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Patent Prosecution Process

Whether or not an invention has been constructively or actually reduced to practice, the process through which the USPTO ultimately awards patents is rarely simple or straightforward. It is a negotiating process between the inventor (represented by an expert patent attorney) and the USPTO, usually centering on whether or not the invention is "non-obvious."

While every case is different, the process has two phases. First, the patent application is submitted on behalf of the inventor and the University by an outside patent counsel. It consists of:

  • an abstract,
  • the "specification," a text section which explains the invention's history, describes it in broad terms and teaches the public how to make and use it, and
  • the "claims," which are precise, numbered statements describing exactly the products or processes that would be protected by the patent. The claims of a patent are the essence of an invention. They are a written boundary describing exactly what part of the practical arts the holder of the patent has the right to forbid others from practicing and, as such, inventors should pay special attention to the crafting of their patent's claims to ensure that they obtain the broadest protection possible for their invention.

Second, in approximately twelve to eighteen months, the USPTO issues its first "office action," or reply to the initial patent application. This first office action usually rejects most or all of the inventor's claims of invention on the grounds of lack of novelty or obviousness; several references (either issued patents or scientific papers) are cited to support this contention. The inventor and patent attorney then must argue that the references do not render the invention obvious. This basic give-and-take continues until a patent is either granted or denied; the entire process can take anywhere from a year and a half to ten years. The total cost of obtaining a U.S. patent through these steps varies from $10,000 to $25,000. An application for a patent in other countries follows a similar procedure; obtaining foreign patents costs approximately $10,000 to $20,000 per country.

For more information about the patent process, see Process for Obtaining a Utility Patent