Patent Procurement in the US

The protection that a government provides to inventors and research and development companies for their creations is a major driving force in the economy. Without this protection, creators would be reluctant to publish because they have no guarantees that they will benefit exclusively from its use. Intellectual property law in the US does precisely that, albeit for a limited period only, after which the invention becomes public property.

In order to claim protection under these laws, the inventor must go through the patent procurement process. However, as explained on the website of Gagnon, Peacock & Vereeke, P.C., there are some things that have to be considered prior to patent procurement, including making a patentability and freedom-to-operate search as well as the eligibility of an invention to obtain a patent. Once these are satisfied, a patent may then be applied for.

In the US, there are two phases to patent procurement: preparation and prosecution. Preparation pertains to the drafting of the patent application itself, which is in two major parts:

  • Specification
    • Summary in non-legal language
    • Detailed description of the invention and its applications
  • Claims – defines the scope of the invention including devices, processes, and compositions

In the application process, the specification must match the claims, otherwise the application becomes invalid. An inventor may choose to file a provisional application as opposed to a full utility application to establish a priority date, but must file a full utility application within a year of the provisional application. It is usually advisable to have an intellectual property lawyer prepare the draft and file the application as well as negotiate with the US Patent and Trademark Office (USPTO), also known as prosecution.

In general, patent procurement in the US takes about three years, although the time frame varies widely depending on each case. One factor may be the backlogs in the USPTO, which can significantly delay the process.

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