One of the most common questions inventors and applicants have after determining whether to file a patent application, and what type, is what happens now after filing? Well, here’s a good summary of that process.
After a nonprovisional patent application is filed with the United States Patent and Trademark Office (“USPTO”), it will get assigned to a particular art unit in which the claimed invention falls under, and assigned to a particular examiner within that art unit where it is placed within the examiner’s queue of applications awaiting examination. After the examiner reviews and examines the application, there are a number of different things that may happen.
1. The examiner may issue a “Restriction.” If two or more inventions are claimed in a single application, and are regarded by the USPTO to be independent and distinct, such that a single patent should not be issued for both of them, the applicant will be required to limit the application to one of the inventions. This limitation is called an “election.” The other invention may be made the subject of a separate application which, if filed while the first application is still pending, will be entitled to the benefit of the filing date of the first application. A requirement to restrict the application to one invention may be made before further action by the examiner.
2. The examiner may issue an “Office Action.” An Office Action is a document that should outline one or more reasons the examiner believes the application is not in a proper or sufficient form and/or the claimed invention is not patentable. The Office Action is typically mailed to the inventor, or the attorney or agent of record. The reasons for any adverse action or any objection or requirement are stated in the Office Action and such information or references are given as may be useful in aiding the applicant to judge the propriety of continuing the prosecution of his or her application. If the claimed invention is not directed to patentable subject matter, the claims will be rejected. If the examiner finds that the claimed invention lacks novelty or differs only in an obvious manner from what is found in the prior art, the claims may also be rejected. It is not uncommon for some or all of the claims to be rejected on the first Office action by the examiner; relatively few applications are allowed as filed.
The Office Action may be “non-final” or may be “final.” Specifically, after the first Office Action, the rejection or other action may be made final. At that point, the applicant may then reply by filing an appeal with the Patent Trial and Appeal Board (“PTAB”) in the case of rejection of any claim and/or may submit reasons the claims are patentable (claim amendments are not required to be entered by the examiner after a final Office Action has been issued). Furthermore, a petition may be taken to the Director in the case of objections or requirements not involved in the rejection of any claim. A reply to a final rejection or action must include cancellation of, or appeal from the rejection of, each claim so rejected and, if any claim stands allowed, compliance with any requirement or objection as to form. In making such final rejection, the examiner repeats or states all grounds of rejection then considered applicable to the claims in the application.
An applicant may reply to a non-final Office Action within the time statutorily set time (or time set shorter by the Office Action) by requesting reconsideration in writing and distinctly and specifically pointing out the supposed errors in the examiner’s Office Action. More specifically, the reply of an applicant to an Office Action must be made within a prescribed time limit. The maximum period for reply is set at six months by the statute (35 U.S.C. § 133), which also provides that the Director may shorten the time for reply to not less than 30 days. The usual period for reply to an Office Action is three months. A shortened time for reply may be extended up to the maximum six-month period. An extension of time fee is normally required to be paid if the reply period is extended. The amount of the fee is dependent upon the length of the extension. Extensions of time are generally not available after an application has been allowed. If no reply is received within the time period, the application is considered as abandoned and no longer pending. However, if it can be shown that the failure to prosecute was unavoidable or unintentional, the application may be revived upon request to and approval by the Director. The revival requires a petition to the Director, and a fee for the petition, which must be filed without delay. The proper reply must also accompany the petition if it has not yet been filed.
The applicant must reply to every ground of objection and rejection in the prior Office Action. The applicant’s reply must appear throughout to be a bona fide attempt to advance the case to final action or allowance. The mere allegation that the examiner has erred will not be received as a proper reason for such reconsideration. In amending an application in reply to a rejection, the applicant must clearly point out why the applicant thinks the amended claims are patentable in view of the state of the art disclosed by the prior references cited or the objections made. The applicant must also show how the claims as amended avoid such references or objections. After reply by the applicant, the application will be reconsidered, and the applicant 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. Again, the second Office action usually will be made final.
Interviews with examiners may be arranged, but an interview does not remove the necessity of replying to Office actions within the required time. In most instances, The IP Law Firm highly recommends conducting examiner interviews so that the claimed invention, and its potential patentability, can be fully discussed with the examiner. This leaves little room for misunderstandings and generally promotes a good dialogue and rapport with the examiner.
The applicant may also amend the application as specified in the rules, or when and as specifically required by the examiner. Amendments submitted by the applicant on or before the mailing date of the first Office Action are called “preliminary amendments.” Amendments in reply to a non-final Office Action are governed by 37 C.F.R. § 1.111. Amendments filed after final action are governed by 37 C.F.R. § 1.116 and 37 C.F.R. § 41.33.
If the examiner issued a final Office Action, the applicant may appeal to the PTAB in the United States Patent and Trademark Office. The PTAB consists of the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, the Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO, the Commissioner for Patents, and the administrative patent judges, but normally each appeal is heard by only three members. An appeal fee is required and the applicant must file a brief to support his or her position. An oral hearing will be held if requested upon payment of the 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”) or a continuation application is often filed.
If the decision of the PTAB is still adverse to the applicant, an appeal may be taken to the Court of Appeals for the Federal Circuit or a civil action may be filed against the Director in the United States District Court for the District of Columbia. The Court of Appeals for the Federal Circuit will review the record made in the Office and may affirm or reverse the Office’s action. In a civil action, the applicant may present testimony in the court, and the court will make a decision.
3. The examiner may issue a “Notice of Allowance.” When the patent application is found to be allowable, a “Notice of Allowance and Fee(s) Due” (often referred to as a “NOA”) will be sent to the applicant, or to applicant’s attorney or agent of record, if any, and a fee for issuing the patent and if applicable, for publishing the patent application publication, is due within three months from the date of the NOA. If timely payment of the fee(s) is not made, the application will be regarded as abandoned. See the current fee schedule at USPTO Fee Schedule. The Director may accept the fee(s) late, if the delay is shown to be unavoidable or unintentional. When the required fees are paid, the patent issues as soon as possible after the date of payment, dependent upon the volume of printing on hand. The patent grant then is delivered or mailed on the day of its grant, or as soon thereafter as possible, to the inventor’s attorney or agent if there is one of record, otherwise directly to the inventor. On the date of the grant, the patent file becomes open to the public for applications not opened earlier by publication of the application.
In some rare cases, where the publication of an application or the granting of a patent would be detrimental to the national security, the Commissioner for Patents will order that the invention be kept secret and shall withhold the publication of the application or the grant of the patent for such period as the national interest requires. The owner of an application that has been placed under a secrecy order has a right to appeal the order to the Secretary of Commerce.
Well, there you have it, a short summary of the patenting process. We at Johnson | Dalal, The IP Law Firm, a Florida-based intellectual property law firm, wish you much success in the patenting process and are here to help should assistance be needed at any point during the process.
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