Preparation of Patent Applications

A patent attorney should be consulted for the preparation of a patent application. Patent attorneys are aware of the formal requirements and can help identify the patentable components of a complex invention. A patent attorney (also called a patent lawyer) is a lawyer licensed by a state bar and licensed by the United States Patent and Trademark Office (USPTO).

Depending on the Invention and patent strategy, a patent attorney or a patenting agency, such as InventHelp, will recommend at least one of a variety of patent applications. Each may have different requirements. More information regarding each type of patent application is provided below:

  • U.S. Utility Patent Application;
  • Provisional Patent Application;
  • Design Patent Application;
  • PCT patent application

Once a patent application is filed with the United States Patent and Trademark Office (USPTO), the Inventor can mark the invention “patent pending.” The term “patent pending” notifies the public that the Inventor is seeking patent protection on the invention and a patent may soon issue.

Information Disclosure Statement (IDS)

While the patent application is pending, the Inventor has the duty to provide all known references that may affect patentability of the invention to the patent examiner. References are submitted in the form of an Information Disclosure Statement (IDS). Frequently, the results of a patent search are provided as the IDS. The patent examiner will evaluate the IDS, conduct a patent search and determine whether the invention is useful, new and nonobvious.

Office Action

Frequently, inventions are initially rejected over one or more statutory requirements (as interpreted by the patent examiner) in what is called an Office Action. A response to the office action can be filed.

A patent attorney should be consulted to identify which of the following would be the best route:

  • Providing Arguments that distinguish the invention from the documents cited in the Office Action
  • Amending the patent application to distinguish the invention from the documents cited in the Office Action
  • Abandoning the application

Once the proper response is filed, the patent examiner considers the response. The patent examiner may issue another Office Action rejecting all or part of the invention or may provide a notice of allowance.


A patent will issue once all pending claims have been deemed allowable and the issue fee is paid. An issued patent grants the owner the right to exclude others from making, using, selling, offering for sale or importing the claimed invention for approximately 20 years from the filing date (although patent term may be extended or shortened) as explained in the,21.htm post.

Maintenance Fees

An inventor must pay maintenance fees periodically to keep the patent valid.

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