A U.S. Patent “Application” is Not a Patent

During my more than 20 years of practicing patent law, many individual inventors have come to me to assert that their U.S. patent has been infringed.

The first thing I want to know is: do they actually have a U.S. patent?

Many individual inventors, who are unfamiliar with U.S. patent law, file U.S. patent applications, get serial numbers for these patent applications, and apparently consider these patent “applications” to be “patents”.

A U.S. patent application is not a patent.

What is the difference?

Well, let’s take the case of a U.S. utility non provisional patent application.

An inventor may file a U.S. utility non provisional patent application, preferably by using a registered patent attorney, such as Walter J. Tencza, Jr., PATENTNOW.COM®.

Upon filing, the US Patent and Trademark Office (USPTO) will assign the patent application a serial number.
Assuming that the patent application has been filed electronically, the serial number and a confirmation of the filing will be provided by the USPTO immediately.

The serial number and confirmation indicate that the inventor’s application is in a “patent pending” status.
After the application has been filed electronically, the USPTO generally may additionally check to see that the application complies with some very basic superficial requirements; and if the application does, then the USPTO may provide a more detailed filing receipt.

If the application does not comply with these very basic superficial requirements, the inventor may receive a notice to correct the application.  If the inventor does not correct the application, the application generally would be abandoned.  The inventor needs to be very careful in terms of how the application is corrected.  For example, the inventor cannot add new matter to the patent application after the application filing date.

An inventor receiving a serial number for their patent, and the detailed filing receipt indicating that they have complied with the very basic superficial requirements, may incorrectly conclude that they now have a patent.

They do not have a patent.  At least not yet.

In fact, it is very possible that the inventor may never receive an actual, issued, approved, US patent.

Why?

Because an examiner at the USPTO first needs to carefully examine the inventor’s utility non provisional patent application to determine if one or more claims of the application are novel and nonobvious over the prior art, and that the application generally satisfies all of the requirements of the USPTO.

And since the USPTO is swamped with many thousands of patent applications, it will take usually at least a year, and frequently much more than a year, before an examiner will carefully examine the inventor’s patent application.

The USPTO examiner’s careful examination typically will include reading the inventor’s patent application in detail, conducting an exhaustive search of the prior art, and comparing one or more references of the prior art with the claims of the inventor’s patent application.

The examiner will then, typically, prepare a first office action in writing, frequently rejecting at least some of the claims of the patent application based on prior art references, such as patents or prior publications.

The inventor, hopefully through a patent attorney, will have an opportunity to respond to the office action.

If the inventor is able to comply with all USPTO requirements, get at least one claim allowed, and assuming any claims which are not allowable are canceled, then the USPTO will send out a notice of allowance.

After receiving a notice of allowance, if the inventor pays an issue fee to the USPTO and provides appropriate documentation, the inventor will, in all likelihood, be issued in due course an actual U.S.  Patent.

Obtaining an actual U.S. Patent, can be time consuming, frustrating, confusing, and arduous.  Having a registered patent attorney, such as Walter J. Tencza, Jr., PATENTNOW.COM®, guide you through this process is invaluable.

Copyright 2014 Walter Jr. Tencza, Jr. , Esq., All Rights Reserved.

Legal Disclaimer- the information provided herein is not legal advice.  Transmission of this information is not intended to create, and receipt by you does not constitute, an attorney / client relationship.  Although effort has been made to ensure that the answers are correct, Law Office of Walter Jr. Tencza Jr. and Patentnow.com® cannot and does not offer any warranty, express or implied that the answers contained are accurate statements of law. This document is provided for informational purposes only.  Viewers must not act upon any information without first seeking advice from a qualified attorney outside the context of this document.

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