What Happens After Filing a Patent Application?

You filed your nonprovisional patent applicationapplication” at the United States Patent and Trademark Office (USPTO). Now what? Generally, the events after filing your application occur in three stages. These stages include an initial, middle, and end stage.

1. The Initial Stage

The initial stage includes events that occur upon filing your application up to receiving a substantive correspondence from the USPTO. The events include receiving an acknowledgment receipt, receiving a filing receipt, your ongoing duty to disclose, and waiting.

A. Acknowledgment Receipt

After your application is electronically filed, an acknowledgment receipt is displayed, which provides the time and the date the submission of the application was received at the USPTO as well as the bibliographic information and uploaded files of the documents filed.

B. Filing Receipt

Then your application is sent to the Office of Patent Application Processing (OPAP) for an initial review of completeness. The application is classified and assigned to an art unit for examination. The function of OPAP is to establish whether the application is “complete” and whether it is entitled to a filing date.

If your application is complete, a few weeks after filing your application a filing receipt identifying your application number and filing date is mailed. The filing receipt is proof that you have a patent pending, which allows you to start marketing your products as “patent pending.”

C. Duty to Disclose

If you have not done so, you must disclose to the USPTO any references (e.g., articles, patents, publications, prior art information, etc.) pertinent to the application. United States patent law places a duty on each individual associated with prosecuting the application to disclose to the USPTO information that may be material to the patentability of the invention. This duty runs until the application grants and issues.

These individuals include inventors, assignees associated with prosecution, and attorneys or agents who prepare and prosecute the patent application. The duty can be complied with by submitting the information to the USPTO in an Information Disclosure Statement (IDS). Such information may include publications, patents and poster presentations, as well as information relating to public use or sale of the invention in the United States, and knowledge derived from others in making the invention.

Duty to Disclosure

If you fail to disclose known references to the USPTO, your patent can be invalidated.

D. Wait

Your application is now ready to be examined. Applications are examined on a first come, first served basis, and how quickly an examiner will get to review your application varies depending on the complexity and technological area of the invention. On average, you should anticipate the wait to be at least 12 to 18 months, but likely longer.

Priority Examination

In some situations, you need or may want to receive quicker treatment from the USPTO. This time frame can be shortened if priority examination is requested and granted, which allows for a patent decision within 12 months, for a fee.

Patent Publication

During this time, your application may publish before being examined. Unless a non-publication request is filed, patent applications are automatically published after 18-months from their earliest effective priority date. The earliest effective priority date is the earlier of the patent application’s filing date or the filing date of an earlier patent application that a claim of priority is properly made to, such a provisional application or a foreign application.

When your patent application is published, the application is made publicly available for download and the file history for the patent application can be viewed by anyone using Public PAIR. This allows third-parties to see your patent application, the office actions, and all of your responses to those office actions. In addition, your published patent application can become prior art for any later filed patent applications by you or others.

2. The Middle Stage

The middle stage includes events that occur after receiving the filing receipt up to receiving a notice of allowance or abandonment of the application.

During a first phase (“the initial review phase”) of this stage, the examiner analyzes the claims of the application to determine whether the invention as claimed includes more than one invention. In a second phase (“the search phase”) of this stage, the examiner conducts a prior art search to search for references relevant to the invention. A third phase “the negotiation phase”) of this stage is a back and forth between the examiner and you (or your attorney) to determine whether your invention is patentable in view of the references found during the search phase. The phases can repeat (and likely do) until the application is allowed or abandoned. Taken together, the phases are typically referred to as patent examination or patent prosecution.

A. Initial Review Phase

Once the application is complete, the fees paid, and oaths or declarations are on file, you enter the initial review phase, and the examiner determines whether the application contains more than one invention that would require a separate search for each invention. Typically, an examiner will find that the application includes more than one invention if the claims fall into one or more technology classes and searching for prior art would require a search in different fields of technology.

At the USPTO, you are entitled to a single invention in an application. If there is more than one invention, the examiner issues a Restriction Requirement, and it will be necessary to elect one invention for initial examination. The other invention(s) can be pursued in a divisional application, which will receive the same filing date as the earlier filed application provided the divisional patent application is filed while the earlier filed application is pending.

B. Search Phase

Next, the examiner conducts a prior art search to search for references relevant to the claims to determine whether your invention, as recited by the claims, is new and otherwise meets the requirements for patentability.

C. Examination Phase

Then you begin the examination phase (“prosecution”), where you negotiate with the examiner to attempt to persuade the examiner that the claims recite subject matter that is patentable. How quickly your application makes its way through the examination phase depends on your goals, the desired scope of protection, the degree to which the subject matter area of the invention is crowded, how close your invention is to other inventions in the field, and the disposition of the examiner, among other such factors.

Non-final Office Action

Generally, negotiation begins when a first office action is received, which is likely a non-final office action that outlines whether the application includes allowable subject matter, and/or issues with the application. The issues can include objections and/or rejections.

Objections can be on the drawings, the specification, or the claims. The Examiner typically makes these objections when the formalities are not being observed, or if something is not clear from the application. Objections can usually be fixed by filing the appropriate amendments.

Rejections are on the claims and can be based on improper subject matter or lack of novelty. The rejections will include a recitation of the legal bases, including the references that the examiner is relying on (found during the search phase) and an explanation why the examiner believes the claims are rejected.

A response to each of the issues raised in the office action must be filed no later than six months after the date the office action was mailed. Typically, however, the examiner will set a shortened statutory period to respond, which for an office action is three months. In this situation, you can respond up to six months but only if you request and pay for an extension, which can be 1, 2, or 3 months. Extensions can get expensive, and the fees go up depending on how many months of extension you need.

Responding to the office action can include amending the claims to differentiate the claimed subject matter from the cited art, arguments that explain that the examiner’s interpretation of the cited art is incorrect, and/or arguments as to why the claims are different from the cited art.

Typically, your patent attorney provides you a recommendation for responding to the office action. The recommendation should clearly state any issues raised by the examiner, a recommended approach to overcome the issues, and if applicable the strategy corresponding to the recommended approach. Based on your feedback and/or approval of the recommendation, your patent attorney prepares and sends you a draft of the response for review. If changes are needed, your attorney makes the changes and files the response when you’re satisfied.

Final Office Action

After responding to the first office action, the examiner may issue a second office action, which can be made final. A final office action does not mean that examination is over. Again, the office action outlines whether the patent application includes allowable subject matter, and/or issues with the application.

RCE

Although the office action is made “final,” there is still an opportunity to respond to the final office action. For example, if no claims are allowed after responding to final Office Action, a Request for Continued Examination (RCE) can be filed, which restarts prosecution (i.e., the examiner can mail another office action), or a decision can be made to appeal a final rejection by the examiner, if the examiner maintains a position which is incorrect under the law.

Appeal

The appeal goes to the USPTO’s Patent Trial and Appeal Board (PTAB). In a small number of cases, the cited references cannot be overcome, or doing so greatly limits the scope of the claims such that the claims are of limited value, and the application is abandoned.

3. The End Stage

Notice of Allowance

If some claims are allowed, you can either have the allowed claims issue or file an RCE. If you have the allowed claims issue, the USPTO sends a notice of allowance. A fee for issuing the patent is due within three months from the date of the notice. When the issue fee is paid, the patent issues about four weeks after the date of payment. The patent grant is mailed on the issue date of the patent.

Questions or Suggestions?

It’s important to me that this article is helpful to you. If you have any questions on the article or suggestions for further clarification, please reach out to me and let me know.

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