USPTO Filing: When it’s Required and How it Works
USPTO (United States Patent and Trademark Office) filing refers to the process of filing to register a patent or trademark. This process involves submitting important documents.
Read the rest of this article to learn more about how USPTO filing works, and when to consult a lawyer for assistance with the process.
How Do You Complete a Patent USPTO Filing?
If you want to file a patent application, you’ll have to follow these steps:
Search for Similar Patents
Before you submit your application to the USPTO, you need to check that there aren’t similar patents. This will prevent you from being allowed to patent your invention. Search public records for similar inventions.
Check Eligibility
Know that you can’t get a patent for an invention that’s publicly available, such as if it’s been patented or is used publicly. If the patent has appeared in a patent publication, this also prevents it from being patented.
Prepare the Application
It’s important to have a detailed application that contains a clear description of the invention you want to patent. Some information you’ll be required to submit include:
- Specifications of the invention.
- Drawings of the invention.
- Oath or declaration. This is a signed statement that you’re the original inventor.
File it Electronically
Before you file your application, check the guidelines so that you don’t miss anything. You’ll need to register as an eFiler by creating an account on the USPTO site and verifying your identity. This is done to prevent unauthorized users.
Pay the Fees
You’ll have to pay the required fees, ensuring that you’re paying the correct amount for the type of patent you’re submitting for consideration. For example, as of this writing, fees for utility patents are approximately $455 for micro entities and $910 for small entities. The fees assist the USPTO in examining your application.
Work with a Patent Examiner
Once you submit your application, it will be reviewed by an USPTO examiner, who will check that it meets all legal requirements to qualify for a patent grant. If there are any queries about your application, they will send you an office action or other notice. Respond in a timely fashion to deal with potential issues and prevent any delays.
How Do You Submit a Trademark USPTO Filing?
If you want to apply to register a trademark, it will protect your logo or brand name on your goods or services. Here are the steps to follow:
Check Eligibility
As with patents, before you register a trademark you should check that you’re allowed to. If it’s too generic or someone else is already claiming trademark rights for a design that's similar to yours, your application won’t be accepted. Search the USPTO database for any similar trademarks.
Create an Account
You’ll have to open an account on the USPTO website and access the Trademark Center.
Identify Your Goods or Services
You must identify your goods or services. There are two filing basis options:
- Use in commerce. This is when all goods and services will use the trademark in commerce.
- Bona fide intent to use the trademark. This option means you have good faith to use the trademark on your goods and services.
You’ll also have to include clear terms to describe the goods or services. Anything vague could result in an application refusal.
Choose the Class for Your Goods or Services
Goods and services are classified in numbers from 1 to 45. For example, Class 19 is for non-metallic building materials, while Class 33 is for wines and spirits. The base fee for each class is $350.
Identify the Trademark Format
You should specify if your trademark is a standard character mark (a word), a sound mark (such as a jingle), or a design mark (logo).
After the Application
Once you’ve submitted your application, an examining attorney will review it to ensure it’s aligned with all rules. If there are reasons for why your trademark can’t be registered, you’ll receive a letter or office action, with an explanation for why it’s being refused.
You should respond to the letter within three months, or it will lapse.
Do You Need a Lawyer for a USPTO Filing?
It’s recommended to work with a lawyer if you need to complete a USPTO filing. This is because qualified lawyers have in-depth knowledge of all the legal and other requirements for filing a patent or trademark successfully.
A lawyer can help you throughout the process, such as by:
- Checking that your trademark or patent is valid and eligible. This will prevent you from spending money on filing fees.
- Conducting clearance searches or patent searches. These are comprehensive searches to ensure that you’re not trying to register a patent or trademark that’s already in use.
- Drafting your application. This includes writing legally-sound and professional declarations or oaths to support your application.
- Gathering all the important documents you need to include in your application.
- Communicating directly with examiners on your behalf, such as by handling rejections.
- Helping you to formulate professional and legally valid responses to office actions, so that you don’t encounter other problems.
Where Can You Hire a Lawyer for a USPTO Filing?
If you need a lawyer for help with a patent or trademark application, you might struggle to find one. Online legal platforms make the process much easier.
On ContractsCounsel, one of the largest online legal marketplaces connecting clients with experienced, vetted lawyers, the platform provides you with updated data to help you select the best professional for your requirements.
You can review the lawyers’ profiles according to their expertise, credentials, years of experience, previous projects they’ve completed, and client ratings, giving you peace of mind that you’re hiring a reputable and experienced lawyer.
