Lesson 2: The Patent Process

2.1 Patent Process Basics

Although patent application processes vary somewhat from country to country, some basic concepts inform all of these processes. This section deals primarily with the utility patent process, although processes for U.S. plant and design patents are similar.

Prior art and public disclosure

Lesson 1 introduces the idea of “prior art” and provides examples, such as inventions disclosed in patent applications and inventions listed for sale. Prior art includes inventions disclosed by patent applicants themselves. When an inventor files a patent application, their own public disclosure can count against them.

Rules surrounding an inventor’s own public disclosure vary from country to country, with some territories (including the U.S.) offering grace periods. Broadly, however, this is one area in which patents operate differently than other intellectual property rights. If you publicly disclose copyrightable content or a trademarkable symbol prior to registration with the U.S. Copyright Office or U.S. Patent and Trademark Office (USPTO), it might even strengthen your rights; if you publicly disclose an otherwise patentable invention before applying for a patent, this will complicate and possibly endanger your ability to patent it.

Important parties and terms in the patent process

Patent applications pass through many hands on their way to being granted or rejected. Here are some of the major parties involved and terms used in the process:

  • Inventors are the individuals named as responsible for creating patented inventions. Inventors do not necessarily hold the exclusive rights to their inventions, as rights can be assigned to other parties prior to, during, or after the application process. Inventors are always credited on the patent documentation nonetheless.

  • Applicant refers to the person, people, or organization that applies for the patent rights. This may or may not be the inventor. When the rights are granted, the applicant may be referred to as the owner or the assignee. The owner or assignee can also transfer the rights, at which point the new rights holder would be considered the owner or assignee, and the previous owner the assignor.

  • Applicants often hire a patent agent or patent attorney to help them write and submit their patent applications. In the U.S., patent agents and attorneys must pass the patent bar administered by the USPTO and are the only individuals eligible to represent others on patent matters before the USPTO. Patent agents are only eligible to provide support during the patent process and cannot otherwise practice law. Patent attorneys are licensed to practice law in at least one state and can provide additional legal services, such as advising on licensing and representing clients in court. The USPTO maintains a database of registered patent agents and attorneys.

  • Patent offices are the governmental bodies that administer the granting of patents. These may be specific to a country (such as the USPTO, the Canadian Intellectual Property Office, and the Japan Patent Office) or regional (such as the European Patent Office and African Intellectual Property Organization). The World Intellectual Property Organization (WIPO) maintains a list of international intellectual property offices, which includes all patent offices.

  • Patent examiners are subject matter experts employed by patent offices to review applications. This includes searching for prior art and evaluating applications per guidelines established by the patent office. In the U.S., USPTO examiners review applications using the Manual of Patent Examining Procedure (MPEP), which is derived primarily from U.S. Code 35 and U.S. Code of Federal Regulations Volume 37.

  • Priority date is the date on which the first application for a patent was filed. Priority date can be based on the filing of a provisional or nonprovisional patent and it includes applications filed in any territory. Most importantly, it establishes a cutoff date for prior art. Any inventions disclosed after this date will not be considered prior art when examiners review the patent application.

Time, effort, and cost

Regardless of whether an applicant applies only in the U.S. or internationally, the patent process can be time-consuming, difficult, and expensive.

Most successful patent applications involve:

  • getting to know the required parts of a patent (covered in Lesson 3),
  • searching for prior art (covered in Lesson 4), and
  • deciding how to best describe and protect the invention.

Applicants can file their applications independently or can choose to hire patent attorneys and agents (who can help with searching and analyzing the results), professional searchers (who can help with searching but legally cannot provide an analysis of the results), and patent artists (who can assist with drawings).

Whether applying in the U.S. only or in multiple territories, applicants pay a series of fees to the relevant patent office(s) during the patent process, covering application, examiner searches and examination, and even specific qualities of the application (for instance, how the claims--which define the scope of the patent--are enumerated). If a patent is granted, assignees are then required to pay additional fees to maintain the rights until the patent expires.

In the U.S., fees are based on whether the applicant qualifies as an “entity,” “small entity,” or “micro-entity,” assessed based on number of employees, income, and other factors. The USPTO fee schedule details all current fees for the U.S. patent process. Note that this schedule presents fees singly; applicants will virtually never pay only a basic filing fee, but will pay, at minimum, a basic filing fee, a search fee, an examination fee, and, if the patent is granted, an issue fee.

After the application is filed, the patent process can still take years due to the examination process and other factors. Timelines vary based on U.S. or international application processes, explained and illustrated below.

Patentability and exclusive rights in an international context

The international nature of patents complicates matters in that patent protection is granted on a territory-by-territory basis, but patentability requirements for novelty and non-obviousness are evaluated on an international basis; i.e., an invention’s novelty and non-obviousness are established against prior art publicly disclosed in any territory.

This leads to the following common scenario:

  • an invention is patented in only one country,
  • because this invention is disclosed through the patenting process, it now exists as prior art for applicants in all countries, which means no one can patent this invention in any other country.
  • Because the patent owner holds the exclusive right in only one country, others can produce and market the invention in all other countries without infringing.

If you successfully patent an invention with the USPTO and the JPO, you will hold the right to exclude others from producing or selling your invention in the U.S. and Japan, but will not hold the right to exclude others from producing or selling it in Germany. Due to consistent international requirements for novelty, however, no one else will be able to patent the invention in Germany. If you decide to produce and market your invention in Germany, you will be free to do so, although you may face competition from German imitators.

Due to variations in policies and processes among national and regional patent offices, it would be impossible to account for all particulars in this micro-course. The sections below include a detailed overview of the U.S. patent process and information on two paths for international patent coverage available to U.S. patent applicants, with differences from the U.S. patent process highlighted.

UW-Madison university policy states:

Except as required by funding agreements or other University policies, the University does not claim ownership rights in the intellectual property generated during research by its faculty, staff, or students.

For the purpose of identifying funding agreements that may be tied to their inventions, faculty, staff, and students at the University of Wisconsin-Madison are obligated to disclose inventions to the Wisconsin Alumni Research Foundation (WARF) for review by both WARF intellectual property managers and the Office of the Vice Chancellor for Research and Graduate Education (VCRGE). This process is detailed in UW-Madison Libraries’ Introduction to Intellectual Property micro-course Lesson 3: Intellectual Property in Context.

2.2 U.S. Patent Process

The U.S. patent process is similar to other territories’ patent processes, but is more forgiving to applicants in some ways, particularly in terms of public disclosure.

The following interactive audio timeline explains the U.S. patent process. Select each box to learn about the steps in this process.

U.S. Patent Timeline

Open U.S. patent interactive timeline in a new window

As mentioned in the graphic, filing a provisional patent application allows applicants to disclose and test the market for their invention without affecting their ability to pursue a U.S. patent. They also offer the following advantages:

  • Any patent applications or public disclosures made by others after the filing date will not be considered prior art;
  • Requirements and fees for filing a provisional patent application are lower than those of nonprovisional patent applications;
  • Applicants can legally use the term “patent pending” in marketing their invention just as they could if they had filed a nonprovisional patent application; and
  • If a corresponding nonprovisional patent application results in a patent, the protection will expire 20 years after the filing date of the nonprovisional patent application; the up-to-12 month period between filing the provisional and nonprovisional patent applications essentially allows for up to 21 years of protection.

Although U.S. patenting policy differs somewhat from the rest of the world today, it used to differ even more substantially. In 2011, President Barack Obama signed the Leahy-Smith America Invents Act (AIA), an attempt to synchronize the U.S. patent system with the rest of the world, and its provisions have all taken effect as of 2013. Among many other changes, this federal statute changed the U.S. from a first-to-invent (FTI) nation (in which an inventor could claim rights to the date on which the invention was conceived under certain circumstances) to a first-inventor-to-file (FITF) nation, in which filing date is critical. To ease the transition, the AIA included the public disclosure grace period and other facets that continue to distinguish the U.S. process from those of other countries and regions, most of which have “first-to-file” (FTF) policies.

2.3 International Patent Processes

There are two main options available to applicants interested in pursuing patent protection in both the U.S. and in other territories: beginning the application process through the Patent Cooperation Treaty (PCT) system or applying in specific countries under the rules of the Paris Convention. The sections below provide a brief explanation of how these international processes work in concert with the U.S. system. Most international patent offices do not recognize the grace period for disclosure offered in the U.S., thus these options are generally not available to applicants who have publicly disclosed before filing.

Patent Cooperation Treaty (PCT) process

Beginning in 1970, the Patent Cooperation Treaty (PCT) has allowed patent applicants who plan to pursue a patent in multiple countries to begin their process with a single application submitted to a single participating country’s patent office. The U.S. is one of over 150 participating states, thus U.S. nationals and residents can begin this process by filing a PCT application with the USPTO.

Like provisional patent applications, PCT applications never progress directly to a granted patent, but are a means to establish a filing date. PCT applications can be filed directly or within 12 months of an initial filing with a participating patent office. In other words, U.S. applicants who want to file via the PCT process can:

  • immediately file a PCT application with the USPTO; or
  • file a U.S. provisional patent application and then a PCT application within 12 months; or
  • file a U.S. nonprovisional patent application and then a PCT application within 12 months).

Once an applicant files a PCT application, it enters the International Phase of the process. An International Searching Authority (ISA) in one of the participating patent offices performs a prior art search and provides to the applicant an International Search Report (ISR), including a written opinion on the invention’s patentability. The World Intellectual Property Organization (WIPO) publishes the PCT application and ISR 18 months after the priority date (typically the PCT application filing date or the the U.S. provisional patent application filing date, if applicable). If the ISR looks promising, the applicant can pursue the grant of the patent with the desired countries, typically beginning at 30 months after priority date. This initiates the National Phase of the process, which is subject to the rules established by the relevant patent office(s).

The PCT process is more expensive than filing in a single territory, and applicants are required to pay all additional costs associated with the patent offices involved in the National Phase. For those who intend to patent their inventions in many territories, however, it offers the following advantages:

  • The additional 30 months lets applicants explore marketability and defer some costs associated with applying for patents in multiple countries, including paying for translations, individual patent office fees, and employing local agents;
  • The ISR can help applicants decide whether pursuing patent protection will be worth the time, cost, and effort; and,
  • Although more costly than filing in a single territory, the PCT process is often less expensive overall if applicants plan to pursue a patent in many territories.

The following interactive timeline represents the PCT patent process. Select each box to read about the steps in this process.

PCT Patent Timeline

Open PCT patent interactive timeline in a new window

Paris Convention

The other option for U.S. nationals and residents who seek patent protection in multiple territories is to file patent applications directly with the relevant patent offices. Applicants who plan to file only in the U.S. and in one or two additional territories may prefer this route to the PCT process.

Depending on the countries involved, this might require simultaneous filings so that an application filed in the U.S. does not act as prior art for an application filed elsewhere; however, the Paris Convention for the Protection of Industrial Property, adopted in 1883, simplifies this considerably. Paris Convention countries (the U.S. included) recognize a set of consistent rules surrounding intellectual property, one of which is that those who have filed patent applications in a participating country have 12 months since that filing date to file in any other participating Paris Convention country. In the U.S., a provisional patent application filing counts as a first filing date, which means applicants with provisional patent applications have 12 months to file both their nonprovisional patent applications with the USPTO and patent applications in any other desired Paris Convention countries.

Check Your Understanding

You want to market your device exclusively in the U.S. and, while searching online, your patent attorney discovered the following prior art that is identical to your device in every way (assume your highly experienced patent attorney found no other prior art that presents a reason for rejection on grounds of novelty):

A granted U.S. patent that’s still valid
Will you be able to patent and/or legally market your device?

Answer: You will likely be unable to patent your device in the U.S. due to lack of novelty. You will also be unable to legally market your device in the United States without the permission of the patent owner, who owns the exclusive rights to produce and market the technology in the U.S.

An application for a Japanese patent
Will you be able to patent and/or legally market your device?

Answer: You will likely be unable to patent your device in the U.S. due to lack of novelty, because international patents are considered prior art in the U.S. examination process. You will be able to market your device in the U.S., as the Japanese patent grants the owner the exclusive right to produce and market in Japan only. As the technology is not patent protected in the U.S., however, others--including the Japanese patent-holder--may also produce and market the device in the U.S.

A granted European patent that expired in 2015
Will you be able to patent and/or legally market your device?

Answer: You will likely be unable to patent your device in the U.S. because expired patents, expired or otherwise, are considered prior art in the U.S. examination process. You can market your device in the U.S. and also market it elsewhere in the world, including all of Europe, as the patent protection granted by the European Patent Office (EPO) is no longer in effect.

An Amazon.com page for your device that you posted three months ago (whoops!)
Will you be able to patent and/or legally market your device?

Answer: Due to the 12-month grace period on disclosure afforded patent applicants in the U.S. you will be able to file a patent application for your device with relative certainty that it will not be rejected on the basis of your own disclosure (although it still might be rejected during the examination process for any number of other reasons!). You will likely be unable to patent your device internationally, as most countries do not offer grace periods except under very specific circumstances. You will be able to legally market your device in the U.S. and internationally, assuming the Amazon.com page is the only potentially disqualifying prior art.