An applicant secures a patent after successfully prosecuting the patent application at the United States Patent and Trademark Office (USPTO). When the USPTO believes an application embodies an invention worthy of a patent, the USPTO grants a Notice of Allowance. Generally, several milestones mark the road to securing patent rights: (1) patentability search, (2) application filing and Notice of Acceptance, (3) Office Actions (if any), and hopefully (4) a Notice of Acceptance. On the other hand, if the USPTO does not issue a Notice of Allowance, (5) other strategies may be sought in the pursuit of a patent. Given the complexities of patentability searches, patent drafting, and patent prosecution, consulting with an attorney at TraskBritt can streamline and provide strategies in pursuing a patent and protection of your intellectual property rights.
Overall, the amount of time it takes to acquire a patent varies based on the field of technology and on the type of application, which may be a provisional, design, utility, or plant application. For fields where the technology develops quickly, the examination process may take longer because more patents are being processed at the USPTO and Examiners must look through more potential prior art references. For example, a design patent will tend to take about one to two years to acquire a Notice of Allowance, while the standard utility patent may take anywhere from one to five years. Furthermore, the number of patent applications received at the USPTO reached a historic high of 621,453 patent applications in 2019!
Patentability Search
Prior to spending the time, energy, and effort involved in patent drafting, spending some time understanding the landscape of the field of the invention relating to an inventor’s particular invention is worthwhile. Understanding what inventions exist will determine the inventiveness (or novelty) of the inventor’s work. Furthermore, the results of the search may determine what type of protection will best suit the inventor’s needs. A search may take a day or up to a week. See also a previous discussion on the potential patentability of an invention: https://traskbritt.com/u-s-patent-office-issues-updated-patent-eligibility-guidance/
Draft and file the application
If the patentability search demonstrates that the inventor’s invention is not substantially similar in scope or design to an existing patent, an inventor and his/her representative at the patent office may begin to draft an application. The inventor may elect to file either a provisional or non-provisional application. A provisional application allows an Applicant to obtain a filing date without submitting a fully drafted non-provisional application (i.e. a utility, plant, or design application). A provisional may be beneficial for obtaining an earlier filing date, from which a non-provisional application may claim priority. A non-provisional must be converted into a utility application within 12 months, otherwise, the provisional application will go abandoned. Should the provisional go abandoned, a later utility application cannot claim priority from that provisional application. See a previous discussion on whether you should file a provisional or non-provisional application here: https://traskbritt.com/should-i-file-a-provisional-patent-application-or-utility-patent-application/
If you choose to pursue a provisional patent application, consider a previous discussion where we explore avenues for success with provisional patent applications: https://traskbritt.com/provisional-patent-application-strategies-for-success/
Office Actions
Upon the submission of an application, the application will be sent to an art group at the USPTO. An art group is a group of patent examiners that examine a particular field or sub-field of technology. At this point, depending on the field of technology, it may take anywhere from as little as three months to over a year to get a response from the USPTO. If the Examiner finds that the patent application does not satisfy the statutory requirements set forth in 35 U.S.C. §§ 101-103 and 112, the Examiner will issue an “Office Action” in response. The Office Action will list the Examiner’s rejections as to the claims or objections for other formalities (e.g. mislabeled figures). Typically the Applicant, who is usually represented by a patent attorney or patent agent, will be given 3 months to respond from the mailing date of the Office Action. Sometimes this may be shortened to 2 months or as long as 6 months. In this response, the Applicant may argue why the rejections are improper, amend, or cancel the claims in the application.
In the U.S. the applicant gets two bites at the apple: should the Examiner reject the Applicant’s response, the Examiner issues a second Office Action that is usually a Final Office Action. The Applicant can argue the Examiner’s rejections and amend the claims, although the claims will not be entered as a matter of right (i.e. the Examiner can choose to either allow or reject the amendments in the Final Office Action). The Applicant has 6 months to respond, and failure to respond will result in automatic abandonment of the patent application. See also “Other Strategies” below for possible trajectories if the Examiner rejects the Applicant’s arguments in the Final Office Action.
Notice of Allowance
A Notice of Allowance indicates that the USPTO has accepted the patent application as satisfactory for obtaining a patent in the U.S. Ideally an applicant receives a Notice of Allowance after submission of the patent application. However, more frequently the Applicant will respond to at least one Office Action before receiving a Notice of Allowance.
The Notice of Allowance will set forth the issue fee and a required publication fee, both of which must be paid within three months from the mailing date of the Notice of Allowance. Failure to pay will result in the abandonment of the patent application, and this period cannot be extended. MPEP § 1303.
Other Strategies
In the event that the Examiner rejects the applicant’s arguments in response to the Final Office Action, the applicant has several options:
- File a Request for Continuing Examination (RCE, under 37 CFR 1.114)
- File a Continued Prosecution Application (CPA, for design patents only under 37 CFR 1.53(d))
- File a Continuation Application (MPEP § 201.07)
- File a Continuation-in-Part Application (MPEP § 201.08)
- Appeal (MPEP § 1200)
Pursuing either an RCE or CPA essentially allows the prosecution to carry forward. The Examiner may issue another Office Action in response to the applicant’s response to the Final Office Action. This amounts to receiving a potential third-office action.
Filing a continuation or continuation in part application restarts the patent application process (i.e. return to Step 2). The continuation or continuation in part may claim priority from the originally filed patent application. After the continuation or continuation in part is filed, the originally filed patent application will be abandoned. The applicant awaits a third Office Action.
Another option is for the applicant to file an appeal to the Patent and Trademark Board of Appeals (PTAB). The applicant submits an appeal brief to the PTAB (37 CFR § 41.37), who then considers the arguments and prosecution history of the patent application. If successful, the applicant receives a Notice of Allowance. Otherwise, the Applicant must consider whether filing a continuation or continuation in part is a worthwhile option.
COVID Update
In light of COVID 2019, the USPTO remains open and continues to examine patents. There is an additional deferred fee program for applications relating to inventions that combat COVID-19. There are additional fee adjustments for small and microentities as well as deadline extensions with the Patent Trademark and Appeals Board (PTAB). For more information and updates on how COVID-19 has affected (or not) patent examinations at the USPTO, please visit the USPTO website.
In light of the complexities of patent prosecution, consider consulting the experienced patent attorneys at TraskBritt for assistance in navigating the path to obtaining a patent. https://traskbritt.com/contact-us/