What’s happen before and after filing Patent - Schedule before and after patent filing to PTO -
You should know what is going on, an invention before and after the filing to PTO (Patent and Trademark Office).
The law describes the details of the process but let me simplify the process as much as I can.
STEP A: BEFORE THE PATENT FILING
Before the patent filing, we need to finish all of documentations before a deadline of the Paris convention or PCT priority date (STEP A).
We cannot skip or postpone the priority date if the applicant has filed at another country already.
STEP B: FILING PATENT
When filing a patent, you will be required to submit the previous application documents (STEP B).
If you claim the priority right for the contents already applied in a foreign country, you must also submit the information of the priority right.
STEP C: PUBLICATION
After a certain period has passed from the application, the application will be published (STEP C).
Currently, in most countries, application documents are published one and a half years after application.
In some countries, it will be published without waiting one and a half years from the date of application.
Like the United States, some other countries have a system that does not disclose an invention, so that if the applicants request that they should not be disclosed so early, they will be kept secret.
STEP D: AMENDMENT ORDER and STEP E: REFUSAL
If the application documents are incomplete, the PTO/DIP formalities examination section will issue an amendment order (STEP D).
If you do not make amendments according to the order correctly, the application itself will be rejected after the notifications (STEP E).
STEP F: FORMALITY CHECK
In addition to application documents, formal examination includes examination of conformity with formal requirements regarding procedures, qualifications of applicants, payment of fees, etc. (STEP F).
If you do not eliminate these deficiencies, the application date will not be recognized, so be careful when checking the documents at the time of application.
STEP G: REQUEST
In several countries, if you do not request with the Fee for the examination, the examination will not start at all (STEP G).
If the request for examination is not made within a certain period, the application itself will be withdrawn.
In the United States, you will be charged when you apply.
In Japan, you will be made a request within 3 years from the application.
Please note that the fee for the request for examination is usually very expensive.
STEP H: SUBSTANTIVE EXAMINATION
The substantive examination makes start the substantive examination (STEP H).
In the substantive examination, examiners check patentability of your invention.
What is patentability?
That is, the invention is not new (Lack of Novelty) or considered by anyone (Obviousness).
And also, they will check other requirements such as unclear the claim limitations.
STEP I: FIRST REJECTION and STEP J: FINAL REJECTION
Then, if any deficiency is found in the substantive examination, the examiners issue 1st Office Action (STEP I).
If you do not file Remarks and Amendment according to Office Action, or the examiner do not agree with your amendment, Final Office Action will be issued (STEP J).
With Final Office Action, the range that can be modified is limited.
Especially, Final Office Action by USPTO does not allow you to modify very limitedly.
Therefore, we have to change the content so that we can obtain a patent at the stage of 1st Office Action.
Currently, there are so many patent applications filed around the world that 90% or more of the applications will be subject to 1st Office Action.
We should talk about the extent to which the Amendment will be narrowed down.
If you limit it too much, even if you take the right, it will be different from the actual products, so there is no meaning to acquire the right.
STEP K: APPEAL
In the Amendment for Final Office Action (STEP J), if the reasons for refusal cannot be resolved, you must contend in Appeal (STEP K).
Appeal, in many countries, would be carefully examined by a panel of three Examiners.
STEP L: ALLOWANCE / GRANTED, STEP M: REGISTRATION FEE, and STEP N: PATENT RIGHT
If all reasons for refusal are resolved, the application will be granted Allowance and registered (STEP L).
At that time, you will need to pay the Registration Fee (STEP M).
Once a patent is granted, the technology can be used exclusively for 20 years from the filing date (STEP N).
STEP O: MAITENACE FEE
However, in order to maintain the patent right, you need to pay Maintenance Fee (STEP O).
If you do not pay Maintenance Fee once every few years, the right will expire.
The timing and amount of the maintenance fee will vary depending on the country.
STEP P: LICENSE OUT
In addition to use it yourself, you can also give a license to a third party to use the patent (STEP P).
The licensee who receives the license pays a part of the profit (usually about 1-10%) made by himself/herself as a license fee to the right holder.
Some countries have a period of opposition for a certain term after the patent right was granted.
Companies doing business close to the content of the patent must challenge the registration within this period.
I tried to explain the patent system briefly.
However, I am really sorry, I needed to use STEP A to P, that is, 16 steps!