How to obtain a patent in the United States

1. THE PATENT PROCESS
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2. UTILITY PATENT
In the United States, the intellectual property right to an invention is
called a utility patent.
The utility patent gives the owner the right to exclude others from
making, using or selling the invention in the United States.
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3. PATENT PROSECUTION
Utility patents are granted by the United States Patent and Trademark
Office (the USPTO) after a process of application and review.
This process is also referred to as “patent prosecution”
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4. PATENT APPLICATION
The patent application consists of three main parts:
1. Specification
2. Figures
3. Claims
The Claims are the legal essence of
the invention – they are what the
USPTO reviews to determine
patentability, and they are what the
courts use to determine whether
someone is infringing the patent.
The Specification and Figures help to explain
the Claims
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5. APPLICATION PREPARATION
An application takes several weeks to prepare.
Material is gathered from the inventor in order to fully understand the
inventive concept.
A search through existing patents and technology is sometimes performed
to assist in identifying proper claims.
A good attorney balances many factors when drafting a patent:
 Claims most likely to be granted
 Area of the market and technology that the client wants to protect
 Competitive advantages of the invention, whether technological, industrial design,
production efficiency, etc...
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6. COST
The USPTO filing fees for a standard small business are $730, with
overage fees for >20 claims or >30 pages
 Most applications are far under 50 pages but claims vary
Average legal fees range from $5-10K, may be flat or hourly
 Low cost shops may charge as little as $2-3K, but typically limit the number of
claims, pages and drafts, and often do not provide full access to an attorney
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7. FUTURE FEES
The patent application is only the first step in patent prosecution.
Additional legal work is required as the patent office reviews and
responds to the application.
 The process takes several years and several thousands of dollars.
Once the patent is granted, there are issue and maintenance fees that
are several thousand dollars each.
CHAN HUBBARD PLLC
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8. USPTO REVIEW
USPTO examiner reviews the application and performs search for “prior art”-
publicly existing information that is related to the technology
Examiner determines if the invention has already been described or can
readily be synthesized from existing knowledge.
Examiner’s conclusion is issued in an “Office Action.”
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9. OFFICE ACTION RESPONSE
Rejections are typical in the first Office Action.
Patent attorney/agent must determine whether to accept the
examiner’s arguments and change the claims, or to argue that the
examiner is wrong.
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10. EXAMINATION TIMELINE
The average time to first office action is at least 18 months.
The average time to patent grant is 32 months.
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It is a lengthy and costly process!

11. WHY SHOULD I GET A PATENT?
This is a cost-benefit business decision.
Do not fantasize that a patent grant is also a grant of riches.
The patent is the right to exclude others, and this right must be
maintained and enforced through the courts in litigation.
The right to exclude is a powerful one, and without it, competitors
can erode your business.
Another benefit is that the patent crystallizes an invention in a
transferable asset that can be licensed, bought and sold.
CHAN HUBBARD PLLC
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12. PROVISIONAL PATENT
APPLICATIONS (PPAS)
PPAs are placeholder applications that must later be converted into a
utility application that undergoes the full examination process.
At the time the provisional application is made, claims are not
required to be included, and the application is not examined.
 This makes them cheaper to file, and potentially doable without an attorney
(though not advisable).
Therefore, the PPA is considered a way to begin the process before
one has fully determined what the ideal claims will be.
 This may occur when the competitive advantages of the precise product have yet to
be determined
 Or where you want to situate your business in the competitive landscape has yet to
be determined
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13. QUESTIONS?
Send questions to chanhubbard@chanhubbard.com, or
Consult our FAQs
THANK YOU FOR READING!
CHAN HUBBARD PLLC
www.chanhubbard.com