The patent application preparation and prosecution procedure involves multiple steps and documents. The procedure includes preparation of the application and filing it with the United States Patent and Trademark Office (USPT0); responding to official actions from the USPTO; and effecting issuance and maintenance of the patent.

Preparation and Filing

The patent attorney prepares the application from the applicant's submission by first writing the claims which define the environment of the invention, the problem to be solved by the invention, and the metes and bounds of the invention, much like a real property legal description from which patent claims structure is derived. The attorney then writes the specification for the application from the claims including the following required sections: cross references to related applications; background of the invention; field of the invention; description of the prior art; summary of the invention; objects of the invention; brief description of the drawings; description of the preferred embodiment; and the abstract of the invention. The specification must include a definition and explanation of all the terms used in the claims and a detailed description of the drawings referenced by numbers.

The attorney must also supervise preparation of the drawings, prepare the letter of transmittal to the USPT0, the inventor's declaration, an information disclosure statement if appropriate, an assignment and an assignment transmittal letter if the invention is to be assigned. The application must be executed by the inventor and filed in the USPTO by United States Express Mail if the mailing date is to be the filing date.

Prosecution

An Official Action will be issued by a Patent Office examiner and sent to the applicant's attorney, usually between nine months and a year and a half after filing, citing the results of the examiner's prior art search. The claims will almost always be rejected initially based on one or more patents located by the examiner in the search. A copy of the Official Action and the cited prior art references will be forwarded by the attorney to the client with a preliminary evaluation of the action.

It will be necessary to prepare a response to the Official Action by possibly amending the claims and by distinguishing the invention from the cited prior art references. See cost & fees page for an explanation of the expense. The applicant will be asked to help in preparing the arguments for overcoming the examiner's rejection of the claims. The response to the Official Action must be filed within three months of its issuance. Extensions of time may be obtained in one month increments up to three months by the payment of increasing extension of time fees. See costs & fees page for these costs.

Issuance and Maintenance

If the Examiner's rejections are deemed to be overcome by the amendments and arguments contained in the applicant's response to the Official Action, the case will be passed to issue. If not, the applicant must again respond. After a notice of allowance is received, the issue fee must be paid into the USPT0 within three months or the application will become abandoned. See costs & fees page for an explanation of those fees.

After the patent issues, periodic maintenance fees must be paid based on irregular patent issue date anniversaries to keep the patent alive. See costs & fees page for those costs.

CAVEAT-WARNING-BAR DATES

DO NOT RELY ON THE FOLLOWING EXPLANATIONS OF VERY COMPLICATED LAW FOR TIMING THE FILING OF A PATENT APPLICATION. READ IT AS A WARNING ONLY.

In order to prevent a patent from being ruled invalid during infringement litigation, it is essential that the United States patent application be filed before one (1) year has elapsed after any one of the following events has occurred:
1) public use of the invention;
2) an offer for sale of the invention; or
3) disclosure of the invention in a printed publication of general circulation.

Bruce & McCoy cannot meet a bar date created by one of these events unless they have at least 60 days for preparation and filing of the application before one year has elapsed after any one of those events occurs. If an applicant has such a bar date pending, it must be disclosed to Bruce & McCoy in writing at least concurrent with the request for a cost estimate for patent preparation.

IMPORTANT NOTICE RE FOREIGN PATENT APPLICATIONS

The above described one (1) year grace period creates a bar date one year after the occurrence of one of the three above identified events. However, the grace period which establishes the bar date for filing a U.S. patent application is not available to foreign patents. See the CAVEAT notice under foreign patents. If certain foreign patent applications are to be timely filed based on the U.S. patent application priority filing date, filing of the U.S. patent application must occur before either of the last two of the three above identified events occurs.