BioPatent Communications

Patent Protection

by Gary L. Baker, Patent Attorney

STEPS TO OBTAINING PATENTS^*

I. Drafting a Patent

 a. Search journals internet, US patents, International published patents etc. to find the closest similar inventions and suggest probably scope of novelty.
 b. Draft claims (a unique skill of patent professionals) tailored to be as big as possible without claiming old art.
 c. Draft application to support claims (you can only claim what is disclosed in the application).
 d. Prepare any Figures< necessary to the understanding of the claims (near mandatory for system, device, and mechanical claims).

II.  Provisional Patent

 a. Not searched or examined by the Patent Office.
 b. Low filing fee.
 c. 12 months to file formal application(s).

III.  U.S. Utility Patent

 a. Must be filed within 1 year of the Provisional filing date, or can be filed instead of a Provisional application.
 b. Utility applications include: Inventors list, Summary of the Invention, Figures, Detailed Description, Claims.
 c. Other documents filed: Transmittal, Assignments, Declarations of Inventors, Fee Transmittal.
 d. Application text must support the claims.
 e. Figures necessary to understand the claims.
 f. Claims filed will be searched and examined.
 g. Prosecution of the application: Office Actions, Applicant Response, Appeals.
 h. Application is published 18 months from first filing date.
 i. Issue of a Patent: Fees, Maintenance.

IV.  Patent Cooperation Treaty (PCT - foreign filing) Application

 a. File PCT application within 1 year of the Provisional filing date.
 b. File with or instead of the U.S. Utility application.
 c. Application can include same text as U.S. application; PCT Request forms, Figures.
 d. Demand for early prosecution and preliminary examination can be made.
 e. International Search Report (IPR) identifies relevant prior art references.
 f. Application is published 18 months from first filing date.
 g. Applicant must choose for National Phase countries prosecution about 30 months from first filing date.

V.  National Phase Applications

 a. Filing in Patent Offices of selected countries.
 b. Necessary translations.
 c. Filing fees for each selected country.
 d. Hire licensed patent prosecution professional in each country.

* This Web Page is intended for general education.  This page can not be considered legal advice.  Please contact your Patent Professiona before attempting to file or prosecute a patent.