In our first article in this series, we discussed the patent process from the conception of an invention to filing a non-provisional patent application. This article will further discuss the patent application process – specifically, what happens after filing a non-provisional patent application in the United States.

Filing a patent application does not automatically grant patent protection; however, once a patent application is filed, the invention that is the subject of the application can be marked as “patent pending.” Filing the patent application is the first of several steps in the process to obtain a patent.

1. The Filing Receipt

Following the filing of a non-provisional patent application (electronically or on paper, though usually electronically), the first communication you will receive from the United States Patent and Trademark Office (USPTO) is a Filing Receipt.

A patent application Filing Receipt is an acknowledgment by the USPTO that the application has met the minimum requirements to receive a filing date. (37 CFR 1.54).

• The Filing Receipt contains the details about your patent application assigned by the USPTO (e.g., application number, filing date, confirmation number) and bibliographic information that you submitted with your application (e.g., inventors, applicant, priority application data)[i].
• Typically, you can expect to receive a Filing Receipt from the USPTO within several weeks of filing your application.

The Filing Receipt may be accompanied by a communication requiring your response: a Notice to File Missing Parts or a Notice to File Corrected Application Papers[ii]. For example, suppose the application was submitted without a Declaration of Inventorship by the inventor (sometimes called the Inventor's Oath). In that case, the USPTO will send such a notice, and correction in accordance with that Notice will be required as specified therein.

2. Duty of Disclosure

The USPTO requires that applicants disclose all information the applicant, and anyone else involved with the application, is aware of that may be material to patentability. This duty of disclosure falls under a broader duty of candor and good faith in dealing with the USPTO imposed on all individuals associated with the filing and prosecution of the application. (37 CFR 1.56).

To meet the duty of disclosure, the applicant submits an Information Disclosure Statement (IDS) listing known information that may be material to patentability.

In so many words, this means that the applicant must tell the USPTO about information they're aware of that is, or may be, relevant to the invention claimed in their patent application. This information could be almost anything: patents, patent applications (published or unpublished), products, books, articles, research papers, and videos. An experienced patent attorney or patent agent can help you determine what information you should submit to the USPTO and help you submit this information to the USPTO.

Fulfilling the duty of disclosure is an essential step in the patent application process – failure to disclose all known information material to patentability may result in refusal to grant a patent or cancellation of a granted patent for violation of the duty of disclosure through bad faith or intentional misconduct.

3. Preliminary Amendment

Before the USPTO takes formal action on the application (discussed in the next section), an applicant may submit one or more preliminary amendments to the specification, claims, and/or drawings. However, any amendment made in a patent application, whether it is a preliminary amendment or an amendment made in response to a rejection from the USPTO, must not include any “new matter.”

New matter with respect to a patent application has varied definitions, but it generally means any new information that could not be found in the original application filing.

Amendments may rewrite the information of the original filing but cannot add any new elements, for example, a viewing window to an apparatus if such was not described or shown in the drawings as filed. Another example would be an amendment that adds temperature ranges to a manufacturing process where such ranges were not in the original filing.

In other words, it is essential to “get it right” the first time with full and complete disclosure of the invention in the first filing.

4. Office Actions on the Merits

Once the formalities of filing the application are complete, the patent application will be assigned to a patent examiner. The application goes to the bottom of the stack of applications the examiner has been assigned and will be examined in turn.[iii]

A patent examiner is an employee of a Patent Office (in the U.S., the USPTO) who assesses patent applications to determine whether a patent can be granted on each patent application.

The examiner will review the application to ensure it complies with formal requirements, conduct a search of prior art to determine whether the claimed invention is patentable, and communicate directly with the applicant and the applicant's representative regarding their findings. This process includes examining the claims to determine if a restriction, as explained below, is required or if other issues exist in the claims that prevent examination of them for patentability.

The examiner communicates their findings via a communication known as an Office Action. What is an Office Action?

An Office Action issued in a patent application is a written communication from the patent examiner detailing the findings of the examiner's review of the application and search for prior art, as well as the examiner's assessment of whether a patent can be granted.

Several types of Office Actions may be issued, though the most common first actions are Restriction Requirements and Non-Final Rejections.

Regardless of the type of Office Action issued, a response from the applicant (usually by the applicant's representative) is required to avoid abandonment of the application.

How long will it take the USPTO to send a first Office Action for a patent application? As of June 2023, the USPTO estimates an average of 16.9 months. If you want a more precise estimate, check out the USPTO's Patent Pendency Data for your application's art unit.

Restriction Requirement

The first Office Action issued in a patent application may be a requirement for restriction or election, often referred to as a restriction requirement. A restriction requirement is an assertion by the examiner that the patent application's claims are directed to two or more independent and distinct inventions, one of which must be elected for examination.[iv] (37 CFR 1.142).

The non-elected claims must be canceled, though they can be pursued in a separate application filing called a “divisional application.”

A restriction requirement may be issued for any of the following reasons:

• When the Examiner determines that the claims cover two distinct inventions.
• Where searching for prior art will require searching in separate invention classes.
• Where multiple “species” or variants of the invention are claimed.
• Where an application includes both method and apparatus claims. The existence of both method and apparatus claims does not always result in a restriction requirement, but it can happen.

It should be noted that new claims may be added in response to a restriction requirement as long as no new matter is introduced. For example, say the restriction requirement divides the claims into two groups: Group A, consisting of Claims 1-10; and Group B, consisting of Claims 11-20. No matter which Group you elect, you may add 10 new claims to present a complete set of twenty claims for examination.

Non-Final Office Action

After receiving a response to any restriction requirement, the examiner will issue an Office Action on the merits of the application and currently pending claims, typically called a “first Office Action” or “Non-Final Office Action.”

The first Office Action may include objections to the specification, claims, and drawings that can usually be corrected in the response to be filed. In addition, the Office Action will include a substantive appraisal of the claims, noting that certain claims are allowed (meaning a patent can be issued as to those claims), are allowable if some amendments are made, or are rejected based on prior art.

Most first Office Actions reject or object to the claims in some way. Allowance of the application and all pending claims right away, known as a “First Action Allowance,” is a rare occurrence.

Claims can be rejected based on a single prior art reference. This means that the claimed invention has been “anticipated” by that single reference, which in turn means that each and every claim limitation can be found therein.

Claims may also be rejected based on a combination of prior art references on the grounds of “obviousness.” In patent legalese, this means that the claimed invention would be obvious to a person of ordinary skill in the art in light of the disclosures (or teachings) of those combined references.

5. Responding to an Office Action

Now that you've received the examiner's assessment of your patent application, how do you respond to the Office Action?

Patent applicants are entitled to respond to an Office Action by amending the specification (if appropriate) and claims to recite, or claim, an invention that is patentable over the prior art cited by the examiner. The applicant can also submit arguments in response to the rejections or objections set forth by the examiner detailing where the examiner has committed errors in the analysis of the claims and prior art.

Usually, the applicant is given three (3) months to respond; the period to respond can be extended to a maximum of six (6) months upon payment of the appropriate extension fees.

6. Further Proceedings

After receiving the response to the Non-Final, or “first,” Office Action, the examiner will review the amendments and arguments presented by the applicant. The Examiner will either allow or reject the claims in a “Final Office Action.” Once again, the applicant may respond to a Final Office Action with further amendments and arguments.

Following the response to the Final Office Action, the examiner will either allow the application or maintain the rejections. If the examiner maintains the rejections, the applicant may appeal the examiner's decision to the U.S. Patent Trial and Appeal Board and then to the Federal Courts if desired. (35 U.S.C. 134).

Patent applicants can also file (and pay the fee for) a Request for Continued Examination (“RCE”) when filing the response to a Final Office Action. Once granted, the RCE acts to convert the previous “Final” Office Action to a Non-Final Office Action, thereby providing another chance for the examiner to examine the claims and for the applicant to respond to any enduring rejections or objections.

7. Examiner Interviews

Occasionally, telephone conferences may be held with a patent examiner in response to an Office Action. During an Examiner Interview, the patent applicant (or their representative) can present proposed claim amendments and arguments regarding the cited prior art and get some feedback from the examiner. These usually occur after the First Office Action, though examiners may also grant interviews to discuss a Final Office Action.

An Examiner Interview allows the applicant to not only discuss substantive issues and clarify the subject matter with the examiner but can also allow the applicant to work collaboratively with the examiner on a more personal level. Oftentimes, Examiner Interviews help expedite the path to patent allowance.

8. Patent Issuance

Assuming agreement can be reached on at least one patentable claim, the applicant may cancel any contested claims (which can be pursued further in a divisional application) and pursue allowance of the current application with the allowable claim(s). In due course, the USPTO will issue a Notice of Allowance setting forth the issue fee, any remaining formalities to be resolved, and a deadline. Once the issue fee has been paid, the patent will typically be issued within six weeks, though that timeline may be accelerated following the USPTO's recent switch to digital, rather than paper, patent issuance.

9. Maintenance Fees

Any utility patent issued in the United States will require periodic payment of fees, known as maintenance fees, to the USPTO to maintain the enforceability of the owner's patent rights. Maintenance fees are due by the end of the 4^th, 8^th, and 12^th years after the issuance of the patent. Failure to pay a maintenance fee results in the early expiration of the patent. (37 CFR 1.362).

10. Other Matters

The preceding has briefly touched upon the post-filing patent application process. Other issues that may arise during the pendency of a patent application include those related to the business side of patents, whether, when, and where to file foreign patent applications, and how to monetize your patent portfolio. Each should be carefully discussed with your patent counsel.

How Gallium Law Can Help

The patent application process is complicated and strictly regulated – a single misstep can result in loss of patent rights with little recourse. The professionals at Gallium stand ready to assist you every step of the way. Wherever you are in the process, call us at 651-256-9480 or fill out this Contact Form to speak with us soon.

*The information in this article is not legal advice and should not be relied on. The content of this article is for informational purposes only and is meant as a starting point in your search for answers to your legal questions.

[i] The filing date and its relative, the priority date, are of utmost importance. These are the dates that determine what the USPTO may apply prior art references to determine the patentability of the claimed invention.

[ii] Any “notice” received from the USPTO that requires a response will specify a time frame for submitting that response. Depending on the type of notice, responses will be given a one, two, or three-month response deadline. “Time extensions” past those deadlines up to a total of six months after the notice is sent out may be requested. So, for example, for a notice setting a response deadline of one month, five months of time extension may be requested. Time extensions require the payment of a fee, which increases sharply for every month of additional response time requested.

[iii] Accelerated Examination of patent applications may be requested for an additional fee under certain circumstances.

[iv] Restriction requirements can be contested. This is known as a “traversal” of the restriction. In most circumstances, this can and will delay the issuance of any patent even if successful.