Path Of A Patent Application Once Filed With The USPTO

As a patent attorney with over 20 years of working with patent examiners and with startups, I often have to explain to founders the winding path of a patent application through the US Patent and Trademark Office (USPTO). Once a patent application is filed with the USPTO, the patent application typically follows the following path:

1. Examination: The USPTO will assign a patent examiner to review the application and determine if it meets the legal requirements for a patent.
2. Prosecution: If the examiner determines that the application has deficiencies, they will issue an Office Action, which the applicant must respond to within a set timeframe. This process of back-and-forth between the applicant and the examiner is known as prosecution.
3. Allowance or rejection: If the examiner determines that the application meets the requirements, they will issue a Notice of Allowance, and the applicant must pay issue fees to have the patent granted. If the examiner determines that the requirements are not met, they will issue a final rejection.
4. Maintenance: Once a patent is granted, the owner must pay maintenance fees at regular intervals to keep the patent in force.

Note: The process of obtaining a patent can be complex and time-consuming, and it may take several years from the date of filing to receive a final decision. It is advisable to work with a patent attorney to help navigate the process.

What happens with the initial review when case is filed?

When a patent application is filed with the US Patent and Trademark Office (USPTO), the initial review involves several steps:

1. Formality review: The USPTO checks the application to ensure that it meets the basic requirements for filing, such as proper format and payment of fees.
2. Substance review: If the application passes the formality review, a patent examiner will be assigned to conduct a substantive review of the application to determine if it meets the legal requirements for a patent.
3. Search: The examiner will conduct a search of existing patents and published literature to determine if the invention claimed in the application is novel and non-obvious.
4. Initial examination: Based on the results of the search, the examiner will issue an initial examination report, known as an Office Action, indicating any deficiencies or objections to the application.

The initial review process typically takes several months to a year from the date of filing, and it is an important step in determining whether a patent will be granted. The outcome of the initial review may impact the overall prosecution of the case and the chances of obtaining a patent.

how long does the case wait for examination

The waiting time for examination of a patent application filed with the United States Patent and Trademark Office (USPTO) can vary depending on several factors, such as the type of technology, the complexity of the invention, the workload of the examiner, and the priority status of the application.

On average, it takes about 18 to 24 months for a patent application to receive a first office action, or a first rejection, from the examiner. However, the waiting time can be longer or shorter, depending on the factors mentioned above. For example, if the application is a high-priority application, such as a provisional or utility application with a special status, it may receive examination sooner.

Once the application is assigned to an examiner, the examination process can take several months or even years, depending on the complexity of the invention and the number of rejections and objections raised by the examiner. The examination process may also involve multiple office actions, interviews with the examiner, and appeals to the Patent Trial and Appeal Board (PTAB).

In general, the examination process can be a long and complex process, and the waiting time for examination can be an important factor to consider when applying for a patent. If the waiting time is a concern, an applicant may consider hiring a patent attorney or agent to help expedite the examination process.

what Are the odds of a first office action allowance?

The odds of a first office action allowance, or the likelihood that a patent application will be allowed after the first rejection, vary greatly depending on the technology area, the complexity of the invention, the quality of the application, and other factors. There is no set percentage or probability that can accurately predict the odds of a first office action allowance, but in my experience it is around 5-10%.

In general, the likelihood of a first office action allowance depends on several factors, such as the thoroughness of the prior art search, the quality of the claims, the completeness of the specification, and the skill of the applicant or the patent attorney in responding to the rejection.

In some technology areas, the first office action allowance rate may be relatively high, such as in certain mechanical or electrical arts. In other technology areas, such as biotechnology or computer software, the first office action allowance rate may be lower.

It is also important to note that the odds of a first office action allowance can change over time, as the examination process and the law evolve.

Given the variability of the odds of a first office action allowance, it is important for an applicant to carefully consider the strengths and weaknesses of their application before filing and to prepare a thorough and well-supported patent application to increase their chances of success. Hiring a patent attorney or agent can also help increase the odds of a first office action allowance.

What happens in a first office action Rejection?

An Office Action is a written communication from the Patent Office. It will typically include the grounds of rejection. It will also provide a summary of the conclusions of the Patent Examiner. It will usually set a short response period such as 3 months.  All office actions must be responded to within six months from the mailing date or the case is abandoned.

A first rejection, also known as a first office action, is a response from a patent examiner to a patent application filed with the United States Patent and Trademark Office (USPTO). It is the first substantive communication from the examiner to the applicant and outlines any deficiencies or issues with the patent application that must be addressed for the application to proceed.

During the first rejection, the examiner may raise objections or rejections based on various grounds, such as:

1. Lack of compliance with formal requirements, such as proper naming of the inventor, proper drawings, and proper claims format.
2. Lack of novelty and non-obviousness, as required by 35 U.S.C. 102 and 103.
3. Insufficient written description, enablement, and best mode, as required by 35 U.S.C. 112.
4. Rejection of certain claims due to prior art references.

The applicant must respond to the first rejection within a certain period of time, typically six months, by either amending the application to address the deficiencies or by arguing against the rejections. The applicant may also request an interview with the examiner to discuss the issues and potential solutions.

When responding to an Office Action, an applicant will be expected to address any objections raised by the Patent Examiner. The most common Office Actions include claim rejections, but there are other types of Office Actions such as double patenting rejections.

If the applicant does not respond or does not address the deficiencies, the application may be abandoned or rejected. If the applicant successfully addresses the deficiencies, the examiner may issue a notice of allowance, and the patent will be granted after payment of the issue fee. If the deficiencies are not fully addressed, the examiner may issue a subsequent office action, and the examination process will continue.

What is a drawing objection?

A drawing objection is a deficiency or issue with the drawings accompanying a patent application that has been identified by a patent examiner during the examination process. The drawings play a crucial role in the patent application because they provide a visual representation of the invention, which helps the examiner understand the invention and the claimed features.

A drawing objection may arise due to various reasons, such as:

1. Lack of clarity: The drawings may not clearly and accurately depict the invention, or they may be missing important details.
2. Inconsistency with the description: The drawings may not match the description of the invention in the specification.
3. Inadequate views: The drawings may not provide enough views of the invention to fully understand its structure and operation.
4. Incomplete or incorrect information: The drawings may contain incorrect information, such as incorrect dimensions, or they may be missing important information, such as cross-sectional views.

If a patent examiner raises a drawing objection, the applicant must respond and address the issue to have the patent application proceed. Failure to respond or address the objection may result in the application being rejected.

What is a Section 112 rejection?

A Section 112 rejection is a type of rejection issued by a patent examiner during the examination process in the United States Patent and Trademark Office (USPTO). It refers to a rejection based on 35 U.S.C. 112, which sets forth the requirements for the written description, enablement, and best mode of a patent application.

A Section 112 rejection can occur for several reasons, such as:

1. Insufficient written description: The patent application may not provide a sufficient description of the invention to enable a person skilled in the art to make and use the invention.
2. Inadequate enablement: The patent application may not enable a person skilled in the art to make and use the invention, either because it does not provide enough detail or because the steps described are not feasible.
3. Lack of best mode disclosure: The patent application may not include a disclosure of the best mode of carrying out the invention known to the inventor at the time of filing.

If a patent examiner issues a Section 112 rejection, the applicant must respond and address the deficiency in the application to have it proceed. The applicant may need to provide additional information, amend the claims, or make other changes to the application to overcome the rejection. Failure to respond or address the rejection may result in the application being abandoned or rejected.

What is a Section 102 rejection?

A Section 102 rejection is a type of rejection issued by a patent examiner during the examination process in the United States Patent and Trademark Office (USPTO). It refers to a rejection based on 35 U.S.C. 102, which sets forth the requirements for novelty of a patent application. The 102 rejection requires that each and every element of the claimed invention is found in the four corners of a reference such as another patent.

If a patent examiner issues a Section 102 rejection, the applicant must respond and address the deficiency in the application to get allowance. The applicant may need to provide arguments or additional evidence to demonstrate that the claimed invention is novel and non-obvious in light of the prior art. Failure to respond or address the rejection may result in the application being abandoned or rejected.

To overcome a Section 102 rejection, the applicant must show that the claimed invention is novel over the prior art cited by the examiner. One way to do this is to argue that the prior art reference does not disclose or teach each and every element of the claimed invention, or that there are important differences between the prior art and the claimed invention that make the latter novel.

It may also be possible to overcome a Section 102 rejection by showing that the prior art reference is not enabling, meaning that it does not provide sufficient information or guidance to someone skilled in the art to make or use the claimed invention.

In any case, it is important to clearly and concisely present the arguments and evidence to support the patentability of the claimed invention and overcome the Section 102 rejection. Hiring a patent attorney or agent can help the applicant prepare a strong and effective response and increase their chances of success.

What is a Section 103 rejection?

A Section 103 rejection is a type of rejection issued by a patent examiner during the examination process in the United States Patent and Trademark Office (USPTO). It refers to a rejection based on 35 U.S.C. 103, which sets forth the requirement for non-obviousness of a patent application.

A Section 103 rejection occurs when the claimed invention would have been obvious to a person having ordinary skill in the art based on the combination of prior art references or by the modification of a single reference. In other words, the claimed invention is considered not non-obvious when compared to the prior art.

If a patent examiner issues a Section 103 rejection, the applicant must respond and address the deficiency in the application to have it proceed. The applicant may need to provide arguments or additional evidence to demonstrate that the claimed invention is non-obvious in light of the prior art. Failure to respond or address the rejection may result in the application being abandoned or rejected.

The Graham factors are a set of considerations that the United States Patent and Trademark Office (USPTO) uses to determine whether an invention is obvious or non-obvious under 35 U.S.C. § 103. The Graham factors include:

1. The scope and content of the prior art.
2. The differences between the claimed invention and the prior art.
3. The level of ordinary skill in the relevant field.
4. Secondary considerations, such as commercial success, long-felt but unsolved needs, and failure of others.

To use the Graham factors and show that your invention is not-obvious, you should address each of the factors and provide arguments and evidence to support your position. Here are some general steps:

1. Review the prior art: Carefully review the prior art cited by the examiner to determine its scope and content.
2. Identify the differences between the claimed invention and the prior art: Identify the differences between the claimed invention and the prior art, and describe why these differences are important.
3. Show the level of ordinary skill in the relevant field: Provide evidence of the level of ordinary skill in the relevant field and why the claimed invention would not have been obvious to someone with that level of skill.
4. Address secondary considerations: Address any secondary considerations that support non-obviousness, such as commercial success, long-felt but unsolved needs, and failure of others.
5. Present a clear and concise argument: Clearly and concisely present your argument, highlighting the most important points and evidence.

To overcome a Section 103 rejection based on the argument that the prior art references are not properly combinable or fail to function when combined, you can provide arguments and evidence to show that the claimed invention is non-obvious over the prior art. Here are some general steps:

1. Review the rejection: Carefully read the rejection to understand the examiner’s objections and the prior art cited by the examiner.
2. Evaluate the prior art references: Evaluate the prior art references cited by the examiner to determine whether they are properly combinable or fail to function when combined.
3. Present arguments and evidence: Present arguments and evidence to show that the claimed invention is non-obvious over the prior art. This may include showing that the prior art references are not properly combinable, or that they fail to function when combined, or that the claimed invention includes additional elements or a unique combination of elements that make it non-obvious.
4. Consider amending the claims: If necessary, consider amending the claims to better distinguish the claimed invention from the prior art and make the invention non-obvious.

how to respond to the rejections

To respond to a rejection in a patent application filed with the United States Patent and Trademark Office (USPTO), the applicant must prepare and file a reply to the office action, which is the rejection from the examiner. The reply should address each of the objections and rejections raised by the examiner, and provide evidence and arguments to support the patentability of the invention.

Here are some general steps for responding to a rejection:

1. Review the rejection: Carefully read the rejection to understand the examiner’s objections and rejections. Highlight the key points and make notes on any questions or concerns you have.
2. Study the cited prior art: Review the cited art to find any discussions that may support your invention or refute the examiner’s objections and rejections.
3. Prepare arguments and amendments: Prepare arguments and amendments to address each of the examiner’s objections and rejections. Your arguments should clearly explain why your invention is novel and non-obvious, and why it satisfies the requirements of the patent law.
4. Draft a response: Draft a response to the rejection that includes your arguments, amendments, and any supporting evidence. Your response should be clear, concise, and well-organized.
5. File the response: File your response with the USPTO, along with any supporting documents and amendments.
6. Wait for a new office action: After filing your response, you will receive a new office action from the examiner indicating whether your response was accepted or rejected.

In general, responding to a rejection can be a complex and time-consuming process, and it is important to carefully consider your options before responding. Hiring a patent attorney or agent can help you prepare a strong and effective response and increase your chances of success.

What happens after your file the response to the first office action?

After filing a response to the first office action in a patent application filed with the United States Patent and Trademark Office (USPTO), the examiner will review the response and consider the arguments and amendments made by the applicant.

Based on the response, the examiner will either allow the application and issue a notice of allowance, or issue a new office action with additional objections or rejections. If the application is allowed, the applicant will be required to pay issue fees and any maintenance fees to keep the patent in force.

If the examiner issues a new office action, the applicant will have the opportunity to respond again, either by filing amendments, arguments, or new evidence, or by taking other actions, such as filing a Request for Continued Examination (RCE) or an appeal to the Patent Trial and Appeal Board (PTAB).

In general, the examination process can be complex and time-consuming, and it is important for the applicant to carefully consider their options before responding to each office action. Hiring a patent attorney or agent can help the applicant navigate the examination process and increase their chances of success.

how a patent examiner earns points for working on an application

The United States Patent and Trademark Office (USPTO) has a performance evaluation system that is used to evaluate the performance of patent examiners. The system is designed to incentivize examiners to work efficiently and effectively, and to reward high-performing examiners.

One of the ways in which a patent examiner can earn points under the USPTO’s performance evaluation system is by working on patent applications. Specifically, examiners earn points for:

1. Examining patent applications: Examining and processing patent applications is the primary way in which examiners earn points under the USPTO’s performance evaluation system. The number of points earned is based on the complexity of the application and the amount of time it takes to process.
2. Meeting performance goals: Examiners can earn additional points by meeting performance goals that are set by the USPTO. These goals may include, for example, completing a certain number of applications within a certain time period, or achieving a high level of accuracy in their work.
3. Engaging in training and professional development: Examiners can also earn points by participating in training and professional development opportunities. This helps them to maintain their knowledge of patent law and to improve their skills as examiners.

The points earned by examiners under the USPTO’s performance evaluation system are used to evaluate their performance and to determine their eligibility for promotions, bonuses, and other incentives. The system is designed to provide examiners with a clear understanding of their performance and to encourage them to work efficiently and effectively. The net effect you need to understand is that examiners don’t get lots of rewards to review a response to a final rejection and thus you are likely to get an advisory action, but nevertheless you should try to move the case forward as best as possible.

What happens in a final rejection?

A final rejection is a response from a patent examiner to a patent application filed with the USPTO indicating that the examiner has made a final determination that the claimed invention is not eligible for a patent. A final rejection is issued after the applicant has had an opportunity to respond to one or more office actions, which are earlier rejections of the patent application, and the examiner has considered the applicant’s arguments and amendments.

The final rejection typically recycles the grounds for not granting a patent, often using new references if you amended your claims in the prior art that show the claimed invention is not novel or non-obvious. The final rejection may also raise ground that the applicant has not provided a sufficient written description or enablement of the invention, as required by law.

You can address the rejection with an after final response. If the case is close, the examiner can grant allowance. Alternatively, the examiner will send out an advisory action indicating that the case is not allowed and you can appeal if you want. When you file the after final response, you may want to file that with an AFCP request to give the examiner a few more hours to work on the case.

advantages of aFCP request

An After Final Consideration Pilot Program 2.0 (AFCP 2.0) request is a program offered by the United States Patent and Trademark Office (USPTO) that allows applicants to request continued examination of a patent application after a final rejection. The AFCP 2.0 program offers several advantages, including:

1. Faster Examination: The AFCP 2.0 program provides a faster examination process compared to other post-final options, such as filing a Request for Continued Examination (RCE) or an appeal to the Patent Trial and Appeal Board (PTAB).
2. Increased Chance of Allowance: The AFCP 2.0 program provides applicants with the opportunity to present additional arguments and evidence to overcome a final rejection. This increased opportunity can result in a higher chance of allowance for the application.
3. Reduced Costs: Filing an AFCP 2.0 request is generally less expensive than filing an RCE or an appeal.
4. Improved Communication: The AFCP 2.0 program provides for improved communication between the applicant and the examiner. The examiner is able to provide feedback on the applicant’s arguments and evidence, and the applicant can respond in a timely manner.
5. Streamlined Process: The AFCP 2.0 program provides a streamlined process for overcoming final rejections. The process is less formal and less time-consuming than an RCE or an appeal.

Overall, the AFCP 2.0 program offers a faster, less expensive, and more streamlined alternative for applicants seeking to overcome final rejections in their patent applications. However, it is important to carefully consider the specific circumstances of each case before deciding whether to file an AFCP 2.0 request.

If a patent application receives a final rejection, the applicant has the option to appeal the rejection to the Patent Trial and Appeal Board (PTAB), or to request continued examination of the application with the examiner. The applicant may also amend the application to address the deficiencies and resubmit it for examination using an RCE as detailed bleow.

If the final rejection is not appealed or the appeal is unsuccessful, the patent application may be abandoned or withdrawn. In some cases, the applicant may file a new continuation patent application with different or revised claims.

A final rejection can be a significant and time-consuming event in the patent examination process, and it is important for an applicant to carefully consider their options before responding to a final rejection. Hiring a patent attorney or agent can help the applicant navigate the examination process and increase their chances of success.

RCE v appeal

A Request for Continued Examination (RCE) and an Appeal are two different options for overcoming rejections in a patent application.

A Request for Continued Examination (RCE) is a request made to the examiner to continue the examination of a patent application after a final rejection. An RCE allows the applicant to present additional arguments or evidence in an effort to overcome the final rejection.

An Appeal, on the other hand, is a formal request to have a decision made by the examiner reviewed by the Patent Trial and Appeal Board (PTAB). An appeal is typically used when the applicant believes that the examiner has made an error in the rejection of the application.

Both an RCE and an Appeal can be used to overcome rejections in a patent application. The choice between the two will depend on the specific circumstances of the case and the goals of the applicant.

In general, an RCE may be a quicker and less expensive option, as it allows the applicant to continue working with the examiner to resolve the issues with the application. An appeal, on the other hand, may be necessary when the applicant believes that the examiner has made an error that cannot be resolved through further discussion or negotiation. Once to pay the RCE fees, your case is reset and the next office action will be a first office action, and you rinse and repeat the process until you get allowance or the case is abandoned.

pre-appeal request

If you choose to appeal, you may want to consider the pre-appeal option. A pre-appeal request is a request for reconsideration made to the examiner prior to filing an appeal with the Patent Trial and Appeal Board (PTAB). The advantages of making a pre-appeal request include:

1. Opportunity to resolve issues before appeal: A pre-appeal request provides an opportunity to resolve any issues with the examiner before proceeding to the more formal and time-consuming appeal process.
2. Avoidance of appeal fees: Filing a pre-appeal request can avoid the cost and fees associated with the appeal process.
3. Improved communication with the examiner: Making a pre-appeal request can provide an opportunity for improved communication with the examiner, allowing for a more focused and productive discussion of the issues.
4. Quicker resolution of the case: By avoiding the appeal process, a pre-appeal request can result in a quicker resolution of the case.
5. Better understanding of the examiner’s position: Making a pre-appeal request can provide a better understanding of the examiner’s position and what will be necessary to overcome the objections, making it easier to craft a more effective response.

Overall, making a pre-appeal request can provide an opportunity to resolve issues with the examiner and avoid the more formal and time-consuming appeal process, while still preserving the ability to appeal if necessary.

what is in an appeal brief?

An appeal brief is a written argument submitted to the Patent Trial and Appeal Board (PTAB) as part of an appeal of a decision made by an examiner during the examination of a patent application. An appeal brief typically includes the following components:

1. Introduction: A brief introduction that sets out the background and purpose of the appeal.
2. Statement of Jurisdiction: A statement that the PTAB has jurisdiction to hear the appeal.
3. Summary of Relevant Facts: A summary of the relevant facts of the case, including a brief overview of the technology and the history of the examination of the application.
4. Statement of Issues: A clear and concise statement of the issues that are being appealed, including the specific rejections that are being challenged.
5. Arguments: A clear and concise presentation of the applicant’s arguments as to why the rejections made by the examiner are in error. This section may include references to case law and other authorities, as well as any additional evidence or arguments that support the applicant’s position.
6. Conclusion: A concise summary of the arguments made in the appeal brief and a request for relief, such as a reversal of the examiner’s rejections or a remand of the case to the examiner for further consideration.
7. Appendices: Any additional documents or evidence that support the arguments made in the appeal brief, such as declarations, expert reports, or relevant portions of the file history.

An appeal brief should be well-organized, clearly written, and succinct, and should make a compelling argument as to why the examiner’s rejections are in error. It is important to address each of the issues raised by the examiner and to present a clear and persuasive argument as to why the rejections should be reversed.