The Patent Process

If it has been determined that a patent application should be filed on an invention disclosure, UMass will most often begin by filing a provisional patent application with the U.S. Patent and Trademark Office (USPTO or PTO). Provisional applications have only been available since 1995 and they allow the University to obtain an initial filing position quickly (e.g. if there is an upcoming publication) and often at a lower initial cost than a non-provisional application. A provisional application also gives CVIP a year from the date of filing to market the invention and evaluate the commercial interest in the technology. This assists CVIP in determining whether the resources should be expended to file a utility (or non-provisional) patent application. During the drafting of the provisional application, the attorney will request the assistance of the inventors. Once a decision has been made that a utility application will be filed the typical process is as follows:

1) The Patent Application: The process begins when the invention disclosure is sent to outside counsel for the preparation of the patent application for filing. The preparation of the application can take from several weeks to several months from the beginning to the actual filing with the USPTO. During the drafting of the patent application, the attorney will be in contact with the inventors and request information and scientific details to be incorporated into the application. The patent contains two main parts, a specification and the claims. The specification is a description of the invention which may include drawings, that describes in detail how to make and use the invention. Following the specification are the claims which define the scope of the rights granted by the patent. The two types of claims include independent claims, which cover the main points of the invention and stand alone, and dependent claims which refer to and incorporate earlier claims. Once a draft of the application has been approved by all parties, the attorney will file the patent application with the USPTO. Simultaneously or shortly thereafter, the attorney will request that inventors execute an Assignment and Declaration that will be filed with the PTO.

2) Information Disclosure Statement: Within 6 months from the filing of the non-provisional patent application an information disclosure statement (IDS) is filed with the PTO. The IDS would include copies of all known information (i.e. prior art) that shows or describes features of the claimed invention in the patent application.

3) Initial Office Action: The USPTO sends an Office Action to the attorney’s office usually between 9 and 24 months from the date the application was filed. The Office Action is prepared and issued by an examiner from the USPTO. It is the examiner’s job to make sure the specification sets forth what is claimed, that there is no prior art, and that the invention is useful and not obvious. The Office Action sets forth the examiner’s objections including prior art concerns and reasons for believing the claims to the invention are anticipated or obvious. Within 3 months from the date of the Office Action, a response must be submitted to the examiner’s objections. The attorney will usually contact the inventors in order to prepare a response to the Office Action.

4) Second Office Action: In general, there is a second and final Office Action from the USPTO examiner within 3 to 6 months following the filing of the response to the initial Office Action. As in the initial Office Action, the examiner presents additional rejections to the claims and a response to the Office Action is filed with the USPTO. Again, the attorney will usually contact the inventors to assist in the drafting of the response. At this point, once negotiations have concluded with the examiner, the examiner will indicate which claims have been allowed.

5) Notice of Allowance: Hopefully, the responses to the Office Actions will be satisfactory to the examiner and the USPTO will send out a notice of allowance. At this point, formal patent drawings must be submitted to the PTO along with the payment of an issue fee. The patent will usually issue between 2 to 6 months from the date the issue fee was paid. Please note that it can take anywhere from 2 to 4 years or longer for a patent application to become an issued patent. Biotech applications often take longer. Future maintenance fees for an issued U.S. patent will be due 3 ½, 7 ½, and 11 ½ years after issuance. These fees range from $880 to $3,100. A patent is good for 20 years from the earliest effective filing date of the application.

6) Divisional Applications: If there was a restriction requirement to one or more claims in the initial office action, a Divisional application addressing the restriction can be filed prior to the patent issuing.

7) Continuation-In-Part Applications: This type of application is usually used to claim an improvement to the original patent application and can be filed while the application is still pending.




Research Home CVIP Home About CVIP Staff Directions Podcast Available Technologies Technology to License Search By Keyword For Inventors The Process Forms & Policies CDA's & MTA's General Guidelines The Patent Process For Industry MTA's Venture Capital Technology to License Policies Other Resources FAQ Related Sites Site Index		The Patent Process If it has been determined that a patent application should be filed on an invention disclosure, UMass will most often begin by filing a provisional patent application with the U.S. Patent and Trademark Office (USPTO or PTO). Provisional applications have only been available since 1995 and they allow the University to obtain an initial filing position quickly (e.g. if there is an upcoming publication) and often at a lower initial cost than a non-provisional application. A provisional application also gives CVIP a year from the date of filing to market the invention and evaluate the commercial interest in the technology. This assists CVIP in determining whether the resources should be expended to file a utility (or non-provisional) patent application. During the drafting of the provisional application, the attorney will request the assistance of the inventors. Once a decision has been made that a utility application will be filed the typical process is as follows: 1) The Patent Application: The process begins when the invention disclosure is sent to outside counsel for the preparation of the patent application for filing. The preparation of the application can take from several weeks to several months from the beginning to the actual filing with the USPTO. During the drafting of the patent application, the attorney will be in contact with the inventors and request information and scientific details to be incorporated into the application. The patent contains two main parts, a specification and the claims. The specification is a description of the invention which may include drawings, that describes in detail how to make and use the invention. Following the specification are the claims which define the scope of the rights granted by the patent. The two types of claims include independent claims, which cover the main points of the invention and stand alone, and dependent claims which refer to and incorporate earlier claims. Once a draft of the application has been approved by all parties, the attorney will file the patent application with the USPTO. Simultaneously or shortly thereafter, the attorney will request that inventors execute an Assignment and Declaration that will be filed with the PTO. 2) Information Disclosure Statement: Within 6 months from the filing of the non-provisional patent application an information disclosure statement (IDS) is filed with the PTO. The IDS would include copies of all known information (i.e. prior art) that shows or describes features of the claimed invention in the patent application. 3) Initial Office Action: The USPTO sends an Office Action to the attorney’s office usually between 9 and 24 months from the date the application was filed. The Office Action is prepared and issued by an examiner from the USPTO. It is the examiner’s job to make sure the specification sets forth what is claimed, that there is no prior art, and that the invention is useful and not obvious. The Office Action sets forth the examiner’s objections including prior art concerns and reasons for believing the claims to the invention are anticipated or obvious. Within 3 months from the date of the Office Action, a response must be submitted to the examiner’s objections. The attorney will usually contact the inventors in order to prepare a response to the Office Action. 4) Second Office Action: In general, there is a second and final Office Action from the USPTO examiner within 3 to 6 months following the filing of the response to the initial Office Action. As in the initial Office Action, the examiner presents additional rejections to the claims and a response to the Office Action is filed with the USPTO. Again, the attorney will usually contact the inventors to assist in the drafting of the response. At this point, once negotiations have concluded with the examiner, the examiner will indicate which claims have been allowed. 5) Notice of Allowance: Hopefully, the responses to the Office Actions will be satisfactory to the examiner and the USPTO will send out a notice of allowance. At this point, formal patent drawings must be submitted to the PTO along with the payment of an issue fee. The patent will usually issue between 2 to 6 months from the date the issue fee was paid. Please note that it can take anywhere from 2 to 4 years or longer for a patent application to become an issued patent. Biotech applications often take longer. Future maintenance fees for an issued U.S. patent will be due 3 ½, 7 ½, and 11 ½ years after issuance. These fees range from $880 to $3,100. A patent is good for 20 years from the earliest effective filing date of the application. 6) Divisional Applications: If there was a restriction requirement to one or more claims in the initial office action, a Divisional application addressing the restriction can be filed prior to the patent issuing. 7) Continuation-In-Part Applications: This type of application is usually used to claim an improvement to the original patent application and can be filed while the application is still pending.


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