Overview

Congratulations on filing your patent application and now you are patent-pending.  You just boarded a train with many stops in between.  We will discuss various stops that the USPTO train makes in this article.

To recap, 3 types of patents are available: design, utility, or plant patents. Further, two types of plant and utility patent applications are available: nonprovisional and provisional. An inventor can quickly and cheaply file a provisional application to determine a U.S. filing deadline for their invention. This information can then be claimed in a later filed nonprovisional request. A provisional application is automatically abandoned 12 months after it was filed and is not reviewed. To receive the benefits of the provisional filing, an applicant must first file a provisional request. If all requirements for patentability have been met, a nonprovisional request is reviewed by a patent examiner. The USPTO receives over 500,000 patent applications each year and the majority of applications filed with USPTO are utility patent applications.

Patent prosecution–everything that takes places after a patent application is filed until it issues–can be a complex and lengthy process. The majority of attention and time is spent on drafting and filing a patent application. However, clients often ask questions like When will we hear back from the patent office? and What next?This article is Part 1. It is intended to answer these questions and give a bird’s-eye view of how patent protection is obtained in the United States and around the world.

Provisional patent applications

A provisional application for patent is filed to, among other things, establish an early effective filing deadline for a later-filed, non-provisional application. To claim this benefit, the later-filed application must not be filed after the expiration of one year. Provisional applications differ fundamentally from non-provisional applications, in that they are not subject to examination by the U.S. Patent and Trademark Office. Therefore, once a provisional is filed, there is no obligation or timeline except to file and prepare a non-provisional request within one year.

It may be beneficial to record and execute an assignment for transferring rights in patent from inventor to another entity (typically the employer) prior to the one-year anniversary of the provisional request, particularly if international patent protection is being considered.

Non-Provisional patent applications

Pre-examination Notices and Formal Documents (Time to patent: 2-3 years)

The USPTO assigns an application a serial number once it has filed a non-provisional request. This allows the USPTO to verify that all documents and fees have been submitted. All documents can be submitted at any time, but the USPTO must receive all required documents and fees before it will begin the formal examination. A notice will be issued if any document requested by the USPTO is not present. This notice can be extended for two months. This notice is usually issued within one to two weeks of the filing. Typical documents filed in a non-provisional application include:

  • Inventor’s Oath/Declaration (sworn affirmation by persons on their inventorship)
  • Assignment ( Transfer of rights from inventor(s) to another entity
  • Professionally drafted replacement figures to replace original drawings
  • Preliminary Amendment ( modifications to the claims or specification before examination
  • Information Disclosure Statement (List of all relevant prior art that is known to the inventors and related parties)

Many of these documents may be submitted at any time after an application has been filed. While some documents may be requested by the examiner (e.g., the replacement figures), others may be required due to circumstances beyond the prosecution. If the attorney or inventor learns of new relevant prior art references that are older than the filing date of the application, an Information Disclosure Statement (IDS) might be required to notify the USPTO.

Publication & Waiting ( Time To Patent: 1-3 years)

Although there is no official notice that a patent application is ready for examination by a patent examiner to take up, your attorney can track the status of the USPTO and confirm the date the application was placed in the examination queue.

The patent application will be published and typically made public around 18 months after first filing of the application.  Until then your application’s existence is private until publication. Publication has the effect of (1) making your patent application accessible on the USPTO database and other services such as a Google Patents; and (2) allows all documents and the status of the application to be viewed via the Public Patent Application Information Retrieval system.

To avoid publication, you can also file a nonpublication request contemporaneously with your patent filing so that the public will not be able to view the application unless and until a patent is issued. If you seek patent protection internationally, this option is not available.

The USPTO has various initiatives designed to advance the progress of a patent application and to provide applicant assistance. If you qualify, you may benefit from these Initiatives to expedite your application review. As of May 2022, programs and initiatives available to applicants during each phase of the application process include:

Initiatives that can accelerate/simplify your examination prior to examination include:

 Track One (Prioritized Examination)Accelerated ExaminationCollaborative Search Pilot (CSP)Expedited Examination (Design Applications Only)Patent Prosecution Highway (PPH)Ombudsman Program
DescriptionThe goal is to provide a final disposition within twelve months, on average, of prioritized status being granted.
Learn about Track One statistics.
Accelerated examination provides applicant the opportunity to have final disposition of an application in 12 months.
Learn about Accelerated Examination statistics
An applicant, with a corresponding application in either Japan or Korea, may request a collaborative serial (JPO) or parallel (KIPO) search prior to entering the full first action interview pilot program. Examination of your application under CSP is accelerated and will result in an earlier determination of patentability.The goal of this program is to provide expedited examination of a Design application (Benefit?)An applicant receiving a ruling from the Office of Earlier Examination (OEE) that at least one claim in an application filed in the OEE is patentable may request that the Office of Later Examination (OLE) fast-track examination of the corresponding claims.
Learn about PPH Statistics
The Patents Ombudsman Program enhances the USPTO’s ability to assist applicants or their representatives with issues that arise during patent application prosecution.

Initiatives available prior to examination include:

 Petition to Make SpecialOmbudsman ProgramGeneral Interview Practice
DescriptionApplications will not be advanced out of turn for examination or for further action except as provided by this part.The Patents Ombudsman Program enhances the USPTO’s ability to assist applicants or their representatives with issues that arise during patent application prosecution.The USPTO encourages examiners to
take a proactive approach to examination by reaching out and engaging our stakeholders in an effort to resolve
issues and shorten prosecution.

Initiatives available after final rejection/close of prosecution to the examination includes:

 After Final Consideration Pilot 2.0 (AFCP 2.0)Pre-Appeal ProgramGeneral Interview PracticeQuick Path Information Disclosure Statement (QPIDS)Ombudsman Program
DescriptionAFCP 2.0 authorizes additional time for examiners to search and/or consider responses after final rejection.An avenue to request that a panel of examiners formally review the legal and factual basis of the rejections in their application prior to the filing of an appeal brief.The USPTO encourages examiners to take a proactive approach to examination by reaching out and engaging our stakeholders in an effort to resolve issues and shorten prosecution.QPIDS eliminates the requirement for filing an RCE with an IDS filed after payment of the issue fee in order for the IDS to be considered by the examiner.The Patents Ombudsman Program enhances the USPTO’s ability to assist applicants or their representatives with issues that arise during patent application prosecution.

Examination Begins ( Patent Time: 1-2 Years).

Once your patent application is reviewed and approved by the examiner, prosecution by the PTO can begin. The examiner will issue a first action of one of these three types.

Restriction Requirement ( Response due in 2 Months, extensible to 6 Months).

The examiner can issue a Restriction Requirement if they determine that your claims cover multiple inventions that require the examiner to search more than one invention.  To respond to the Restriction Requirement you will have to choose a subset of the claims in your filed application for examination in an election of a group pending claims. The non-elected claims are withdrawn from prosecution at this point. Sometimes withdrawn claims can be rejoined after prosecution ends.

The one upside of the restriction requirement is that the examiner in future cases cannot tie the life of the elected claims to the current case.  The way to do this is by filing a divisional application. You can file divisional applications anytime claims are withdrawn, and the application still retains your original priority.

Office Action (Response due in 3 Months, Extensionable to 6 Months with late fees)

If an examiner determines that any claim is not allowed or finds other problems with the application, they will issue an Office Action. This includes a detailed explanation. This includes rejections of claims due to prior art references. The first Office Action is not final, meaning that you can file a reply that the examiner must review. Commonly, responses include amendments to claims and/or arguments that are against the rejections of the examiner. We recommend that you have a conversation with the examiner before submitting your response.

The USPTO encourages examiners to take a proactive approach to examination by reaching out and engaging our stakeholders in an effort to resolve issues and shorten prosecution.

If the examiner is not satisfied with the answer or if he or she finds new rejections, the examiner may issue an additional Office Action. This will likely be a Final Office Action. The examiner does not have to review any amendments to claims after a Final Office Action. If the examiner feels that the answer resolves all outstanding issues, arguments or amendments may still be filed and the application could move for allowance. Final Office Actions may be appealed, or a Request for Continued Examination can be filed (with payment of a fee). A Appeal allows for arguments to be heard before a panel of three administrative judges. A RCE restarts the prosecution and allows for further amendments. The examiner can also issue another Office Action or Notice of Allowance.

If the examiner does not think your application meets the requirements, the examiner will explain the reason(s). You will have opportunities to make amendments or argue against the examiner’s objections.

If you fail to respond to the examiner’s requisition, within the required time, your application will be abandoned.

If your application is twice rejected, you may appeal the examiner’s decision to the Patent Trial and Appeal Board (PTAB)

If your response to a Final Action does not overcome all of the examiner’s objections or if any of the claims have been twice rejected.You can consider filing an appeal with the Patent Trial and Appeal Board (PTAB)

This back-and forth process may result in one or more claims being indicated as allowable. This indicates that there are no remaining rejections. Any allowed claim can be patentable. Once all claims have been approved, either by overriding rejections or cancelling all rejected claims, the examiner will issue a Notice to Allowance.

Notice Of Allowance ( Patent Time: 2-5 Months)

A Notice of Allowance indicates that the examiner is confident the application will be granted a patent. The Notice of Allowance sets the deadline for payment of the issue fee, which is the final fee to obtain a patent. It lasts three months and cannot be extended. Before paying the issue fee, attorneys complete a final review of the application to ensure that there are no outstanding formal documents and that the application is ready for publication as a patent. Sometimes Supplemental Notices Of Allowances may be issued in response to final submissions, but the original deadline of three months remains.

The Issue Fee must be paid before the issue notification can be sent. This notifies the date that the patent will publish and assigns the patent number to the patent. The issue date marks the end of formal prosecution. Certain actions, such as filing continuing or divisional requests, can only be done by this date.

Subsequent Applicationss: Continuation, CIP, Divisional

Each of the new patent applications, Continuation, Continuation In Part (CIP), or Divisional, allows you to claim the original application’s benefit and hence its filing date while also pursuing additional subject matter that is not covered by existing patents. Both Divisional and Continuation applications have exactly the same specifications as the original, which can’t be modified. A Continuation may be submitted with new claims provided they are supported by the specification. To pursue claims that were withdrawn due to a Restriction Requirement, a Divisional is filed.

The patent prosecution process for both Divisional and Continuation/CIP applications starts again. We have found that examiners respond to the continuation/divisional types of applications faster than original applications. The USPTO has summarized the prosecution of the patent application in the chart below, and we reproduced it for your convenience.