Obtaining US Patents and Trademarks

Our specialists provide their assistance in a patent obtaining only and with no exceptions if the invention was made by an inventor who is a partner and co-owner of a joint company with the Global Net Advantage, LLC (please, go to the page "Joint Ventures"). When joint venturing, will help our partner to go through all the stages of a patent obtaining.

We do not provide it as a service to inventors from outside. If you are an inventor and want to get your invention patented, follow the link www.uspto.gov – the official web site of the United States Patent and Trademark Office.

General provisions

A patent for an invention is the grant of a property right to the inventor, issued by the United States Patent and Trademark Office.

Generally, the term of a new patent is 20 years from the date on which the application for the patent was filed in the United States or, in special cases, from the date an earlier related application was filed, subject to the payment of maintenance fees. U.S. patent grants are effective only within the United States, U.S. territories, and U.S. possessions. Under certain circumstances, patent term extensions or adjustments may be available.

The right conferred by the patent grant is, in the language of the statute and of the grant itself, "the right to exclude others from making, using, offering for sale, or selling" the invention in the United States or "importing" the invention into the United States. What is granted is not the right to make, use, offer for sale, sell or import, but the right to exclude others from making, using, offering for sale, selling or importing the invention. Once a patent is issued, the patentee must enforce the patent without aid of the USPTO.

There are three types of patents:

The codes and regulations as well as the various reference documents include: the United States Code (Title 35),the Rules of Practice in Patent Cases (37CFR), the Manual of Patent Examining Procedures (MPEP), the US Patent Classification System, the Manual of Classification, the Classification Numbers and Titles and the Classification Index.

Foreign Applicants for U.S. Patents

The patent laws of the United States make no discrimination with respect to the citizenship of the inventor. Any inventor, regardless of his/her citizenship, may apply for a patent on the same basis as a U.S. citizen. There are, however, a number of particular points of special interest to applicants located in foreign countries.

There are four general stages (phases) of obtaining of a patent:

  1. A preliminary patentability search.
  2. It typically takes 3-6 weeks.

  3. 2. Preparation of a patent application and its filing with the USPTO.
  4. When obtaining utility or plant patent, one can choose first to file a provisional application. And then file a non-provisional application. The preparation and filing stage for a non-provisional application typically takes 4-6 weeks.

    Provisional Application for a Patent

    Since June 8, 1995, the USPTO has offered inventors the option of filing a provisional application for patent which was designed to provide a lower cost first patent filing in the United States and to give U.S. applicants parity with foreign applicants. Claims and oath or declaration are NOT required for a provisional application. Provisional application provides the means to establish an early effective filing date in a patent application and permits the term "Patent Pending" to be applied in connection with the invention. Provisional applications may not be filed for design inventions.

    The filing date of a provisional application is the date on which a written description of the invention, and drawings if necessary, are received in the USPTO. To be complete, a provisional application must also include the filing fee, and a cover sheet specifying that the application is a provisional application for patent. The applicant would then have up to 12 months to file a non-provisional application for patent as described above.

    Non-Provisional Application for a Patent

    A non-provisional application for a patent is made to the Director of the United States Patent and Trademark Office and includes:

    1. A written document which comprises a specification (description and claims), and an oath or declaration;
    2. A drawing in those cases in which a drawing is necessary; and
    3. Filing, search, and examination fees. Applicant must determine that small entity status is appropriate before making an assertion of entitlement to small entity status and paying a small entity fee. Fees change each October. The fee schedule is posted on the USPTO Web site.

    All application papers must be in the English language or a translation into the English language will be required along with the required fee set forth in 37 CFR 1.17(i).

    All applications received in the USPTO are numbered in sequential order and the applicant will be informed of the application number and filing date by a filing receipt.

    The filing date of an application for patent is the date on which a specification (including at least one claim) and any drawings necessary to understand the subject matter sought to be patented are received in the USPTO; or the date on which the last part completing the application is received in the case of a previously incomplete or defective application.

    Filing, Search, and Examination Fees

    Patent applications are subject to the payment of a basic fee and additional fees that include search fees, examination fees, and issue fees. These fees are due at the time of filing the application. There are certain extra fees and surcharges that must be paid in particular situations according to the law. To get the most updated fees, follow the link www.uspto.gov.

  5. Prosecution phase.
  6. In this phase, each official Office Action issued by the USPTO generally results in the need for an Amendment to the application to be prepared. The prosecution stage typically is 18-24 months.

    Office Action

    The applicant is notified in writing of the examiner's decision by an Office "action". The reasons for any adverse action or any objection or requirement are stated in the Office action and such information or references are given as may be useful in aiding the applicant to judge the propriety of continuing the prosecution of his/her application.

    Applicant's Reply

    The applicant must request reconsideration in writing, and must distinctly and specifically point out the supposed errors in the examiner's Office action. The applicant must reply to every ground of objection and rejection in the prior Office action. The applicant's reply must appear throughout to be a bona fide attempt to advance the case to final action or allowance. The mere allegation that the examiner has erred will not be received as a proper reason for such reconsideration.

    In amending an application in reply to a rejection, the applicant must clearly point out why he/she thinks the amended claims are patentable in view of the state of the art disclosed by the prior references cited or the objections made. He/she must also show how the claims as amended avoid such references or objections. After reply by the applicant, the application will be reconsidered, and the applicant will be notified as to the status of the claims that is, whether the claims are rejected, or objected to, or whether the claims are allowed, in the same manner as after the first examination. The second Office action usually will be made final.

    Interviews with examiners may be arranged, but an interview does not remove the necessity of replying to Office actions within the required time.

  7. Issue process.
  8. If the prosecution stage is successful and the USPTO issue a Notice of Allowance, formal patent drawings must be prepared from the originally prepared informal drawings. The issue fee must be paid, as well. After the patent has issued the USPTO requires that maintenance fee to be paid at periodic periods. The maintenance fees increase over the life of the patent which is 20 years from the date when the application was filed. The issue process is typically 3-9 months depending upon the responsiveness of the USPTO.

    Allowance and Issue of Patent

    If, on examination of the application, or at a later stage during the reconsideration of the application, the patent application is found to be allowable, a Notice of Allowance and Fee(s) Due will be sent to the applicant, or to applicant's attorney or agent of record, if any, and a fee for issuing the patent and if applicable, for publishing the patent application publication (see 37 CFR 1.211-1.221), is due within three months from the date of the notice. If timely payment of the fee(s) is not made, the application will be regarded as abandoned. See the current fee schedule at www.uspto.gov.

    When the required fees are paid, the patent issues as soon as possible after the date of payment, dependent upon the volume of printing on hand. The patent grant then is delivered or mailed on the day of its grant, or as soon thereafter as possible, to the inventor's attorney or agent if there is one of record, otherwise directly to the inventor. On the date of the grant, the patent file becomes open to the public for applications not opened earlier by publication of the application.

    Final Rejection

    On the second or later consideration, the rejection or other action may be made final. The applicant's reply is then limited to appeal in the case of rejection of any claim and further amendment is restricted. Petition may be taken to the Director in the case of objections or requirements not involved in the rejection of any claim. Reply to a final rejection or action must include cancellation of, or appeal from the rejection of, each claim so rejected and, if any claim stands allowed, compliance with any requirement or objection as to form. In making such final rejection, the examiner repeats or states all grounds of rejection.

    Patent Term Extension and Adjustment

    The terms of certain patents may be subject to extension or adjustment under 35 U.S.C. 154(b). Such extension or adjustment results from certain specified types of delays which may occur while an application is pending before the Office.