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Patent Application Filing Process

Listed below are the steps that IP Procure follows to file a patent application:


First, IP Procure enters into a non-disclosure agreement (NDA) and representation agreement with the client. The NDA essentially states that IP Procure will keep confidential and not use any information provided by the client. The representation agreement recites IP Procure’ flat fee for conducting a prior art patent search and for filing a patent application.


Once the agreements are signed, the client e-mails a description of the inventive concept to IP Procure to allow us to conduct the prior art search. When the search is completed, the search result and patentability opinion is sent to the client advising the client if the concept is new and patentable. If the inventive concept is new and patentable, the client may, at his option instruct IP Procure to draft the patent application.


The client then sends a description of the invention with any sketches or drawings as appropriate, identifying what the client considers as new over the existing art. IP Procure then drafts a patent application and sends it to the client for the client’s review and edit.


The client then reviews and marks up the patent application and returns the marked up application to IP Procure. The comments and changes are incorporated by IP Procure to the extent possible and returned to the client for a second level of review. This process continues till the application is approved by the client for filing with the U.S. PTO.


The patent application is then filed with the U.S.PTO. On receipt of the patent application, the U.S.PTO assigns a patent application number to the application and the client can mark the subject matter of the application, for example the product sought to be patented, ‘Patent Pending’.


The patent application is examined by the US PTO about two years after receipt by the U.S.PTO. The U.S.PTO examiner can allow the application, or reject the claims in the application based on prior art patents or publications. If the examiner allows the application, the application issues as a patent. If the examiner rejects the claims, the examiner issues an office action to the client explaining the reason for the rejection


The client (or, his patent attorney) is given an opportunity to respond to the rejection. Responding to an office action to advance the allowance of a patent application is called ‘prosecution’. If, in the opinion of the examiner, the response overcomes the rejection, the application is passed to issue and a patent issues on the allowed subject matter. If the claims are again rejected, the client can again respond to the second office action, which is generally made a final office action.


If the application is again or finally rejected by the examiner, the client has the option to continue prosecution of the application by filing a continuing application.