If OIPA determines that an invention can and should be patented, OIPA will file patent applications in the appropriate patent office(s). After OIPA files the application, the application will go through a process of "examination" by the patent office. OIPA usually files a provisional patent application with the U.S. patent office which will allow both OIPA and the inventor one more year to file the actual non-provisional patent application with the U.S. patent office. OIPA will also file a Patent Cooperation Treaty (PCT) application naming different countries in which a National Stage application will be filed when appropriate so as to secure foreign patent rights for an invention.
When a decision is made to go forward with filing a patent application, the Invention Disclosure will be forwarded to a patent attorney hired by OIPA. The attorney will review the Invention Disclosure and the accompanying manuscript and/or publication(s), and prepare a draft of the patent application that conforms to the format specified for a utility patent application. The inventor(s) will then receive a copy of this draft patent application to review and provide the attorney with his/her/their comments.
The attorney will then prepare the final draft of the patent application that incorporates the inventor's suggestions, the inventor(s) will sign an oath or declaration stating that he/she/they are the inventor(s) and sign an assignment of the patent application transferring ownership to WSU. The attorney files/deposits the patent application and accompanying papers with the U.S. Patent and Trademark Office (PTO) for examination. The inventor(s) will then receive a copy of the application as filed which information is to be kept confidential.
The application then undergoes a preliminary review conducted by the Office of Initial Patent Examination (OIPE), which will determine if all the application formalities have been satisfied. If OIPE finds any missing items, then the attorney receives a notification to that effect from the OIPE to which the attorney responds in a timely manner to make the application complete.
The application will then be forwarded to the appropriate Technology Center within USPTO, where a Patent Examiner will subsequently issue a first Office Action on the application and send it to OIPA's patent attorney. If the application claimed more than one distinct invention, this first Office Action can be a Restriction Requirement asking the Applicant to elect one of the claimed inventions. If the application claimed only one distinct invention, the Examiner will conduct a prior art search and send the first Office Action on the merits (usually termed a Non-Final rejection) which will usually reject all or some of the claims, based on his/her search findings, under the various "conditions for patentability" (novelty, unobviousness, enablement etc. as explained here).
The attorney forwards the Office Action to OIPA which will then be forwarded to the inventor for comments and other required input such as differences between the cited prior art literature and the invention so as to enable the attorney to properly respond to the Examiner's rejections and/or objections. The Applicant is given three months to respond to the Examiner, extendable month by month for three more months by paying extra fees. Under no circumstances can this time to respond to an Office Action be extended beyond the statutory limit of six months. If no response has been filed within six months, the application will be considered "abandoned" by the U.S. patent office.
Based on the inventor's input, the attorney will then prepare and file an Amendment that modifies the scope of the original claims and/or presents arguments against the Examiner's interpretations of the prior art and the scope of the claims. The Examiner will then reconsider the claimed invention in view of the amendments to the claims and the arguments presented and either allow or reject all or some of the claims, as amended and send a second Office Action that, in many cases, is a "Final" Office Action.
If the rejection is made final, the attorney may file an "After Final" amendment altering the scope of claims in view of the Examiner's interpretation and explanation, that may put the claims in "condition for allowance". Alternatively, the attorney in consultation with the Inventor(s) and OIPA/WSURF may advise on filing a continuation application for continued prosecution of the application; and/or a divisional application claiming separate and distinct inventions; a continuation-in-part (CIP) application to add information that was not part of the original disclosure.
The Inventor will be asked to provide more input to help prosecute the new application(s). In some situations, the attorney may advise OIPA/WSURF on filing an appeal to the PTO's Board of Patent Appeals (BOPA).
Once a patent is issued, OIPA/WSURF must enforce the patent without aid of the USPTO. The term of a patent usually lasts 20 years from the filing date of the application. For more information about patents and their duration, see United States Code Title 35, the U.S. Patent and Trademark office website, or the patent office of the country of interest.
