FAQ

Q How long does it generally take for a patent application to be processed?

A The simple answer is three years. However, that is the very simple answer and generally not correct. The long answer is that the USPTO estimates three years because the patent term starts from the filing date and with three years of prosecution the applicant typically receives 17 years of patent protection. The USPTO website states that the average patent application pendency is 24.6 months; however, we would not count on that. The answer becomes even more complicated when you factor in patent term adjustment, which is a method of calculating patent term extensions due to USPTO delay past 17 years of protection. Although interesting, this topic is far too complicated to attempt to cover here.

Q What is an accelerated examination process?

A The Accelerated Examination process is new to the USPTO and its goal is to have applications through prosecution in a year or less. There are many rules and conditions that must be met for qualification and examination so please contact us to find out if you are eligible.

Q Can I file a specification written in a language other than English?

A Yes, in any language. However, within a certain period of time designated by the USPTO you must file the translationed version.

Q What is a small entity?

A A small entity means any party (person, small business concern, or nonprofit organization) with 500 employees or less. The small entity applicant will receive a benefit of discounted government fee.

Q Is priority certificate necessary?

A Generally, priority certificates need to be submitted to the USPTO. However, applications based on Japanese or, EPO are exception to the requirement.

Q What is a 12 month grace period?

A Unlike other countries, you will have 12 month grace period for filing a patent application starting from the date of reduction to practice. In other words, you are allowed to file the patent application even if you have disclosed the invention to the public without filing the application if within 12 months.

Q Do I need declaration/oath with the initial application?

A No, but you will need to file an oath with the USPTO within a certain period of time designated by the USPTO.

Q Do I need to disclose information relevant to the examination of my invention?

A Yes. Applicants as well as people involved in the application have a duty to disclose all material information to the examination. Generally, you are required to submit the information within 3 months from the filing date or prior to the first office action, whichever comes later. There is a fee involved when submitting the information thereafter. This duty continues until the issuance.

Q Should I file a provisional application or a nonprovisional application?

A It depends. There are varying opinions on how to proceed when filing an application. A provisional application does not require as much initial work as you may simply file whatever information you have with the PTO and you will get a filing date. Because of the reduced complexity, it is much cheaper to prepare and file. However, this application is not prosecuted, so you only get a filing date for one year and then you must file a nonprovisional application that will be prosecuted. If you do not file within a year you will lose all rights to the invention. A provisional does allow you to claim "patent pending", you receive one year of protection to obtain financing, to research the market and to find out if the invention is viable. Alternatively you could file a nonprovisional application right away. This is more costly but does provide a plethora of advantages not garnered with a provisional application. Call Apex for more detailed patent portfolio strategies.

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Q	What is an accelerated examination process?
A	The Accelerated Examination process is new to the USPTO and its goal is to have applications through prosecution in a year or less. There are many rules and conditions that must be met for qualification and examination so please contact us to find out if you are eligible.

Q	Can I file a specification written in a language other than English?
A	Yes, in any language. However, within a certain period of time designated by the USPTO you must file the translationed version.

Q	What is a small entity?
A	A small entity means any party (person, small business concern, or nonprofit organization) with 500 employees or less. The small entity applicant will receive a benefit of discounted government fee.

Q	Is priority certificate necessary?
A	Generally, priority certificates need to be submitted to the USPTO. However, applications based on Japanese or, EPO are exception to the requirement.

Q	What is a 12 month grace period?
A	Unlike other countries, you will have 12 month grace period for filing a patent application starting from the date of reduction to practice. In other words, you are allowed to file the patent application even if you have disclosed the invention to the public without filing the application if within 12 months.

Q	Do I need declaration/oath with the initial application?
A	No, but you will need to file an oath with the USPTO within a certain period of time designated by the USPTO.

Q	Do I need to disclose information relevant to the examination of my invention?
A	Yes. Applicants as well as people involved in the application have a duty to disclose all material information to the examination. Generally, you are required to submit the information within 3 months from the filing date or prior to the first office action, whichever comes later. There is a fee involved when submitting the information thereafter. This duty continues until the issuance.