The process by which a patent is obtained is referred to as patent prosecution. Patent prosecution begins with the filing of a patent application. There are several kinds of patent applications that can be filed, but that discussion is beyond the scope of this particular article (see my article titled “Frequently Asked Questions for New Inventors”). This discussion will focus on the process for obtaining a patent after a non-provisional patent application is filed.
Typically, the inventor(s) and/or the companies that employ them will apply for a patent. Once drafted, the application is filed electronically through the United States Patent and Trademark Office’s (USPTO’s) Electronic Filing System, or EFS, for short. It is still possible to paper file an application, but there is currently a $400 surcharge that is required when not filing electronically. The USPTO does not generally want to encourage you to send them more paperwork. As a matter of fact, all documents filed during patent prosecution can and should be filed through EFS.
Once the patent application is filed, the Office of Patent Application Processing (OPAP) will review the filing to make sure that it complies with the USPTO’s minimum filing requirements, i.e., they examine the application to ensure that it appears to be complete. If they find something amiss, they will issue either a Notice to File Missing Parts or a Notice to File Corrected Application Papers inviting the applicant to correct the deficiency. Once OPAP has determined the application has met the minimum filing requirements, they will issue an Official Filing Receipt (OFR) notifying the applicant that they have obtained a filing date.
Next the application is forwarded to a Patent Examiner in the appropriate Art Unit. In due course, the Patent Examiner reviews the application and orders a prior art search based upon the claims in the application. Then the Patent Examiner will review the application in light of prior art discovered and will issue a notice to the applicant (or their attorney of record). If the Patent Examiner determines at any point in this process that the claims in the patent application are allowable, then they will issue a Notice of Allowance inviting the applicant to pay the required issue fee prior to the patent issuing.
However, the overwhelming majority of patent applications are rejected by the Patent Examiner at least once. The first rejection is typically referred to as a Non-Final Office Action. The office action will identify the prior art references the Patent Examiner has found and determined are relevant to patentability and will cite these references in the Office Action along with the Patent Examiner’s reasoning for rejecting the claims. An applicant has three months from the date of the Non-Final Office Action to file a response and if they are willing to pay the appropriate extension of time fees, they can obtain another three months to respond.
After the response is filed, if the Patent Examiner decides the claims are still not allowable they will issue another Office Action. Most of the time, the second office action is referred to as a Final Office Action. Again, the applicant has three months to file a response and can pay for an additional three months if they choose to do so. If the Patent Examiner does not allow the claims after the response to the Final Office Action, they will issue an Advisory Action. The due date for the Advisory Action is actually the same due date for responding to the Final Office Action and as a result, can actually pass prior to the Advisory Action being issued. That is why it is advisable to file the response to the Final Office Action at least a month prior to the deadline to allow the Patent Examiner time to issue the Advisory Action prior to the deadline.
The Advisory Action will indicate whether the amendments to the claims made in the response to the Final Office Action have been entered. Unless the Patent Examiner determines that the claim amendments are too extensive and will require another search, they will enter the amendments into the prosecution record. At this stage, if the applicant wants to continue prosecuting their application, they will file a Request for Continued Examination (RCE) with the appropriate fee. After doing so, the Examiner will review the claim amendments and issue another Non-Final Office Action and the process will repeat until either (1) the patent is allowed and a Notice of Allowance issues (2) the applicant gives up and stops filing responses allowing the application to go abandoned or (3) the applicant has reached the USPTO’s limit for the number of RCEs they can file.
Upon receiving a Notice of Allowance, the applicant files a form and pays the appropriate fee and waits for the patent to issue from the USPTO. The USPTO will issue Letters Patent and will physically mail the patent to the applicant.
Patent prosecution is a somewhat convoluted process especially to the uninitiated. Consult with a registered patent attorney to discuss how best to navigate this process.