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What is the Process for Preparing and Filing a Patent Application?

A question entrepreneurs often ask is “what is the process for preparing and filing a patent application?”  In essence, the entrepreneurs want to know the initial steps to take to protect their new products from being copied.  The typical steps for preparing and filing a patent application include:

1. Contact a reputable patent attorney. 

It is important to contact a patent attorney to obtain assistance in drafting, filing, and prosecuting/negotiating the case before the U.S. Patent & Trademark Office (USPTO).  It is helpful to look at client reviews (e.g., Google reviews) of a patent attorney if they are available, to learn how the patent attorney worked with other entrepreneurs, and whether they were successful in obtaining a patent.

2. Complete an Invention Disclosure Form. 

A patent attorney typically forwards an Invention Disclosure Form to the inventor.  The Form has questions to obtain enough information for the attorney to understand the invention and how it works.  The patent attorney can use this information in order to perform a patent search, and to give an accurate quote for preparing and filing the patent application.

3. Perform a patent search. 

The patent search identifies the closest patents to the invention described in the Invention Disclosure Form.  These patents are utilized to determine whether the invention has a new structure or functionality compared to these patents.  The patent attorney can perform that patent search, or the inventor can perform the patent search if they are comfortable with the patent search engines.  In any case, the patent attorney should examine the closest patents to give an opinion on patentablity.

4. Sign a legal engagement agreement. 

The patent attorney will typically forward a legal engagement agreement to the inventor which describes the legal work that will be performed and the associated fees.  There are typically three fees:  an attorney fee, the USPTO fees, and a draftsman fee. The agreement will also indicate a retainer payment that must be paid to commence the legal work.

5. Draft the patent application.

After the patent attorney has received a sufficient amount of information to understand the invention, they will draft the patent application.  The patent application will include a written description of the invention, drawings illustrating the invention, and claims which define the scope of protection of the invention.

6. Review the patent application.

The patent attorney will forward the patent application to the inventor to examine it for technical accuracy.  The inventor should carefully read the patent application and provide any suggested modifications or feedback to the attorney.  It should be noted that after the patent application is filed, no new information can be added to the patent application.

7. Sign a declaration document and a power of attorney document. 

The patent attorney will forward the declaration document and the power of attorney document to the inventor to sign and date. These two documents are required by the USPTO and must be filed with the patent application.

8. File the patent application.

After receiving the signed documents and the inventor’s authorization to file the patent application, the patent attorney will electronically file the patent application and pay the associated USPTO fees.  The patent application will immediately be assigned a serial number.  The patent attorney will forward copies of all of the filed documents to the inventor for their records.

As one can see, there are several steps in the process for preparing and filing a patent application.  It is also important to utilize a patent attorney to get a well-drafted patent application, and ultimately an issued patent protecting the product.

If you have a product that you are interested in protecting, please contact us at 248-853-1422.

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