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Navigating the USPTO: A Guide for New Businesses Seeking Patents

For new businesses entering the market, navigating the USPTO patent regulatory approval process can be a daunting task. It requires knowledge of complex legal systems and regulations, as well as an understanding of how to effectively navigate the various intricacies involved in startups. Fortunately, there is help available for those seeking assistance in this area. This article will provide guidance on successfully navigating the USPTO patent system, from obtaining credit with state bars to dealing with government officials.

Bases to Cover Before Contacting the United States Patent and Trademark Office

Before beginning the patent process, it’s important to understand the basics of patents and trademarks. A patent is a legal document granting an inventor exclusive rights to make and sell that invention for a limited period of time. The USPTO encourages companies to do their own research before filing for a patent, as this can help save time and money. Companies should also determine whether their invention is eligible for patent protection and investigate the costs associated with filing, as well as any pending inventions that may be similar or identical to the business’s concept.

Once businesses have a basic understanding of patents and trademarks, they can start exploring ways to contact the USPTO. The best way to get the most out of the process is to hire an attorney or obtain a patent agent, who can provide legal advice and help with filing paperwork. Those without access to such resources may be able to contact local bar associations for assistance in finding qualified counsel.

Filing Paperwork with the USPTO

Once businesses have found a lawyer or patent agent to help them with the application process, they can start filing paperwork with the USPTO. The first step is to prepare a provisional patent application, which must include details about the invention or innovation, as well as information about how it works and how it differs from similar products already on the market. The provisional application is not examined until a later date, but it provides the USPTO with an initial look at the invention and allows the business to establish a priority filing date.

Once businesses have filed their provisional application, they must move on to submitting a utility patent application. This type of application will include more detailed information about the invention or innovation, as well as drawings and diagrams. The utility patent application will also include claims, which are statements describing the invention or innovation and its unique features.

The USPTO reviews all applications carefully before granting a patent to ensure that there is no prior art (i.e., any existing patents) that could render the new invention invalid. After reviewing the application and conducting their own research, the USPTO will either approve or deny the patent request. If approved, businesses must pay a filing fee and then wait for their patent to be issued.

Knowledgeable Resources for Navigating the USPTO

To assist in this process, businesses can turn to knowledgeable resources such as patent examiners, patent practitioners, patent counsel, and administrative judges. Patent examiners review patent applications to determine whether they meet legal requirements and are eligible for approval. Patent practitioners specialize in helping startups secure intellectual property rights. And, Administrative Patent Judges (APJs) handle appeals to the USPTO Board of Patent Appeals and Interferences.

Biotech & Medtech Startups: What You Need to Know

For biotech and medtech startups, additional considerations must be taken into account when navigating the USPTO patent system. Startups face unique challenges in obtaining patents, such as dealing with drug evaluation from the FDA and organic chemistry for medical devices. To help get started, it is helpful to seek advice from experienced legal counsel at a law firm that specializes in intellectual property rights.

MCLE Credit: Obtaining Credit for Professionals in Industry

For industry professionals, obtaining MCLE (Minimum Continuing Legal Education) credit is an important part of navigating the USPTO system. The state bar associations require a certain amount of MCLE credit to remain certified as a lawyer or patent practitioner. For example, California requires 36 hours of credit every three years and New York requires 24 hours of MCLE credit every two years.

Harnessing the Expertise of Experienced Directors & Counsel

Experienced directors and counsel can be invaluable when it comes to navigating the USPTO patent system. For example, Linda Horner is a former Deputy Director in the USPTO’s Office of Patent Quality Assurance and a partner at Knobbe Martens. Additionally, Kimberly Miller is an experienced patent counsel at state bars throughout the US and Barbara Zimmerman is a Director in the USPTO’s Office of Patent Quality Assurance. Meanwhile, Kevin Bugin is an Administrative Patent Judge (APJ) with experience handling appeals to the USPTO Board of Patent Appeals and Interferences.


Navigating the USPTO patent system can be a challenging task, especially for new businesses entering the market. However, by following the guidance outlined in this article, businesses can successfully complete the process while saving time and money. By becoming familiar with the different types of patents available, understanding the differences between provisional and non-provisional applications, and obtaining MCLE credit when necessary, businesses can more easily navigate through the USPTO patent system. Additionally, utilizing the expertise of experienced directors and counsel can be invaluable in making the process smoother.