Steps and Procedure for getting Patent in US

Steps and Procedure for getting Patent in US

“Procedure for obtaining a patent in US has the following steps: capturing your idea for creating complete invention disclosure, conducting a patentability search, drafting a patent application, filing the application, publication of application, examination, Office action, responding to objections, and grant of the patent.”

Table of Contents

Step 1: Going from idea to complete invention disclosure

Every invention has its beginning in an Idea. In this phase, you capture your idea properly, get clarity on each element of the innovative idea, and fill in the blank spots with appropriate research and experiment.

Preliminary search: this search is for finding answers to questions that build a working disclosure or comprehensive invention disclosure.

  • What problem is my invention intended to solve? How does it work?
  • What are the elements or components of my invention?
  • Can I draw a block diagram or device or flowchart or sketch that explains my invention in a better way?
  • How the elements or components are interconnected
  • How each element is functioning in accordance with other elements
  • Can I search and collect information about all elements, parts or components of my invention so that there are no blank spots?

This is the most important phase for the inventor where we go from an idea stage to a working invention disclosure that can be discussed with a patent agent or attorney. we have a complete section about actions to take and worksheets Refer to the section Step 1: from idea to invention disclosure.

Include drawings, diagrams, or sketches explaining the working of the invention. they play an important role in understanding your invention. Once you have your innovative idea completely captured with all technical details, then you perform a preliminary search.

The outcome: of this step is a complete invention disclosure that covers all aspects of your invention without any missing elements or blank spots.

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Cost of getting a Patent in United States (US):

There are two elements for the cost of getting a patent/filing patent in US: 

  1. The Government fees for Forms, requests, and renewals.
  2. The Attorney fees for patent professionals

Here is the short answer for the attorney fees required to file patent in US :

  • Novelty Search ($250 to $ 400)
  • Provisional patent application drafting ($400 to $600)
  • Non-provisional Patent drafting (from $1000 to $1,500) and after 1 to 2 years official fees $364 (micro
    entity)
  • Responding to office actions (from $600 to $800) based on the number of objections received and its complexity. 
  • Notice of allowance (grant of patent) professional fees $100 – Official fees $240 (micro
    entity)

The Steps, Procedure, Timeline and Cost for Patent in US given in a table format :

Note: steps highlighted in Orange color are either optional step or depends on case to case and are not mandatory to happen

Sr.Stages for Patent  (links for more details)Professional feesGovernment FeesTime required
1How to go from Idea to Invention disclosure? Do I need patent agent of attorney–––
2Signing Non-Disclosure Agreement  (NDA)––10 minutes to sign
3Patentability / Novelty Search  (Optional step)$250
to $400		–5 days
4Drafting Complete Patent Application $1000
to $1500		10 – 12 days
5Filing patent application $200$364 (micro
entity)		1 – 2 days
6Publication of patent application ––After 12 months
7Examination of patent application  /
Faster prioratised Examination is (Optional )

First time filer prioratised examination

Track one prioratised examination
 $200– First time filer prioratised examination ($ 0 ) micro entity

– Track one prioratised examination ($840) micro entity		1-2 Years
8Office Action and Response$800––
9Grant of patent / Notice of Allowance$100$240 (micro
entity)		Depends on pendency at USPTO

Step 2: Patentability search or Novelty search (optional step)

In this step, a comprehensive search is conducted to find out whether your invention meets patentability criteria in US which are : 

The patentability search is aimed towards finding out the novelty and non-obviousness of the invention, the search identifies the closes possible prior arts (known to the public) relating to your invention, and based on the results obtained an opinion about the patentability of your invention may be provided by patent agent or attorney. The patentability opinion may be positive, negative, or neutral.

A positive patentability opinion indicates you stand a good chance to get your patent granted for your invention. This search (novelty or patetability) saves us from filing patent for an invention for which 100% overlapping prior arts are readily available to public. in such cases the patentability search would give a negative opinion. The patentability report and opinion helps you decide whether to go ahead with the filing of a patent or not, chances are what you thought as a novel might already have been patented or known to the public.

Novelty search or patentability search report saves lots of time, effort and cost for you preventing you from filing an invention which is not Novel. therefore although optional it is a recommended step in patent procedure. For more details on this Refer section on ” novelty search or patentability search ”

Costs: The professional fees for the patent agent or attorney can range from $250 to $400 based on the complexity and subject matter of the invention.

Time: the time required is about 5-7 working days

Why patentability search or Novelty search is recommended (although optional step) ?

  • The novel aspect of the invention identified via patentability search can be leveraged while writing patent application and especially claims of patent such that our patent application stands a good chance going through the examination stage to a granted patent.
  • In case the patentability opinion is negative, then it saves a lot of cost and time which would have unnecessarily invested in proceeding with the patent filing process and eventually getting the patent application rejected. 
  • It helps you in taking decision whether to proceed with patent filing or not and estimating chances of getting patent for your invention.

Cost of patent based on type of invention

Type of inventionPatent SearchesNon-provisional Patent ApplicationsProvisional Patent Applications
Simple invention$250$1000$400
Complex invention$300$1200$500
Very complex invention$ 400$1500$600

Step 3: Patent drafting / Patent writing

A patent is a techno-legal document, that means patent has technical as well as legal aspects to it. Patent drafting/patent writing is a specialized job, it requires years of practice and experience with patent law as well as an understanding of the field of the invention, along with general understanding of case-laws and overall rules and regulations in patent prosecution to be able to draft a good patent application.

There are many rules and care to be taken while drafting claims, writing detailed descriptions, writing different embodiments of the invention, describing inventive step etc… which a first-timer or inexperienced patent writer may miss and hence end up not getting proper protection for invention (or sometimes even rejection of patent). Writing patent as a project report or a technical thesis (on your own ) and submitting it to patent office would be a mistake that can cause a loss of opportunity to patent your invention.

To get a quick understanding, you may quickly read some granted patents from your field (domain) and realize that it is a complex document and ultimately defers from a thesis or a project report written with ordinary skills.

Writing a good patent application is one of the most important step in life cycle of a patent and a good patent application written by an experienced patent agent/attorney should survive not only through the examination phase till the grant of patent but also it should survive the commercialization phase where actual money is made by licensing or selling patent rights, where competitors should not be able to work around your patent.

Writing such patent application is a skill and it is explained in detail in our section on “writing patent application (patent drafting)”

Costs: The cost for drafting a patent application in US varies in a great deal as it is dependent on multiple factors like the field of invention and complexity of the invention. The cost can range from $1000 to $1500.

Drafting Provisional Patent application in US:

Simple inventionComplex inventionVery complex invention
$400$500$600

Drafting Non-Provisional (complete) Patent application in US:

Simple inventionComplex inventionVery complex invention
$1000$1200$1500

Time : it takes about 1 to 2 weeks time for patent attorney to draft an application for an invention. It certainly can take more time based on complexity, length of detailed description and availability of patent attorney’s time.

Step 4: Filing a patent application

Filing patent application into patent office: Based on the readiness of your invention, the decision has to be made whether to go for a provisional patent application or a complete patent application. If you are not quite ready with a complete invention and require further research and development yet you don’t want to lose on priority date for filing patent application then going for a provisional patent application is recommended.

The patents are territorial in nature, so if you file a patent in US, you are getting protection in US only. You cannot stop the use of invention outside US. Therefore, if you desire that your invention should be protected in multiple countries, depending on your preference of countries, different options, paths and strategies for filing patent application are to be adopted with the guidance of a patent agent/attorney.

International patent application:  

the details about patent filing are explained in the section “filing patent application”

Costs: there are no professional fees for patent filing patent application (provided fees is paid for patentability search and patent drafting )

Many things need to be considered before giving an exact fees amount, as it depends on number of sheets in patent specification, number of claims etc. but below are approximate costing for this stage.

Provisional application filing fees in US

Large entitySmall entityMicro entity
$300$120$60

Non-provisional Patent application: Basic filing fee – Utility (paper filing also requires non-electronic filing fee under 1.16(t))

Large entitySmall entityMicro entity
$1,820$664$364

Step 5: Publication of application

Generally, a non-provisional Patent application is published after the expiry of 18 months from the earliest filing date, however, if requested by the applicant the director may publish the patent application earlier than end of 18 month period. When a U.S. patent application is published, the patent application is made publicly available for download along with its file history.

If you do not plan on going for international filing outside US (PCT application) then you may choose Not to publish the patent application, in such case you need to make a request with US patent application by including a Non-publication Request.

Why publish patent application ?

  • it is required by US patent law if you are also filing patent outside US
  • it will be found in prior art searches to examiners and to competitors trying to file similar application
  • it will serve as an intimation to competitors that your patent is coming in this area
  • having published patent on website will provide you recognition

Reasons for not publishing patent application:

  • maintain status of the patent confidential
  • keep all communications with USPTO confidential
  • can abandon the patent application and reapply
  • to keep information in patent application secret at least till grant of patent application
  • this is possible only for US patent applications (not for international patent applications)

Step 6: Examination of Patent Application

As per 35 U.S.C. 131 Examination of application. The Director shall cause an examination to be made of the application and the alleged new invention; and if on such examination it appears that the applicant is entitled to a patent under the law, the Director shall issue a patent therefor.

Once your application has been accepted as complete, it will be assigned for examination. Your examiner will review the contents of the application to determine if the application meets the requirements of 35 U.S.C. 111(a). The main conditions for the grant of a patent to an applicant are :

  • 35 U.S.C. 101 Inventions patentable.
  • 35 U.S.C. 102 Conditions for patentability; novelty.
  • 35 U.S.C. 103 Conditions for patentability; non-obvious subject matter.
  • 35 U.S.C. 112 Specification

The objections raised on your patent application would be communicated to you, by an official letter from the USPTO, known as an Office Action. You would get the opportunity to make amendments or contest the objections raised. There is a specific time within which you will have to respond to the objections, if you failed to do so the patent application will be abandoned.

In the First Action Interview Pilot Program you can have an interview with the examiner. after you have reviewed the objections and results of search conducted by the examiner. This gives you an opportunity to have one on one discussion with examiner which shortens the time and to and fro communications for resolving objects and it can result in quicker allowance of patent for your invention.

Time: USPTO takes the application for examination (in about 12-36 months).

Patent Examination Fees

DescriptionFeeSmall Entity FeeMicro Entity Fee
Utility Examination Fee$800$320$160
Examination of a patent application is a critical step in the patenting process, where the patent office reviews the application to determine if it meets the legal requirements for patentability, including novelty, non-obviousness, and utility.
For applicants seeking expedited processing, a faster, prioritized examination is available as an optional service.
First-time filers prioritized examination, particularly those qualifying as micro entities, can benefit from a prioritized examination with no additional fee under certain conditions, providing a cost-effective route to quicker patent issuance.
Additionally,
Track One prioritized examination allows applicants to receive a final disposition within approximately one year, albeit with a fee of $840 for micro entities. This option significantly accelerates the examination process, enabling inventors and businesses to secure patent rights more swiftly, which can be crucial for maintaining a competitive edge in the market.

Step 7: Response to objections

Majority of patent applicants (inventors) will receive some type of objections based on examination report. The objections raised on your patent application would be communicated with you, by official letter from the USPTO, known as an Office Action. You would get opportunity to make amendments or contest the objections raised.

An Office action is written correspondence from the patent examiner that requires a properly signed written response from the applicant in order for prosecution of the application to continue. Moreover, the reply must be responsive to each ground of rejection and objection made by the examiner. Examples of Office actions include a restriction requirement, a non-final Office action, and a final Office action.https://www.uspto.gov/patents/maintain/responding-office-actions

The best thing to do it analyze the examination report with patent agent/attorney and create a response to the objections raised. This is a chance for an inventor/applicant to communicate his side of the equation and making desired changes in the patent application to comply the objections received. Generally, the timeline to revert to office action is two to three months, but can be extended up to 6 months by paying extension fees.

There is a specific time within which you will have to respond to the objections, if you failed to do so the patent application will be abandoned. If your application is twice rejected, you may appeal the examiner’s decision to the Patent Trial and Appeal Board (PTAB). The inventor and patent professional creates a response to the objections that tries to prove that his invention is indeed patentable and satisfies all patentability criteria’s. Or optionally accepts the objections and amends the patent application as pointed out in examination report.

If USPTO is satisfied with the response to the objections or the amended patent application. Up on finding the patent application in order of grant,  The patent is granted to you (inventor) /  applicant as early as possible !!!

Professional Fees: The patent agent /attorney may charge a professional fee of $800 for a response to office action depending upon complexity, subject matter, and number of objections.

Step 8: Grant of patent / Notice of Allowance

If the examiner determines that your application is in satisfactory condition and meets the requirements, you will receive a Notice of Allowance. The notice of allowance will list the issue fee and may also include the publication fee that must be paid prior to the Patent being issued. The patent grant is mailed on the issue date of the patent.

The patent is issued in the name of the United States under the seal of the United States Patent and Trademark Office, and is either signed by the Director of the USPTO or is electronically written thereon and attested by an Office official. The patent contains a grant to the patentee, and a printed copy of the specification and drawing is annexed to the patent and forms a part of it.

DescriptionFeeSmall Entity FeeMicro Entity Fee
Utility issue fee$1200$480$240

Selecting the right patent attorney for your invention

for more information on the process, the inventor should follow while selecting the right patent attorney in US to work with and regarding deciding whether to go for the most expensive attorney or the most economic attorney for patenting your invention check our section on 

Prasad Karhad
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