Everything You Need to Know About the Patent Appeal Process

If you get a Final Office Action declaring that your efforts to obtain a patent have been unsuccessful, you may file an appeal.

If you get a Final Office Action declaring that your efforts to obtain a patent have been unsuccessful, you may file an appeal. These matters are heard by the Patent Trial and Appeal Board (PTAB), which renders a final decision. In a split judgement issued on April 17, 2018, the Supreme Court determined that the PTAB must give a written conclusion on all claims challenged in a review petition, rather than simply those that the Court deemed worthy of review.

An Overview of the Procedure

While you should consider the possible profit and how you will sell your idea, they are not required.

To begin, you should perform a search for your invention’s uniqueness or previous art.

Your next choice is whether or not to file for a patent. If you answer yes, you must determine whether you want to apply for a design patent or a utility patent, and whether you want it to be provisional or nonprovisional.

You do not require a novelty search or a prototype if you decide to file for a provisional patent. In fact, you may apply as soon as you have an idea for a new invention. Having said that, it’s best to consult with your patent attorney on what you should and should not include in your application. He or she is not required to sign a confidentiality agreement in order to provide you with advice.

Obtaining a Provisional Patent (Step 1A)

The provisional patent method was established to provide innovators with a less costly route to patent pending status. Inventors are still not allowed to leave out critical elements, and patent pending status only relates to what is included in the provisional patent application.

The patent examiner does not analyse the application to determine if the invention should be awarded a patent during the provisional patent procedure. He or she merely checks the formalities and does not read the whole application.

When you submit a provisional patent application, you are patent pending for one year. However, it may take a month or two to acquire your formal filing receipt, which confirms the patent pending status and filing date. This marks the beginning of the examination procedure, often known as patent prosecution. Your application is given a serial number that will be used to identify it throughout the process when you need to engage with the US Patent and Trademark Office (USPTO).

If an application is inactive for longer than a year, it is terminated. A corresponding nonprovisional patent application may be submitted at any time until the end of the year. When you do this, you will not lose your patent pending status or priority date. If a nonprovisional application is never filed, the provisional application’s priority date is null and invalid.

The filing date is critical because it provides you with a priority date for determining what constitutes previous art against your application. If two inventors apply for a patent on the same invention, the application with the earlier filing date takes precedence.

The examiner’s goal with a provisional patent application is not to determine if the invention is patentable. The reviewer does not read the whole application at this point; instead, he or she merely verifies the formalities.

Obtaining a Nonprovisional Patent (Step 1B)

To get a patent pending status, you do not need to submit a provisional patent application. You may also file a nonprovisional patent application instead. If a provisional application has detailed information, you may pay a lower cost and upgrade it. Although this is less costly than submitting a provisional patent application, it is still not a cheap procedure. A new serial number is assigned after the nonprovisional application is filed.

Avoiding Costly Mistakes

The provisional patent application cannot be transformed into the nonprovisional application if it was badly prepared.

If you submit a provisional application that lacks all required information and subsequently attempt to file a nonprovisional application, the procedure will be more costly. Any patent you get as a result of a badly prepared application will need extra paperwork to satisfy the patent examiner.

If you sell your innovation before filing your provisional application, you may be denied the right to submit a more thorough nonprovisional application. To prevent expensive blunders like these, speak with a patent attorney to save time and money.