What to Expect: The Utility Patent Examination Process in the United States

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Your utility patent application has been prepared and filed. You’re probably wondering: “Now what?”

What should you expect to happen? When will you hear back from the Patent Office?

Great questions. Let’s take a look at the patent examination process, sometimes referred to as patent prosecution.

Patent Examination Timeline

After you’ve filed your application, you’re allowed to say you have a “patent pending.” However, you don’t actually have a patent (or a right to sue someone for infringement) until your application is allowed and the patent is officially granted. This flow chart is an overview of how that process works, and what you can expect during a standard patent examination at the USPTO.

 

How Long Until We Hear Back?

If you filed a provisional application, you won’t hear back (other than a deadline reminder from your patent attorney). Provisionals are placeholders, and just sit around until they expire. Nothing will happen until you file a non-provisional within 12 months or less.

Once you file a non-provisional application, however, the actual examination process is kicked off. However, unless you filed a petition for special handling or paid to prioritize your application, you probably won’t hear back for about a year and a half. If you do prioritize or petition for special treatment, it will probably be more like 3-6 months. Either way, not what most people call “soon.”

What Will We Hear First?

When the Examiner does communicate with your patent attorney, it will most likely be to issue a rejection. The vast majority of utility patent applications are initially rejected, usually because the Examiner thinks your claims are too close to the prior art. That means the claim language in your application not only describes your invention, but it also describes something that was already out there at the time you filed – whether it’s a product in the marketplace or something described in a patent or academic paper. (Reminder – the claims are the formally-worded, numbered items at the end of your application).

The good news is that you can always respond to a rejection. This usually involves clarifying the claim language and then explaining how the cited references are no longer a problem. Or maybe just arguing that the Examiner is wrong. The point is that you shouldn’t consider a rejection to be permanent. It’s more like an offer made by one side during a negotiation.

Another possible first communication is what’s referred to as a Restriction Requirement. If you get one of those, it’s normally before any rejections. Basically, this is the Examiner saying that your claims include more than one invention. The application can describe as many inventions as you like, but you can only claim one invention at a time. So, the Examiner might restrict your application to only include the claims that correspond to one invention (of your choosing). Any other claims will be withdrawn, and they can be pursued in a separate application (by you) or possibly rejoined at the end of the examination process (by the Examiner).

If you get a Restriction Requirement, your patent attorney can file a response indicating which invention you choose. You might also amend the claims, but not usually. After that, the usual rejection and response process begins (see above).

What Happens After We Respond to a Rejection?

Your response may be enough to overcome the Examiner’s position, in which case you’ll receive a Notice of Allowance (see below).

If the Examiner decides there are still hurdles to overcome, then you’ll get a second rejection. This one will likely be labeled “Final.” However, that just means it’s the second one, and that you’ll probably have to pay a fee to continue. Your initial filing fees essentially cover up to two rejections. You can, if you like, pay to continue for several rounds with the Examiner.

What If We Win the Argument?

If, at any point in this process, the Examiner decides your invention is new and non-obvious, he or she will send you a Notice of Allowance. A Notice of Allowance indicates that you can obtain a patent by paying the issue fee. As you can see in the flow chart, that really can occur at any step. The Notice of Allowance will give you a deadline to pay, after which your patent will be granted.

You can also abandon the application at any step, by simply refusing (or neglecting) to respond. If you miss the three-month deadline for paying your issue fee, then the Patent Office will assume you didn’t want the patent and the application will become abandoned. This is true for any of the deadlines, although most of the other ones can be extended.

Conclusion

The patent examination process can seem convoluted and counterintuitive, and it can take years to finish. But it usually follows a fairly standard path. Talk to your patent attorney about how it’s likely to look in your particular situation, and whether you might be able to speed things up. As always, if you have any questions, please feel free to contact us. Good luck!

 

Blog Post © 2019 Kolitch Romano LLP


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DISCLAIMER: This article is intended to give the reader an overview of the topic, and does not constitute legal advice as to any particular fact situation. Facts matter, and every situation is different. In addition, laws and their interpretations change over time and the contents of this article may not reflect these changes. You are strongly advised to consult competent legal counsel regarding your particular situation.