The Patent Process

Filed applications accepted as complete are taken up for examination in the order they were filed by a Patent Examiner in the U.S. Patent and Trademark Office (USPTO) to whom they have been assigned. The examination of the application consists of a study of the application for compliance with statutory and case law requirements and a search through U.S. patents, publications of patent applications, foreign patent documents, and available literature, to see if the claimed invention is patentable (whether it is novel, useful and nonobvious and meets the requirements of the patent statute and rules of practice). If the examining attorney’s decision on patentability is favorable, a patent is granted. On the average, patents are granted for about two of every three applications filed.

Normally, around 18 – 30 months after filing, applications will receive a review by the Examiner who will issue a first Office Action detailing his decision regarding the allowability for patent of the application as filed. It is not uncommon for some or all of the initially filed claims to be rejected on the first Office Action by the Examiner; relatively few applications are allowed as filed. The reasons for any adverse action or any objection or requirement will be stated in the Office Action and the information or references given serve to help the inventor determine whether continuing to seek patent protection of the invention is advisable. Some of the reasons for rejection include an invention not directed to patentable subject matter or one which lacks novelty or differs only in an obvious manner from what is already disclosed in the prior art. Regardless, of the outcome of the Examiner’s action, we at BoothUdallsm will evaluate the first Office Action, advise you regarding the meaning of its content, and provide you with a recommendation and estimate of the cost of a response.

Responding to an Office Action generally entails the filing of an amendment with the USPTO that may modify the claims and/or rebut any rejections or objections made by the Examiner. It must be clearly pointed out why the amended claims are patentable in view of the state of the art disclosed by the prior references cited or the objections made and must also show how the claims as amended avoid such references or objections. Negotiations may also include a telephone or in-person interview with the Examiner.

After the initial Response, the application will be reconsidered, and you will be notified as to the status of the claims—that is, whether the claims are rejected or objected to, or whether the claims are allowed—in the same manner as after the first examination. On the second or later consideration, the Office Action may be made final. Responding to a final Office Action must include cancellation of each claim so rejected and, if any claim stands allowed, compliance with any requirement or objection as to form.

If the Examiner persists in the rejection of any of the claims in an application, you may appeal to the Board of Patent Appeals and Interferences. An appeal fee is required and a brief must be filed to support your position. An oral hearing will be held if requested upon payment of another specified fee. As an alternative to appeal, in situations where an applicant desires consideration of different claims or further evidence, a Request for Continued Examination (RCE) is often filed with its accompanying fee. At times, even after a continued examination, an appeal is still required.

If, on examination of the application, or at a later stage during the reconsideration of the application, the patent application is found to be allowable, a Notice of Allowance and Fee(s) Due will be sent. Issue and publication fees are due within three (3) months from the date of the Notice of Allowance. If timely payment of the fees is not made, the application will be regarded as abandoned. When the required fees are paid, the patent will issue as soon as possible after the date of payment, depending upon the volume of printing on hand in the USPTO. On the date of the patent grant, the patent file becomes open to the public, and the invention is now a matter of public record.
After a patent has issued, the USPTO has processes to ensure that only patents that inventors are still interested in remain active. Utility patents in particular are subject to the payment of maintenance fees to maintain the patent in force. These fees are due at 3.5, 7.5 and 11.5 years from the date the patent is granted. After 20 years from the filing date, the patent lapses and anyone can practice the identical invention disclosed. In this way, the patent process ensures that inventors have a limited monopoly right to exploit their inventions, but that after those inventions become widespread, market forces once again are permitted to lower costs to consumers and drive innovation.