The Patent Process

How Long Does it Take to Get a Patent?

The process to get a patent is, unfortunately, not a fast process and can take anywhere from a year to five or six years, or longer depending on how your application is filed and what the backlog is at the US Patent and Trademark Office (USPTO) for your particular technology. As of July, 2022, the USPTO estimates the average time for the USPTO to issue the first Office Action is 20.4 months. The first office action indicates that the negotiation period with the patent examiner is beginning. You can expedite your patent application to have the examination completed within one (1) year by filing an additional government fee. Because the time and money savings associated with expedited patent applications, you should definitely include them as part of your patent strategy. Please discuss options for filing an expedited patent application with your patent attorney.

Does a Rejection Mean Something is Wrong or I Won’t Get a Patent?

No. After the patent application is filed, the USPTO reviews the application to confirm that all of the paperwork rules have been followed, and then a patent examiner examines the patent claims for novelty and non-obviousness. An office action is an explanation of the patent examiner’s best case for why the patent should not be patented. But it is not the end of the application, it is more an invitation to negotiate the patent claims with the examiner. For more information about office actions, please see the related article Understanding Patent Office Actions. In short for purposes of this article, however, when the USPTO issues an office action, the owner, inventors and their patent attorney review the office action and can then take any of several possible paths to responding to the office action.

First, call the examiner and discuss the rejection prior to filing a response.

Second, prepare and file a response to the office action rebutting the rejection and/or amending the patent claims to overcome the rejection.

Third, in some cases, and it generally is not the best option, you can re-file the application as a new application that includes more detail about your invention if something is missing that would help you overcome the rejection.

Last, if, after review, you decide that the patent examiner is right and there is nothing novel in the application, you can let the application go abandoned.

Once a “final office action” is received, there are also other options for filing an a request for continued examination or an appeal to continue your patent application process.

A typical office action allows for up to three (3) months to file an appropriate response, with up to an additional three (3) months of possible extension time with payment of additional fees. A patent examiner typically reviews the response within 2-4 months after filing, though that review time can vary considerably.

Notice of Allowance, Issue Fee Payment and Patent Grant

Once the patent owner and the patent examiner come to agreement on an allowable scope of the patent claims, the USPTO issues a Notice of Allowance that gives a three (3) month window to pay the issue fees. After the issue fees are paid, it is typically another 6-8 weeks before the patent is granted. More information about these parts of the process are discussed in the articles titled Patent Issue Notification and Patent Grant Notice.

Patent Monitoring, Enforcement and Maintenance

To enjoy the greatest value from your patent, in addition to using it in your marketing and on your products, you should monitor your competitors and your commercial market to identify patent infringers. Your patent attorney can help you understand what to look for and how to understand your patent to know what to bring to your attorney for review.

To keep your patent alive and enforceable, however, remember to pay the patent maintenance fees at 3.5, 7.5 and 11.5 years from the patent issuing. If you miss a maintenance fee, your patent expires and anyone can now use the inventions in your patent without worry of infringement. Paying the maintenance fees correctly is critical to maintaining your patent rights.

Intellectual Property rights are a large portion of the value of a company, and for many companies, patents are critical to protecting their business markets and giving them a significant market advantage. Please contact a qualified professional at Booth Udall Fuller, PLC with any questions you may have about optimizing the timing of your patents for your company, strategies for establishing and protecting your market monopoly through patents, and any other intellectual property protection or strategy needs.