What are the steps for filing a patent application?

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The patent application process begins with the step of identifying the invention. An invention, for purposes of patent protection, must be new, useful, and non-obvious. Once the patentable invention is identified, it is important to isolate the inventive feature(s), often called the point of novelty of the invention. It is this point of novelty that will form the basis for the patent application. The patent application consists of a set of figures, a detailed description of the invention, and a set of patent claims that very precisely sets forth the scope and contours of the invention.

The normal process of preparing and filing a patent application includes a meeting with an attorney or registered patent agent to discuss the invention and to identify the points of novelty. Following this meeting, the attorney then may take several weeks to draft the patent application, after which the inventor reviews and edits the application for filing.

Once the patent application is filed in the United States Patent Office, approximately 12-24 months will pass, during which time the Examiner at the Patent Office will review the application and search other patents and related publications to determine whether the invention is novel. After the search and examination processes are complete, the Patent Examiner will return comments to the inventor’s attorney in the form of an Office Action, in which the attorney is usually requested to provide arguments distinguishing the filed patent claims from prior patents and publications which were identified during the search.

Contact John Ferrell at JFerrell@carrferrell.com if he can further assist you. 

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About the Author

John Ferrell is a founding partner of Carr & Ferrell LLP, one of Silicon Valley's foremost technology law firms, and specializes in patent and intellectual property law matters. He is the Chair of the firm's Intellectual Property Practice Group.