Professor Demchick's Blackboard
Dr. Demchick has been a college and university faculty member for many years. On these Blackboard Pages he does a little teaching. These pages are intended as general, introductory information. Compromises were made between including details in these pages and keeping the pages readable for a general audience. These pages are not intended as legal or other professional advice.
HOW LONG WILL IT TAKE TO GET A PATENT?
The short answer is "a long time." However, that is not necessarily a big problem; as explained below, the invention can be patent pending much more quickly. This will give you a sense for typical timing for a typical application. There are a very large number of variations on the path an application can follow. This is not intended to give every possibility.
Before looking at details, here is a typical timeline for a successful application:
Obviously, the time it takes to come up with an idea and turn that idea into an invention varies from invention-to-invention and from inventor-to-inventor. Some inventions happen in a flash. The inventor may find a problem, and almost immediately see the solution with all the needed details. Other inventions require decades of hard work.
Once the invention is fully developed (i.e., the inventor has figured out all the details needed to make the invention), and the decision is made to seriously consider patent protection, most inventors engage the services of a patent practitioner. Caution: Be sure that you are dealing with a Registered Patent Agent or a Registered Patent Attorney. You should be very cautious about dealing with invention promotion firms. Once you have found a patent professional with whom you are comfortable, usually an engagement letter is signed by you and the patent practitioner which spells out things like the services to be provided.
After you engage the services of a patent agent and supply that agent with the details of your invention, the next step is usually a patentability search. It usually takes a few weeks before you receive a report about the search and a written patentability opinion. The time for this step varies quite a bit. It is a good idea to ask your agent how long it is likely to take. I often send out reports and opinion within a week or two of being engaged.
After you have had a chance to read over the report and discuss it with your patent agent, you need to decide if you want to proceed with the preparation of the application. From the time that a client requests the preparation of an application, many patent agents take a couple of months to have a draft of the application ready for the client's review. I usually have such a draft to the client within a couple of weeks, although it varies with the complexity of the subject matter and the complexity of drawings.
If the inventor has no corrections or additions, they sign the declaration (for the patent office) and return the declaration to the patent agent. If there are corrections or additions, the patent agent makes those and sends the revised document to the client. The declaration is signed only once the client is completely satisfied with the application.
Once the declaration is received by the patent agent, the application is usually filed rather quickly. In my practice, I almost always get a patent office filing date that is the same day that I receive the declaration.
Then the long wait begins. During that time, we get back things like filing receipts. However, usually the first "office action on the merits" takes approximately one year. That time varies widely, and depends largely on which group of technical specialists ends up dealing with the application. Some groups are more backlogged than others. There are currently some groups backed up about three years (that is the exception, not the rule).
There are things we do while waiting for the first office action. In consultation with the applicant, I prepare and file one or more Information Disclose Statements for the client. The invention is "patent pending" from the filing of the patent application until the application is abandoned or the patent issued. The inventor often spends this "waiting time" working on getting the invention manufactured, interesting investors, and the like.
Typically, the first office action is a non-final rejection. It states the reason the patent office does not think the applicant is entitled to a patent. The patent office usually allows the applicant three months (and up to six months if you are willing to pay an extra fee) to reply to that office action. I usually file replies to office actions within a couple of weeks (assuming that the client is able to review promptly what I draft), although that varies with the complexity of the issues raised.
The next time we hear from the patent office is usually a "final rejection" or a Notice of Allowance. After a notice of allowance is received, the patent is usually issued within approximately three months (if we promptly pay the issue fee). By the way, a "final rejection" is not really final. We can file a Request for Continued Examination allowing us to "go another round" with the examiner, or we can file an appeal.
So typically, from the time a client engages me, it takes a couple of years before a patent is actually issued.
Here are some ways I push the process along:
I try to keep things moving on our end. Obviously, the patent office cannot put us in line to wait our turn until we do our part (e.g. file the application, file a reply to an office action). I spend the time to carefully craft filings, but I do not procrastinate. I limit the number of cases I take on to allow me to give each matter the attention in deserves, but not have a large backlog. I file a Petition to Make Special for an application, when appropriate. There are a number of grounds on which one can file such a petition (e.g., if the invention promotes energy efficiency or if the inventor is over 65 years old). Once such a petition is approved, the examination is accelerated. I use Express Mail, FAX and electronic filing to get things to the United States Patent and Trademark Office quickly. I use professional judgment about when to contact a patent examiner to check on the reason for any unexpected delay. I have a secure electronic means to view patent office records for applications for which I represent the applicant (discussed below). This allows me to start working on a reply to an office action before the mail gets the office action to me. Even with all of that, patience is needed.
A bit of good news is that the amount of the client's time used on the application process is usually not large. I try to keep my clients well informed without wasting their time. I take care of the time consuming parts of the application process as much as I can.
A NIGHTMARE (AND HOW TO AVOID IT): The United States Patent and Trademark Office receives and sends huge numbers of documents. If you send a document and it doesn’t end up in your file, or if you never receive a notice that the patent office sent (and, therefore, you do not reply), horrible things can happen. Because of the great variability in how long it takes the patent office to do each step, it is hard to even know when something went wrong. That is why I monitor each application I have pending very closely. One way I do that is the use of Private PAIR. Private PAIR allows me to view patent office records for application for which I represent the applicant. The electronic connection between me and the patent office is encrypted to keep it secure. If anything does go astray, I know about it quickly, allowing it to be corrected.
