| U.S. PATENT APPLICATION PROCESS
Step 1: Firm Brochure and
Medlen & Carroll, LLP will be happy to send you a
copy of our firm brochure, which includes biographies of our
team of attorneys and our fee schedule. Please contact
us with your name and address and we will mail it
Step 2: Meeting with an attorney
to discuss invention, patent application process, and fee
At Medlen & Carroll, LLP, we offer alternative billing
options including (1) reasonable hourly rates; (2) project/flat-fee
billing; and/or (3) not-to-exceed estimates on more individual
projects (See Medlen & Carroll, LLP Fee Schedule). We
will also conduct a Conflicts Check to see if representing
you will conflict with the representation of any of our existing
clients. If there are no conflicts and you decide to retain
Medlen & Carroll, LLP, we will require that a retainer
be placed in a trust account. This money will be used toward
the total cost of the patent services we will provide.
Step 3: Patentability Search
This step is optional (it is not required by the Patent Office).
However, there are a number of reasons why conducting a patentability
search is a good idea. The most important reason is to find
out (before you spend a lot of time and money on the development
and marketing of your product, not to mention the cost of
filing and prosecuting a patent application) whether your
invention is likely to qualify for a patent. Additionally,
a patentability search will help uncover prior-art patents
and literature on inventions similar to yours, which will
provide you with potentially valuable commercial information,
provide useful background information to assist in the preparation
of your own patent application, and in some cases assist you
in determining if your invention is likely to infringe any
in-force U.S. patents. After your receive the results of your
patentability search and opinion, you will be in a better
position to decide whether or not to file a patent application.
Step 4: Preparation and Filing
of Patent Application
There are three types of patents -- (1) Utility Patents protect
anything that can be made by humans that functions in a unique
manner to produce a useful result; (2) Design Patents protect
the visible shape or design of an object (i.e., ornamental
features); and, (3) Plant Patents which provide protection
for certain types of plants. For purposes of this estimate,
we will assume that you are interested in filing a utility
patent, which is the most common type. Utility Patent applications
typically include a specification and claims, as well as an
abstract, drawings and the inventor's declaration. If you
qualify as a "small entity" -- an independent inventor
who hasn't assigned or licensed their invention and is under
no obligation to assign or license the invention to a large,
for- profit business (over 500 employees); OR a small business
(under 500 employees); OR a nonprofit organization -- you
receive a 50% discount on many of the filing fees charged
by the U.S. Patent & Trademark Office (USPTO) (See
Step 5: Information Disclosure
This is a document listing all references cited in your patent
application and any other prior art or any circumstances known
to you that may potentially affect the novelty or obviousness
of your invention. This document can be filed with your Patent
Application but is most often submitted within three months
of the application's filing date. There is no Patent Office
Filing Fee associated with this document if it is filed within
the three-month period or before receipt of the First Office
Action (described in further detail in Step 7). Otherwise,
the "late fee" for filing an IDS will apply.
Step 6: Notice to File Missing
When your application is received by the U.S. Patent and Trademark
Office (USPTO), their clerical personnel will deposit your
check, put all of your papers in a folder, and assign a filing
date and serial number to your application. The postcard is
stamped with this information and returned. If you file your
application without a signed Declaration, you will then be
sent a Notice to File Missing Parts. "Missing Parts"
is a reference to signed formal documents, including the Declaration
of Inventor(s), Assignment (if any), Small Entity Declaration
(if any), and Power of Attorney. A response to the Notice
to File Missing Parts is due one month after the mailing date
of the Notice (otherwise, a late fee will be charged by the
Patent Office (See USPTO
Fee Schedule). Sometime during this stage of the patent
process, the USPTO will assign your application to a Patent
Examiner for review.
Step 6a: Notice to Comply
with Sequence Rules
If your patent application includes nucleotide or amino acid
sequence information, you are required to submit a "Sequence
Listing." A Sequence Listing discloses relevant information
about each sequence referred to and/or being claimed in your
patent application and must be presented in paper form as
well as on a computer-readable diskette. It is prepared using
a software program provided by the USPTO known as "Patentin."
The Sequence Listing can be submitted contemporaneously with
the Patent Application, but in some instances will not be
provided until after the "Notice to Comply with Sequence
Rules" is received. This Notice is typically included
as a part of the Notice to File Missing Parts (See
Step 6 above).
Step 7: Office Action and
Response to Office Action (Amendment)
About six months to two years after the filing date of your
application, you will receive a communication from your Patent
Examiner known as an "Office Action." In this document,
the Examiner describes what is wrong with your application
and why it cannot be allowed (rarely is an application allowed
in the first Office Action). The Examiner may also object
to one or more aspects of your specification. Typically, Examiners
reject some or all of your claims because of imprecise language
or reject some or all of your claims because of unpatentability
over the prior art. To overcome these objections and/or rejections,
an "Office Action Response/Amendment" will be prepared.
The Office Action Response focuses on claim changes and arguments
to convince the Examiner that the invention is patentable.
The Amendment will make changes; however, once an application
has been filed, substantive changes to the specification and
drawings are prohibited. Thus changes to the specification
and drawings are typically made to correct typographical errors.
The time allowed for preparation and filing of a Response/Amendment
is 6 months after the date of the Office Action. Late Fees
will be charged by the Patent Office for all Responses/Amendments
filed after the first 3-month deadline (See USPTO Fee Schedule).
In some cases, you will receive a Second Office Action by
your Examiner (about 2 to 6 months after you file your first
amendment) before the application is finally Allowed (see
Step 8a) or Rejected (see Step 8b). Some findings by the Examiner
in the Office Action(s) may prompt you to file a "Divisional
Application" or "Continuation Application"
(See Extension Applications below).
Step 8a: Notice of Allowance
If the Examiner is satisfied with the merits of your application
and you have submitted everything required by the Patent Office,
you will be sent a Notice of Allowance and Issue Fee Due,
indicating that all of your claims are allowed. The Patent
Office will make a request at this time that you pay an "issue
fee" (See USPTO Fee Schedule) and submit "formal
drawings" within 3 months if formal drawings have not
already been submitted. Several months after the issue fee
is paid, your patent will issue and you will receive a formal
Step 8b: Final Rejection
If your application receives a final rejection by the Examiner,
you will have the option to (1) File an Amendment After Final
Rejection (although these are discretionary - the Examiner
is not required to enter them into the record); (2) Appeal;
(3) File a Continuation Application; and/or (4) Abandon Your
Amendment After Final Rejection
After a final rejection, you may submit an "Amendment
After Final Rejection" narrowing your claims or submitting
other claims, provided you raise no new issues. If your Examiner
agrees that the amendment narrows or changes the claims sufficiently
to place the case in condition for allowance, he/she will
authorize its entry and allow the case (See Step 8a above).
Otherwise, your Examiner will send you an "Advisory Action"
reiterating the reasons for rejection (and you will then have
the option to appeal). Even if your Examiner will not enter
the amendment because it raises new issues, the Advisory Action
will state whether the amendment will be entered for purposes
If you don't see any further way to improve the claims, and
if you believe the examiner's position is wrong, you can file
an appeal brief with the BAPI (Board of Appeals and Patent
Interferences). Medlen & Carroll, LLP has found that appeals
are sometimes necessary to initiate a more serious dialogue
with the Examiner. To effectively do this with an appeal,
however, one needs to have narrowed the issues. Please contact
us if you are considering an appeal. If the Board upholds
your appeal, your application will move to allowance (See
Step 8a above). If the Board upholds the Examiner's rejection
and you still believe your invention is patentable, you can
take a further appeal within 60 days of the date of the BAPI's
decision to the Court of Appeals for the Federal Circuit (CAFC).
If the CAFC upholds the USPTO's decision, you can then request
the U.S. Supreme Court to hear your case (although the grant
of this is rare).
If you want to continue the examination of your patent application,
you can file a Continuation Application (with the option of
filing it as a Continued Prosecution Application) (see Extension
Applications below). Filing a Continuation Application then
involves writing new claims, paying a new filing fee, and
sending documents identifying the application as a Continuation.
A continuation application receives the filing date of your
original patent application for purposes of overcoming prior
art, but receives its own serial number and filing date for
USPTO administrative purposes (unless filed as a Continued
Prosecution Application). This option starts the whole patent
process over again.
Abandon Your Application
If all claims of your application are rejected in the final
Office Action and you agree with your Examiner that there
is nothing patentable in your application, or if you simply
do not wish to further pursue patent protection for your invention,
you can allow the application to become abandoned (your application
will go abandoned automatically if you do not file a timely
reply by way of one of the options listed above to the Final
Office Action). Keep in mind that once an application has
gone abandoned, it can be difficult to re-file the application.
In some cases, however, if you allow the application to go
abandoned you will be able to resurrect the application. In
any event, we invite you to contact us before making the drastic
decision to abandon.
All of these applications must be filed before issuance
or abandonment of the parent application.
If you want to continue the Examination of your application
or a chance to try a new and different set of claims after
a final Office Action rejecting your application, you may
file a continuation application. A Continuation is an additional
application for the same invention claimed in your original
patent application (typically containing the exact same specification
as the original application but with new claims) and filed
before your original application issues or becomes abandoned.
A continuation application receives the filing date of your
original patent application for purposes of overcoming prior
art and for patent term determination, but receives its own
serial number and filing date for USPTO administrative purposes
(unless filed as a Continued Prosecution Application).
You may be prompted by an Examiner in an Office Action to
file a Divisional Patent Application if it's found that there
is more than one distinct invention claimed in your original
patent application. This type of finding is referred to as
a "restriction requirement" because you are restricted
to claiming only one invention per patent application. If
you receive a restriction requirement in which the Examiner
indicates that there are claims directed toward 2 inventions,
you must "elect" the claims you wish to pursue in
this application and cancel the remaining claims. In the Divisional
Application you pursue claims that were directed to the 2nd
invention and cancelled. A divisional application receives
the filing date of your original application for purposes
of overcoming prior art and for patent term determination,
but receives its own serial number and filing date for USPTO
If you've improved your basic invention in some material way
while your original patent application is still pending and
you want to obtain specific claims to the improvement, you
may file a continuation-in-part (CIP) application. A CIP application
receives the filing date of your original application for
purposes of overcoming prior art related to material disclosed
in your original application, but receives its own serial
number and filing date for USPTO administrative purposes.
Since GATT was enacted, Medlen & Carroll, LLP cautions
that the benefit of designating an application a "CIP"
is of greatly diminished value.
If you've received an original patent, but you want to revise
the claims of the patent or correct significant errors in
the specification for some valid reason, you should file a
reissue application. A reissue patent takes the place of your
original patent. There are specific rules that apply to these
applications and Medlen & Carroll, LLP recommends detailed
discussion before making such a move. You will need to discuss
this option with your attorney, if you are interested in obtaining
a Reissue Patent.
*A Continuation Application
may be filed as a Continued Prosecution Application
(CPA), which option cuts down on paper work and ensures faster
turnaround time in the receipt of your First Office Action.
This option, however, also automatically ABANDONS your original
patent application as of the filing date of the CPA.
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obtaining legal advice. Neither reading the information provided
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