

If the reply period is extended by the office, is there any additional fees that I need to bear?

Yes, there are late fees to be paid as described in the USPTO fee schedule. Refer to the link (https://www.uspto.gov/learning-and-resources/fees-and-payment/uspto-fee-schedule).

If I was unable to send the reply within the time limit due to some unavoidable reason and application considered as abandoned. Is there any other way to send the application for review after this?

Yes, there is a provision to file a petition to revive an abandoned patent application. USPTO does give a provision to file a revival petition within two months of the patent application abandonment mailer date. This is accompanied with the payment of the applicable fees.

In the event that the office action mailer mentioning the abandonment is not received, the applicant can still file for revival after two months and within six months of the abandonment date with payment of the prescribed fees.

After second review the patent application has been finally rejected by the office, which will be the next available forum to appeal for this?

After the patent application has been rejected twice, the next available forum to whom an appeal can be sent is the Patent Trial and Appeal Board. This would attract additional fees as outlined in the fee schedule on the USPTO website.

What is maintenance fees charged by the office and how many times it will be charged during the time patent in force?

The schedule of fees on the USPTO website (link mentioned below) outlines the various amounts of the maintenance fees that are payable during the life of the patent.

Source: https://www.uspto.gov/learning-and-resources/fees-and-payment/uspto-fee-schedule

If I fail to pay the maintenance fees then what would be the next action taken by the office?

Patent maintenance fees need to be paid as per the schedule prescribed. If these are not paid as per schedule, USPTO provides a grace period to pay the maintenance fees with an additional surcharge. If there is a further delay, then the patent would expire. However, this can still be revived with payment of the due maintenance fees, surcharge and other applicable fees.

Is there any correction is possible after the patent has been granted?

After the patent has been granted, minor clerical or typographical errors can be corrected on payment of a fee. These corrections should not constitute new matter nor should it require re-examination.

Can I transfer or mortgage my patent rights to someone else?

Yes, a patent can be transferred by means of an assignment in return for monetary returns. Alternatively, a patent holder can issue licenses to a company or a set of companies to manufacture and sell the product in return for royalty.

What is a design Patent?

A design consists of the appearance and visual characteristics that are applied to a manufactured article. The subject matter of a design patent is related to the aesthetics and ornamental configuration of the article or the combination of the configuration and surface orientation. A surface design of an article cannot exist by itself and has to be applied to a manufactured article.

For how many years a design patent remains in force as per the laws defined?

Design patents are valid for fourteen years from the date of the grant.

How many claims are permitted if I apply for a Design Patent?

A design patent can have only one claim.

What type of inventions can be covered for a Plant Patent?

Plant Patents can be issued for new and unique, invented or discovered asexually reproduced plants that include cultivated sports, mutants, hybrids and newly discovered seedlings, other than tuber propagated plants or uncultivated plants.

What is the maximum time frame a plant patent remains in force?

Plant patents are effective for upto twenty years from the application filing date.

Why is it necessary to make drawings colorful for a Plant Patent?

Drawings for a plant patent should be colourful as colour too is a distinguishing characteristic for plants.

What type of patent applications are not permitted to be filed via EFS-Web?

Plant Patent applications are not permitted to be filed via EFS-Web.

Does department of Agriculture play any role for the inquiries relating to the plant patents?

Yes, the department of agriculture may receive instructions from the USPTO to furnish available information and to conduct appropriate research for special problems related to the patent application.

What is the “Right of Priority”?

This applies specifically to patent applications filed in other countries and in US. The filing date of a patent application filed in another country can be used as the effective filing date for the same patent filed in the US subject to fulfilment of certain conditions and requirements. The conditions are specified in 35 U.S.C. 119(a)-(d) and (f), 172, 365(a) and (b), and 386(a) and (b), and 37 CFR 1.55.

How much time I will get for subsequent applications as priority under the “Right of Priority” law?

Under the “Right of Priority”, subsequent applications can be filed within 12 months from the earliest foreign patent application filing date.

What facility I get under the benefits of “Patent Cooperation Treaty”?

“Patent Cooperation Treaty” or PCT agreement enables patent protection for an invention by filing a single “international” patent application that will be effective in nearly 150 countries. This saves the hassle of filing the same application in each country.

Is there any permission is required from the USPTO in case I am applying for a patent in a different country?

A patent applicant can file for patent in a foreign country within six months of the filing date upon authorization by license from the Commissioner of Patents. This is applicable for a utility model, industrial design or model of an invention made in the US. Exception to this is that a license will not be issued pursuant to section 181 without concurrence of the heads of departments and the chief officers of the agencies who caused issuance of this order.

I am a citizen of XYZ country, can I apply for a patent for my invention in U.S.?

Yes. There is a provision for doing so provided your home country grants the same rights to US Citizens. Generally, a patent application needs to be filed in the home country and then filed in US within one year of the filing date in the home country.

The other option is to file a PCT (Patent Cooperation Treaty) Application in the country of residence to file patent applications that will be applicable in other countries. However, this will work if the countries are part of the PCT agreement.

Can someone make some small changes to my invention and avoid the patent obtained by me?

Once a patent has been granted, if someone makes a small change and files a subsequent application, it will definitely show up during examination of the application. Whether the subsequent application is accepted or rejected would depend on case to case and how the responses are framed.

If I have obtained a patent for my invention then can this patent stop me from using, building and selling my invention?

On the contrary, a patent for your invention gives you the exclusive right to use, build and sell your invention for a suitable sum of money. This can also be leveraged by selling licenses to manufacture your invention to manufacturing companies and/or units in which they will take care of the issues related to the product. This will ensure a royalty income in the range of 5% to 20%.

Why and how a patent is important to me?

Patents provide protection to individuals for their creation and uniqueness of their invention. This also gives them an opportunity to monetize their invention by the process of licensing their invention to manufacturing companies to manufacture and sell their invention in bulk. Alternately, they can also sell their patent by assigning it to another company for a suitable sum of money. The inventor(s) and/or patent holder(s) can sue patent infringers for monetary compensation.

Contact Us

Got Questions! Queries! Send us an email.

Not readable? Change text. captcha txt