NonProvisional Patent Application-Lexington KY Patent Attorney

If you want to secure a Patent for your invention, you will need to file a Nonprovisional Utility Patent Application. There are a series of steps you will need to undertake to do this. Those steps are outlined below.

If you have any questions about this process, feel free to contact me for additional information.

Step 1 – Conduct a State-of-the-Art Novelty-Type Search and Prepare a Patentability Report

Business Patent Law, PLLC does represent creative intellectual property owners who have conducted their own novelty search. However, the state-of-the-art search provides a starting point for the Application for Letters Patent.  Some prior patent searches are better than others. Recent US Supreme Court cases demonstrate the desirability of a well-rounded patent novelty-type state-of-the-art search.

Prior to conducting the state-of-the-art search and preparing the Patentability Report, Business Patent Law, PLLC can provide you with the estimated costs for the search and the Report.

For those who have already filed a Provisional Application, not prepared by Business Patent Law, PLLC, Business Patent Law, PLLC does prepare and prosecute Nonprovisional Patent Applications flowing therefrom.

Step 2 – Prepare an Application for Letters Patent

If the client thinks the probability of patentability is favorable, based on the Patentability Report, Business Patent Law, PLLC will prepare an Application for Letters Patent which claims and enables the invention.  If the client desires, an estimate of the costs associated with the preparation and filing of the Nonprovisional Patent Application can be provided.

  1. If necessary, a professional draftsman will prepare the required drawings disclosing the invention.
  2. Business Patent Law, PLLC does represent creative intellectual property owners who have their own draftsman.

Before commencing the preparation of the Application, an initial retainer is required. Business Patent Law’s fees and any draftsman’s fees are distinct from the USPTO’s filing fee. USPTO fees can be determined by visiting or by calling 800-786-9199 for fee information Monday through Friday.

Step 3 – Waiting for USPTO

The United States Patent Office receives more than 1000 Nonprovisional Patent Applications per day – 365 days/per year.

Within 12-42 months, a Patent Examiner will respond to the Application. The Patent Examiner may approve your application or the examiner may deny patentability at this time.

If approved… Congratulations! You will soon be the proud owner of a US Patent!

If your Patent Application is denied, that doesn’t necessarily mean that it’s over. Business Patent Law, PLLC can help you to respond and continue to pursue a Patent, even if your initial request for a Patent has been denied.

Step 4 – Response and Challenge to the Examiner’s Decision

If your Patent Application is denied, a response to the office action is filed in the Patent Office. This document is a factual/legal argument designed to convince the Patent Examiner of his/her erroneous reasoning in rejecting your claims of patentability. The more arguments raised by the examiner the more counter-arguments the law requires an Applicant to set forth in rebuttal.

In view of the US Supreme Court Case of KSR v. International Co. v. Teleflex Inc., et al., 550 U.S. 398 (2007), where the Supreme Court changed the rules of the game for Applicants (the prior rules had been in place for more than twenty years), the costs to prosecute Patents became more expensive after the KSR v. International Co. decision.

Recent changes to the rules of Patent Office practice have also made it more expensive to procure a Patent that has been initially denied.

Business Patent Law, PLLC requires an initial retainer to commence preparation of the Applicant’s Response to the office action.

Depending upon your business judgment, you may also have additional Patent Office fees. The Patent Office can take its time, but the Applicant is penalized if the Applicant does not file the response within the statutory parameters.  You can find the current fees in this situation by visiting

Step 5 – Patent Examiner Issues Another Office Action

The Patent process is never swift, but when there is an initial decline, it will take even longer. In another 3-24 months, the examiner issues another office action. More often than not, at this juncture, Business Patent Law, PLLC clients receive a Notice of Allowance. This is great news! After a Notice of Allowance is received, in due course, the Applicant’s Letters Patent will be issued.

The Patent Office requires you to pay an Issue Fee. (Find fees on

Options if Your Patent Request is Denied a Second Time

If your Application for Letters Patent does not receive a Notice of Allowance, and your Patent is not granted, the law provides alternative procedures for potentially securing Letters Patent in the USA.

In the USPTO, one of the following can be filed:  a Request for Continuing Examination, a Continuation-type Application or an appeal to the Patent Trial and Appeal Board.

Please contact me with any questions to determine what type of invention you have invented.

If your invention is related to ornamentation and appearance, rather than use or function, you should learn more about Design Patents.