What Are the 10 Most Important Questions to Ask Yourself before Filing at USPTO

Obtaining a patent on your invention is never a piece of cake – it demands involvement and investment right from the pre-stages of tapping an idea into a tangible form, that can be defined under the purview of patentability, and further to timely deployment of crucial strategy, time and patience to acquire it. However, hard works often pays off. But, you can easily segregate the hard from work provided you pay attention to the following 10 crucial questions that you must ask yourself when considering filing a patent application with the US patent office (USPTO). Let’s begin!

  1. Should I file?

Though it is not compulsory to conduct a prior art search as per the USPTO norms, the benefits of an effective prior-art search during the filing stages increases the probability of getting the patent granted. Moreover, it helps in constructing the scope of claims depending on the closest prior art. Importantly, in case a knock-out prior-art is available, you can choose to forego filing the application and save yourself from wasted time,labor and money, and plan accordingly to circumvent possible cases of infringement if you have already decided to bring your invention to the market.

  1. What kind of protection do I need?

After you have decided to file an application, the next important stage is to determine what type of protection you need. Every type of intellectual property right, for example utility, design, plant, trademark, geographical indication (GI) etc, has something to offer. Through a utility patent you can protect an idea in relation to a tangible product or process, but this is not for life and it will definitely expire after a certain timeframe. Also, if you are looking to protect only the ornamental aspect of your invention and not the product or process, you can pursue a design patent/registration. Depending upon the time, cost and type of protection desired, the appropriate application needs to be made.

  1. Where should I file?

The patent offices across the world are divided into three categories – a national office in an individual country — for example the USPTO in the USA, a regional office for a group of countries located in a specific region like European/Eurasian patent office for Europe/Eurasia, and an International office like WIPO (World Intellectual Property Organization). Most of them work in tandem through bilateral agreements or international collaborations, like the Paris Convention and the  TRIPS Agreement to name a few, to create a conducive and co-operative intellectual environment that transcends boundaries.

The rationale behind filing at a relevant office depends upon several factors, viz. scope of patent protection, timeframe/speed necessary for making strategic decisions, cost and others. If you believe your invention has an international market potential but you need time for further analysis, the best way to do it is to take the PCT route because along with its international reach it also buys you ample time (30 months) to make a decision, cuts down on expenditures and provides ease of filing at any member’s patent office.

However, one must understand that there is nothing such as an “international patent”, and a patent protection is always limited to a country’s jurisdiction in which the patent is ultimately filed. So, even if you are taking the international route of filing you should choose your options (like ISA & IPEA) rationally keeping in mind the designated countries you will eventually get into.

  1. Which type of application should I file?

After making the initial decisions of choosing between types of IP and filing offices, the next crucial step is to choose the type of patent application. At this point, you should know the importance of a “priority date” which is the sine qua non of a patent application. Priority date is the effective date of the filing of a first parent patent application to which your application claims priority, and this date is used to establish novelty and non-obviousness of your invention.

There are different ways to establish an effective filing date. The simplest way is to create a “family” of patent applications, either by filing domestic applications like continuation, continuation-in-part or divisional applications, provided they meet the statutory requirements, or by the virtue of an application filed at foreign offices. The basic restriction of claiming a priority is the time and status of the parent application, for instance claiming priority as a continuation application is subject to the pendency of the parent application, while for foreign and provisional applications it is 12 months from the filing date of the parent application from which priority is claimed. Also, in certain specific cases where your invention is just an improvement to your earlier filed application pending at the PTO office, you should definitely take the step of filing a continuation, or continuation-in-part (CIP) application to avoid double-patenting rejection.

Besides, there is an option of filing a provisional application in US patent office to establish an earliest filing date for your invention. In this case, you get an additional time of 12 months to file a subsequent non-provisional application. This is a crucial strategy to deploy if you are still in the phase of deciding the metes and bounds of your patent application or you are almost down to the wire of your project. However, you should keep in mind that a provisional application will not by itself mature into a non-provisional application and it will terminate if you are unable to file a non-provisional within the 12 months window, with no extension of time granted. Also, one should know that the non-provisional will get to claim only those aspects that are described in the provisional’s specification. So, one should not be negligent while drafting a provisional application.

  1. Should I file by my own?

A patent is an amalgam of science and law, where technology defines the crux of the patent application while the legal aspects define the boundaries of your application and helps in sailing it through the prosecution stage. Rightly so, filing also requires a synergy of techno-legal expertise. Thus, to make the most out of your invention it is strategically pivotal to utilize the service of a patent attorney/agent as it will improve the likelihood of a successful prosecution. However, an inventor can choose to file and prosecute his/her own application.

  1. Which mode of filing should I choose?

There are two ways to file an application, i.e. electronic filing through EFS; and non-electronic filing by post or through hand-delivery to the PTO office at Virginia (USPTO). The PTO encourages applicants to file through EFS, a web portal to directly file your application, and thus provides the applicant reduced costs…up to $400…along with other benefits like paying fees directly through the portal, notification about status of the application, access to private PAIR information about the application, direct fling of PCT-SAFE application, which is a similar PCT portal, and so on. One should always opt for an EFS mode of filing, especially when you are filing on your own.

  1. What are the documents I need when filing?

Every patent application has a basic set of documents that are required at the time of filing. For instance, for provisional as well as non-provisional applications an applicant must submit an oath or declaration to inventorship signed individually by all the inventors, specification of the inventions and a basic filing fee. Further, for a non-provisional application, an applicant should submit an Application Data Sheet (ADS) which contains important information like inventors, priority data, applicant/assignee, attorney/agent detail, options like choosing not to publish before notice of allowance etc. One should be very careful in filling in the ADS. Moreover, if you are claiming fee relief as a Micro or small entity, such requests should be made through submission of proper documents. Additionally, the Specification for a non-provisional must contain at least one claim.

The PTO also requires you to submit all the relevant information and prior art detail that you may have uncovered at the time of filing and even later during the prosecution stage by filing an Information Disclosure Statement (IDS).

  1. What is the information that I need to disclose?

It is legally, not morally, binding for the applicant to disclose all information relevant to the filed application for his/her invention that (s)he may be aware of and which could affect the examiner’s way of deciding and prosecuting the application. This is described as a Duty of Candor, which if not followed and/or otherwise proved post grant may lead to termination of the granted patent. So, you should take special care to disclose all information which may be any document related with research, prior art references that you may have used to come to your invention, products that may have been the motivation of your research, or the like. You are required to file IDS for such information without incurring extra costs provided you do it at the time of your filing.

  1. What are the options available to me at the USPTO for expediting the process?

If you are in a rush to cash in the business opportunity that your invention may achieve, or need to have an upper hand in the IP market amongst your competitors or reasons like health issues of the inventor, or the like, the USPTO provides you with a plethora of opportunities to expedite prosecution of your patent and gives a final say within 12 months of such requests. One of the easiest and most sought after options is the TrackOne request, which is the fast tracking of your application by paying an additional cost. However, other economical options are also available like AE (accelerated examination) and PPH (Patent Prosecution Highway) program that you may opt for provided you meet the statutory requirements. Besides, the PTO also helps is fast tracking prosecution by providing options to the applicant for an inter-parte communication with the examiner through its Post first office action interview program. Such options should be duly exercised as it increases the chance of creating an understanding between the examiner and the applicant.

  1. How can I reduce costs?

After all the fundamentals, one should also realize the cost incurred in obtaining a patent is on a high side and that most patents have a zero or negative economical value. Thus, it is extremely important to pay attention at the time of filing and also when drafting a reply to the examiner’s rejections. Though there is no hard and fast rule to save costs incurred due to multiple rejections, a few steps can save your cost dramatically. The PTO provides a complete guideline for every document required at the time of filing along with the formatting and statutory requirements. Also, there is a time frame provided for replying to an Office Action within which there is no cost added to an application. Strategic decisions, like filing an RCE (request for continued examination), inter-parte review with the examiner, can also help in minimizing total cost. One should always plan to avoid amendment to the specifications later as they also add up to cost value.

Fee reductions by virtue of reducing the application size (number of claims, sheets etc.), avoiding preliminary amendment by drafting properly, opting for electronic filing option, avoiding surcharge/delay and claiming micro/small entity status, if so, may help in reducing the overall filing cost.

Thus, if you pay attentions to these 10 important decisions, you can easily troubleshoot the complications involved in patent filing. After your filing, the Office for Patent Application Processing (OPAP), which is the regulating authority that supervises the filing process, sees that the application meets the statutory guidelines. If there is any issue with the application you may be asked to submit an amendment within a shortened statutory period (SSP) of one or two months in order to make it prosecution-ready. After all issues are resolved, the application is moved to the concerned authority. The time line for first Office action after filing is 14 months (after which a delay addition is awarded to the applicant) and hence begins the prosecution stage.

The effectiveness of the patent application is a sum total of crucial decisions taken during the filing stage and later with properly applied techno-legal expertise and following procedural guidelines and options provided by the PTO to sail through the prosecution stage. Thus, it is important to pay attention to the mentioned strategies and requisites to make the most of your application and avoid unnecessary hiccups.