What Can Companies Do to Protect Their Patent Before It Is Approved?

by Shelly Morgan
Getting a patent can easily take two to three years.

Getting a patent can easily take two to three years.

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You've filed your patent application and the long wait has begun. Your application may even have been published by the United States Patent and Trademark Office for all the world to see. However, your job isn't over yet because various tasks need to be completed. You risk losing your patent before it is ever approved if you fail to take care of these tasks.

File Your Missing Parts

"Missing parts" is the term the USPTO gives to various formal documents, including the Declaration of Inventors, Assignment, Small Entity Declaration and Power of Attorney that you may have forgotten to file. If you did not submit these when you filed your application, the USPTO will send you a Notice to File Missing Parts. These documents must be submitted within one month from receiving this notice.

Respond to Any Office Actions

Most patent applications aren't immediately allowed. Usually, the patent examiner sends you an "office action," in which he may allow some claims, reject some claims or object to some claims. If you want to protect your application, you must respond to the office action before the deadline stated on the document. This response must address every concern raised by the patent examiner. You can amend your claims or ask for reconsideration if you believe the examiner missed something.

File Your Individual Disclosure Statement

The USPTO requires that you disclose all the prior art references that are material to your invention. While you have no duty to search for prior art, you do have to disclose prior art of which you are already aware. Moreover, if you amend the claims to your invention, you may have to file a new individual disclosure statement if there is prior art that is relevant to your amendment. Filing the individual disclosure statement within three months of your application can also save you money. While there is no fee if you file before three months has elapsed, a hefty fee attaches if you file later.

Consider Filing for a Foreign Patent

Filing your application in the U.S. also starts the clock for filing for a foreign patent. Filing for a foreign patent can get expensive, so you should consider whether this is something you want to do. As of 2013, a Japanese patent might cost $6,000 or more. A patent that can be enforced throughout Europe can cost $88,000 or more. If you want to protect your patent rights in other parts of the world, the foreign application must be filed within one year of the U.S. application.