What Happens When You File a Patent Application

Hi, I'm Rich Beem. I'm a patent attorney and I'd like to talk with you about what happens when a patent application is filed. Well, first of all, if you have us file the patent application for you, we handle all of that. We handle it electronically. We're set up specifically for electronic filing with the patent office. And we get an instantaneous response and a filing receipt that says they got it, and we get a serial number and we know what to file, which includes the application itself and the filing fee.

Now if you choose to, and it is permitted for you to file your own patent application, you can file it by mail, and preferably by express mail, which makes it count as the same day that you put it in the post office express mail. That counts as the filing date, and you want to get as early a filing date as possible.

What happens next? Well, after the filing receipt it is good, and preferred and required to tell the patent office about all the prior art, that's everything that came before your invention, the closest things that you know of. Those have to be disclosed to the patent office. And as patent attorneys we disclose those in something called an information disclosure statement. In art we call it the IDS. And we file that for you.

Now, that application sits there in the patent office for some time. It might be a year or more before the examiner picks it up. And that's one of the reasons that we like to make sure that we put all the details in the patent application to begin with, because those details cannot be added later and they might be important. They might be negotiating points for us to talk about with the examiner on why the examiner should allow your patent application to issue.

We also monitor the progress of the patent application in what's called PAIR. That's the Patent Application Information Retrieval System. There's a public PAIR and people aren't going to be able to see anything in public PAIR about your application for 18 months. But we follow it through what's called private PAIR the private Patent Application Information Retrieval System.

Now, after that year or so goes by, the examiner will issue an office action, and most of the time in the first office action, they reject the claims. Do not be discouraged by that. That is a normal part of the process. It's almost like a knee jerk reaction that examiners have. And we interpret it this way. The examiner is saying, "Will you please explain to us why this invention is important? Why you really have something new hear. What's new about it? Why should this patent application issue?

Then later there's a second office action. But one thing that we like to do before the process goes any further is we pick up the phone and we call the examiner. We conduct what's called an interview. And this is partly informal, but it's mostly formal. We often schedule it ahead of time. But when we first call the examiner, we're prepared. We have the serial number in front of us and we know what it is that we want to talk about. And we negotiate with the examiner about why your patent application should issue.

Then what we hope to get, at least by the second office action, is a notice of allowance and issue fee due. That is good news. When the patent office invites us to pay the issue fee and we pay that issue fee, it means that you're going to get your patent.

Why do I mention this to you? I want you to know what the process is. The only sure way not to get a patent is to not file a patent application. But when you file a patent application, you want to stick with the process until the patent issues. Don't be discouraged if there are setbacks along the way. That's a normal part of the process. And that's what we do every day. We prepare and file patent applications. We enforce patent applications. We litigate patent cases. And if you need a patent attorney, pick up the phone and call me. I'm at 312-201-0011. Thank you for joining me.