I received a good patentability opinion; how do I get to patent pending?
We are often asked; “when do I have ‘patent pending’ status?” The answer is fairly straightforward. An invention becomes patent pending the moment it is filed with the USPTO. Getting to that position does take a few steps but being patent pending can be important to an inventor. The filing of a patent application provides the inventor with a tangible property right – one that can be sold and licensed – and allows the inventor to publicly make, sell, and show the invention without fear that any loss of rights may occur due to public disclosure.
Usually, by this stage, the inventor will have had the patent attorney provided a patentability search and opinion informing the inventor not only as to whether a patent is potentially available for an invention, but also the type of patent (i.e. design or utility) which is best suited for the inventor based upon the chances for success, the type of invention and, of course, the inventor’s needs. Though a patentability determination is not required, it is often highly desirous as a professional searcher will locate references using specialized search engines not available to inventors and the located information can save thousands of dollars down the road.
Once the inventor has decided to move toward being patent pending, the patent attorney will work with a drafter to have professionally rendered drawings created for the application. These drawings are not mechanical drawings in the formal sense. Though related to mechanical drawings, patent application drawings do not include measurements and other details required to build a model but instead are a general representation of the invention. The type of patent application to be filed also dictates the way in which the drawings are prepared. Design patents protect the ornamental appearance of elements of an invention and therefore drawings for design patents require all views to be consistent and exact with respect to each other. Utility patent drawings are only approximations of the invention and therefore are intended to show how the invention might work. Therefore utility patent drawings are more likely to include exploded and cross-sectional views depicting the functionality of the invention.
The process for obtaining the drawings can vary but an inventor can expect at least a first draft within 1-3 weeks. Often the attorney, after viewing the drawings, will request revisions to show particular aspects of the invention that are not entirely clear from the first draft. Thus, 1-2 months could elapse on a very complicated invention where the attorney and drafter are making continual revisions to perfect the drawings. This is important because once filed, a patent application cannot be amended to add new matter. As the drawings are particularly exemplary, the drawings are notoriously difficult to amend after the application is filed and any changes could necessitate the filing of a completely new application. It is therefore important that the inventor scrutinize the drawings to prevent the avoidable error of filing incorrect drawings.
Once completed, the application is sent to the inventor for reading, correcting any errors, and to otherwise ensure that the invention is fully and accurately described. The inventor will sign the application and return it to the attorney so that it can be filed with the USPTO. The attorney will typically electronically file the application so that an immediate confirmation and patent application number are received. When the USPTO receives the application, either by paper mailing or electronically, the invention has patent pending status.
A Note From Attorney Sean Kaufhold:
Due to the amount of time it can take to have an application written, the client can become anxious. Once the application is filed, it cannot be added to or changed. Therefore, this process must be done correctly with as much time as needed.