Inside the USPTO: A Guide to the Patenting Process


by Carlos Villamar and Chetan Sharma


Note: We have an integrated approach to strategy as we strongly believe that taking market research, business, technology, and intellectual property inputs into strategic initiatives is essential in obtaining a long-term sustainable competitive advantage in the industry. To further the dialogue on the subject, we will be publishing several articles, white papers, books, and blog posts over the course of next few months.


This white paper is a joint project with Carlos Villamar, Partner, Roberts Mlotkowski Safran & Cole. Carlos is a patent attorney who has also worked as a patent examiner at the USPTO.





Patents are a key corporate asset that can give the inventor and the company an invaluable tool to protect and commercialize inventions. The process of obtaining a patent is an important one – from start to finish. Beginning with patent strategy, due-diligence and patent search through the United States Patent Office (USPTO) process to finally getting the grant, one needs to have a good understanding of each step. This increases the probability of success by removing uncertainty from the process. Inside the USPTO: A guide to the patenting process takes a detailed look at the ideation and the patent process, specifically, how patent applications flow through the USPTO. By having a good grasp of the intermediate steps and the various decision points associated with each of them, the paper discusses how entrepreneurs and inventors can maximize their chances of securing a patent.




We live in a knowledge economy and Intellectual Property is a key asset in this new ecosystem. Patents are one of the essential elements to creating barriers to entry for rivals, building credibility and confidence of investors, customers, partners, and employees, providing clarity as to the property ownership, demanding leverage from the industry, and for generating revenue from licensing and sale.

The knowledge economy thrives and sustains on ideas and competitive advantage based on intellectual property. For individuals, the prestige associated with being an innovator and “first to secure” patents in a given field motivates them to be creative and innovative. Entrepreneurs, engineers, and inventors can benefit from understanding how to secure and maintain their intellectual property rights. This paper discusses the important steps in designing, filing, procuring, and defending your patent rights.

The following diagram illustrates at a high-level the patenting process and important considerations in the decision flow chart. The flow chart is discussed in detail in the subsequent sections.


Table of Contents

Abstract 3
Introduction 4
Pre filing due diligence 6
Patent preparation 9
USPTO filing 11
USPTO examination 13
After approval 16
Conclusions and Recommendations 17

Download the full whitepaper here.

Your feedback is always welcome.

Chetan Sharma

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Chapter 1 | Preface | Foreword | Testimonials


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 Upcoming Events

10 May CalTech/MIT Enterprise Forum, Pasadena, Chetan will be giving the keynote on Mobile Advertising
20 May CommNexus, San Diego, Mobile Advertising Book Event and Panel
20-23 May Future In Review, San Diego, Future of Wireless: From Mobile Ads to Mobile Payments
26-27 Jun Global Wireless Security Conference, Kuala Lumpur. Chetan will be giving a talk to leading CTOs and CIOs on Mobile Security trends and opportunities
Sept Seattle Mobility Conference
Recent Events Chetan moderated two recent panels on Mobile Advertising - Stanford University and TiE Seattle. Click on the link to get the discussion summary.

In addition, Chetan will be doing some private briefings to carriers, content providers and enterprise solution providers

 Upcoming Research

May US Wireless Data Market: Q1 2008 Update
June Enterprise Mobile Product Strategy Using Scenario Planning
July Mobile Industry Half-Year Recap and Forecasts
Aug US Wireless Data Market: Q2 2008 Update
Sept Global Wireless Data Market: Half-yearly Update 2008
Oct Wireless Broadband Technology: Conflict and Convergence
Nov Measuring your IP ROI
Dec Mobile Industry 2009 Forecasts
© Chetan Sharma Consulting 2008. All Rights Reserved.
Chetan Sharma Consulting is a consulting and advisory firm helping companies in the mobile and voice communications sector. Our expertise is in developing innovation-driven product, business, and IP strategy. We've helped companies like NTT DoCoMo, China Mobile, Samsung, KDDI, Alcatel-Lucent, Sony, Virgin Mobile, KTF, Sprint Nextel, Reuters, Disney, Qualcomm, Infospace, Reliance, BEA, HP, Merrill Lynch, Cincinnati Bell, Bain, SAP, Vulcan, American Express, and many others. What can we do for you?


If you have questions or suggestions or feedback on this subject or on the wireless & mobile industry at large, please contact us at - we look forward to hearing from you.

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