Patent Prosecution and Responding to Office Actions

My goal is not simply to obtain a patent, but to obtain a patent which includes claims that are sufficiently broad to provide meaningful commercial protection for your invention. The claims of your patent application are intended to cover alternative ways to implement your invention. A competitor wishing to copy your invention without infringing your patent’s claims should not be able to do so without giving up some advantage which is protected by your patent’s claims.

After Your Patent Application Is Filed

Once your patent application is filed, you will first receive an electronic filing receipt, which simply acknowledges the documents received by the US Patent and Trademark Office, and provides the patent application serial number. The patent application and accompanying documents will then be examined to ensure that they comply with the requirements for receiving a filing date as well as the other requirements for a complete patent application. The patent application will also be reviewed to ensure that publication or foreign filing of the application would comply with the International Traffic in Arms Regulations of the Department of State, the Export Administration Regulations of the Bureau of Industry and Security, Department of Commerce, and the Assistance to Foreign Atomic Energy Activities Regulations of the Department of Energy.

Once this pre-examination processing is complete, you will receive an official filing receipt. If the national security and export control review is also complete at this time, then the filing receipt will include a statement that a foreign filing license has been granted. If a foreign filing license has not been granted, then you must wait at least six months before filing foreign patent applications. If no secrecy order is received after six months, then the foreign filing license is automatically granted.

If any items necessary for filing a patent application are missing, for example, a filing fee or signed inventor declaration, you will also receive a notice of missing parts. You then have the opportunity to supply the missing items within the specified time.

Once pre-examination processing is complete and any missing items are received, the application is placed in a queue for examination.

Responding to Office Actions

After your patent application is filed, we will typically have to wait at least a year before receiving a first office action. Depending on the technology, patent applicants must sometimes wait as long as two years for a first office action.

The vast majority of first office actions will be rejections. This is a normal part of the patent application process. Your patent lawyer drafted your claims to be as broad as reasonably possible based on the known prior art. The patent examiner will perform their own prior art search. The patent examiner will apply the broadest reasonable interpretation to the claims as they decide whether the claims of the patent application read on the prior art.

Your patent lawyer will then review the office action, as well as the references found by the patent examiner. After discussing recommendations with you, your patent attorney will then file an amendment. The amendment will contain both amendments to the claims of your patent application, as well as arguments explaining how the amendments overcome the rejections made in the office action.

The goal of the amendment is to amend your patent claims just enough to overcome the prior art relied upon for the rejections, while leaving them broad enough to provide commercially meaningful protection.

We will typically receive the next office action about three months after responding to the previous office action.

Patent Examiner Interviews

At any time during patent prosecution, it is normally possible to schedule an interview with the patent examiner assigned to your patent application. Once your patent lawyer has scheduled the interview, they will provide the patent examiner with a proposed amendment to the patent claims for review prior to the interview and discussion during the interview. The interview can be conducted by telephone or by video conferencing.

Interviews are often helpful for gaining a better understanding of the patent examiner’s viewpoint and concerns, as well as helping the patent examiner to understand the unique aspects and advantages of your invention. These discussions can often speed prosecution of your patent application, making a notice of allowance more likely.

Patent Appeals

In most cases, the patent examiner and patent attorney can reach agreement on the scope of allowable patent claims. However, if agreement with the patent examiner cannot be reached, an appeal can be filed with the Patent Trial and Appeal Board.

Once an appeal brief is filed, the patent examiner will discuss the issues raised with their supervisor as well as another patent examiner. In my experience, some cases can be won at this stage. Otherwise, the Patent Trial and Appeal Board will consider the briefs filed by applicant’s patent attorney as well as the patent examiner. Oral arguments can be requested if desired.

The wait for a decision on appeal is sometimes three years. However, this time will be taken into account when the patent term adjustment is calculated.

How Long Does It Take To Get a Patent?

The time required to obtain a patent can vary considerably.  A three year time period between filing a patent application and receiving an issued patent is very common. Particularly difficult cases can take longer, particularly if an appeal becomes necessary.

How Long Does a Patent Last?

Patents are valid for twenty years from their earliest filing date, subject to patent term adjustments. Patent terms are lengthened when an unusually long time is required to obtain the patent, subject to adjustments for delays attributable to the applicant.

In order to receive the full twenty year term, utility patent owners must pay maintenance fees to the US Patent and Trademark Office.  Maintenance fees are due at 3.5 years, 7.5 years, and 11.5 years from the issue date of the patent.  Maintenance fees are intended to ensure that patents are being used commercially, and to give others the chance to utilize the patented technology if the patent owner is not attempting to profit from the invention.

If your idea is worth bringing to market, it is worth protecting completely and properly with the broadest available claims. Please do not hesitate to contact me to discuss your idea.