MARTIN FRUITMAN for PATENTS
(888) 7MY- IDEA
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GETTING A PATENT
Typically, the procedure for getting a patent breaks down into four steps.
1) The Patent Search
This is performed by a private organization such as a patent attorney’s office. It results in
an individual’s opinion on whether the idea is likely to be patentable (not marketable,
economical or beneficial). Its main inquiry is whether the idea, as conceived by the
inventor, is shown among the U.S. patents in either its exact form or a form so similar that
the inventor’s idea is an obvious result. If there is a previous patent, the idea is not
2) The Patent Application
This is a complete write-up, including drawings, of what the eventual patent will contain.
Again, it is produced by a private patent attorney’s office. When this is filed at the U.S.
Patent Office a receipt is returned with a filing date and a serial number. That moment is
the birth of a “Patent Pending”, but no significance can yet be attached to the merit of the
idea, because all that has happened has been that a clerk at the U.S. Patent Office has
counted the papers and verified that they have actually been received.
3) Prosecution of the Application
Usually, between six months and a year (and sometimes much longer) after the application
is filed a U.S. Patent Examiner begins consideration of the application on its merits. The
Examiner’s essential test is the same as that applied during the search, that there be no
prior patents which suggest the idea, but as an adversary the Examiner is likely to be more
critical. The Examiner also has some additional material available to compare to the
application. The Examiner’s files include foreign patents, some published literature, and all
of the patents which have issued in the time since the patent search. Since the Examiner’s
work is limited to only one area of expertise, the Examiner also has specialized knowledge
of the type of invention being considered, and possibly most important, the Examiner has
an inclination to reject a patent application if there is any doubt that it is a completely novel
This usually results in at least one formal rejection to which the originating patent attorney
must respond. The response, called an amendment because it usually revises the
application at least a little, argues against the rejection on legal and technical grounds.
There can be more than one such rejections and amendments during the prosecution, but
it is virtually certain that there will be at least one.
If the amendments do not convince the Examiner that the invention is patentable, the
inventor may have to appeal the rejection. Appeal is a costly administrative process in
which the Examiner and the inventor’s attorney argue in writing and in person in front of a
special Appeal Board at the U.S. Patent Office. Further appeal is also available, at even
higher cost, through the courts.
4) Patent Issue
If the prosecution ends with a decision to issue the patent (as it usually does), it finally
issues in its amended form. This usually occurs between one and a half and two years after
the original filing. It is only at that time that the inventor can fully protect his idea. That
protection consists of his legal right to sue, in a Federal civil court, anyone who has made,
sold, or used the invention specifically claimed in his patent after the time at which the
It is important to realize that at no time during this process has a judgment been made on
the idea’s economic or social benefit. All that has been determined is that it is a “new”
idea. In the end, the only definitive determination of whether the idea can make money is
made by someone risking money to produce and market it — hopefully with some success.
I would be pleased to answer specific questions on any of these matters for you at any