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The Patent Process, Part 2: From Filing to Patent Issuance and Beyond

Posted by Isabel Fox | Dec 27, 2021 | 0 Comments

The Filing Receipt

Following the filing of a non-provisional 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, which is an acknowledgment by the USPTO that it has received certain documents. The Filing Receipt will indicate whether the application as filed has or has not been accorded a filing date[i]. If the filed documents include a specification, claims, and drawings, a filing date will be granted as of the date of receipt thereof by the USPTO. If the filed documents are lacking in any of those respects, a filing date will not be granted until they are submitted to the USPTO[ii].

The Filing Receipt may be accompanied by a Notice to File Missing Parts. 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 the Notice will be required as specified therein.

Preliminary Amendment

Before any action on the application by the USPTO, an applicant may submit one or more preliminary amendments to the specification, claims, and or drawings. However, such amendments must not include any “new matter.” New matter 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.

Office Actions on the Merits

Once the formalities of filing the application and any required documents 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] The examiner will review the application, noting any perceived errors, such as duplicate numbers in the drawings or grammatical issues, including misspellings. Additionally, the claims will be examined 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.

When the examiner has finished this review, an “Office Action” will be issued, where the “Office” refers to the USPTO. If this Office Action relates to a restriction requirement, that means you will be required to select – called an “election” – certain claims for examination for patentability.[iv] 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 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, or, in some but not all circumstances, where an application includes both method and apparatus claims. 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.

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

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.

Responding to an Office Action

Patent applicants are entitled to respond to an Office Action by amending the specification (if required) and claims so as to recite, or claim, an invention that is patentable over the prior art cited by the examiner. The applicant can also file arguments in response to the rejections/objections detailing where the examiner has committed errors in the analysis of the claims and prior art. Usually, the applicant is given three months to respond, with an additional maximum of three months allowed with payment of the appropriate time extension fees.

Further Proceedings

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

At this point in the process, the examiner will either allow the still-contested claims or stand on the rejections. An appeal of any adverse decision may be taken by the patent applicant within the USPTO and then to the Federal Courts if desired.

Examiner Interviews

Occasionally, telephone conferences may be held with an examiner to expedite the process. During an Examiner Interview, the patent applicant can present proposed claim amendments and/or 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. 

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 filing, 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 and the deadline for payment. Once the issue fee has been paid, the patent will typically be issued within six weeks.

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 inventor's patent rights. Maintenance fees are due by the end of the 4th, 8th, and 12th years after the issuance of the patent. Failure to pay a maintenance fee results in the early expiration of the patent.

Other Matters

The preceding has briefly touched upon post-filing patent process proceedings. 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, how to monetize your patent portfolio, as well as other concerns. Each should be carefully discussed with your patent counsel.

Conclusion

Applying for a patent can seem complicated, particularly for the first-time inventor or a business dealing with an invention for the first time. The professionals at Gallium stand ready to assist you at every step of the way. Please call us at 651-256-9480 or fill out this Contact Form to speak with us soon.

[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.

About the Author

Isabel Fox

Isabel Fox is a registered patent agent and has been with Gallium Law since 2018. Her practice largely revolves around utility and design patent prosecution; including conducting patent landscape searches, drafting patent applications, and responding to Office Actions issued by the USPTO. Isabel...

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