USPTO Patent Procedure Explained: Answers to Common Filing Questions

90 questions on USPTO patent procedure explained, answered and cited by the UpLaw editorial team.

• Are USPTO fees or attorney fees the bigger expense?
• Can a confidential sale bar a patent?
• Can a lapsed patent be revived?
• Can an artificial intelligence system be named as an inventor?
• Can the correct inventor roster change during prosecution?
• Can the PTAB refuse to institute even a meritorious petition?
• Can you file a patent application yourself?
• Can you hold a valid patent and still be blocked from selling your own product?
• Can you illustrate how a weak provisional loses its priority date?
• Can you keep a patent application from publishing?
• Can you patent a wish or a bare idea?
• Can you walk through a PCT timeline in practice?
• Does a U.S. patent give you any rights abroad?
• Does recording an assignment with the USPTO transfer ownership?
• How can the provisional year cost you foreign patent rights?
• How did SAS Institute v. Iancu broaden IPR estoppel?
• How does a request for continued examination differ from a continuation?
• How do most patent owners make money from their patents?
• How do you find out whether your invention is patentable?
• How do you fix an error in an issued patent?
• How do you tell whether a patent is governed by pre-AIA or AIA rules?
• How long do design and plant patents last?
• How long does a utility patent last?
• How long does patent examination take?
• How much time does the PCT buy you?
• How must a patent application be filed?
• Is a provisional application better than mailing your idea to yourself?
• Is covered business method review still available?
• Is there such a thing as an international patent?
• Should independent inventors be wary of invention-promotion firms?
• What acceleration options exist besides Track One?
• What are patent term adjustment and patent term extension?
• What are provisional rights under Section 154(d)?
• What are the eligibility limits for Track One?
• What are the four substantive hurdles a utility invention must clear?
• What are the small entity and micro entity discounts?
• What are the three buckets of USPTO fees for a utility patent?
• What are the three kinds of U.S. patents?
• What are the two hinges of a patent infringement case?
• What are your options after a final rejection?
• What did Amgen v. Sanofi hold about enablement?
• What did the America Invents Act change about who wins a priority contest?
• What does a U.S. patent actually grant its owner?
• What does "patent pending" actually mean?
• What does the AIA grace period cover?
• What formatting rules govern claim amendments?
• What free prior-art search resources does the USPTO provide?
• What happens to an application immediately after filing?
• What is a continuation application?
• What is a continuation-in-part and what is its sharp edge?
• What is a derivation proceeding?
• What is a divisional application?
• What is a foreign filing license and when do you need one?
• What is a joint research agreement and why does it matter?
• What is an office action and how do you respond to one?
• What is false patent marking?
• What is inter partes review?
• What is IPR estoppel under Section 315(e)?
• What is often the single most effective accelerant in prosecution?
• What is post-grant review and how does it differ from IPR?
• What is prosecution history estoppel and why does it matter during drafting?
• What is "prosecution" in patent practice?
• What is the constitutional bargain behind the patent grant?
• What is the danger of claiming a fee discount you do not qualify for?
• What is the difference between a patent attorney and a patent agent?
• What is the difference between a provisional and a nonprovisional application?
• What is the difference between inventorship and ownership?
• What is the duty of candor and what happens if you breach it?
• What is the governing framework for obviousness?
• What is the risk of a long chain of continuations?
• What is the single most useful thing an inventor can do for their attorney?
• What is the trap that catches unwary provisional filers?
• What is the value of a Pre-Appeal Brief Conference?
• What is Track One prioritized examination?
• What must a complete nonprovisional utility application contain?
• What remedies are available for patent infringement?
• What subject matter can no patent reach?
• What two cautions apply to the foreign filing license?
• What two separate questions should a company answer before launching a product?
• When are patent maintenance fees due?
• When are two people joint inventors?
• When do excess-claims fees apply?
• When is a patent claim indefinite?
• Where do you check the status of a pending application?
• Where is the Alice two-step fought most often?
• Who enforces a patent, and where?
• Who may be named as an inventor on a U.S. patent application?
• Why are the claims the legally operative part of an application?
• Why does the verb tense in an assignment clause matter so much?
• Why is there no single number for what a patent costs?