In my 20+ years experience working with founders, I am often asked to explain how a patent application is processed by the US Patent and Trademark Office. The typical path for a patent application once it has been filed with the USPTO is the following:
- Examining the Application: The USPTO will assign an examiner to the application in order to assess whether it meets all legal requirements and grant a patent.
- Prosecution: If an examiner finds that the application is deficient, they will issue an Office Action to which the applicant must respond within a specified time frame. Prosecution is the back-and forth between the applicant, the examiner and each other.
- Allowance or rejection: The examiner will issue a Notice of Allowance if the application meets the requirements. If so, the applicant must pay the issue fees to obtain a patent. If the examiner determines that the patent requirements have not been met, she will issue one or more rejections.
- Maintenance: After a patent has been granted, the patentee must continue to pay the maintenance fees in order to keep the patent in effect.
It can take many years to obtain a patent. To help you navigate the process, it is recommended to consult a patent attorney.
How long does the case wait before examination?
The time it takes to examine a patent application filed with United States Patent and Trademark Office can vary depending on many factors such as the type and complexity of the invention, workload of the examiner and priority status.
It takes an average of 18 to 24 months for a patent applicant to receive either a first office action or a rejection from the examiner. Depending on the factors above, the wait time may be shorter or longer. If the application is of high priority, such as a utility or provisional application with special status, it might be examined sooner.
Depending on the complexity and number of objections or rejections made by the examiners, the examination process may take months to complete once the application has been assigned to an examiner. Multiple office actions, interviews, and appeals to PTAB may be part of the examination process.
The examination process can be lengthy and complicated. This is why it is important to factor in the waiting period when applying for patents. An applicant might consider hiring a patent agent or attorney to speed up the examination process if waiting is a problem.
What are the odds of a First Office Action Allowance?
The chances of a first allowance (or the likelihood that a patent will be granted during the first review) vary depending on many factors, including the technology area, complexity of the invention and the quality of the application. Although there is no way to predict exactly the probability of a first allowance, I have found it to be between 5-10%.
The likelihood of a first-office action allowance is dependent on many factors such as the thoroughness and quality of prior art searches, the quality of claims, the completeness or lack thereof of specification.
The first office action allowance rate in some technology areas may be quite high. This is true for certain electrical or mechanical arts. The first office action allowance rate for other areas of technology, such as computer software or biotechnology, may be lower.
Important to remember that the chances of receiving a first office action allowance may change as the law changes.
Because of the variable odds of receiving a first office action allowance it is crucial for applicants to consider all aspects of their application carefully before filing. It is also important to prepare a well-supported and thorough patent application in order to improve their chances of success. A patent agent or attorney can help to increase your chances of receiving a first office allowance.
Typical rejections in a first office action?
An Office Action is a written communication sent by the Patent Office. It will usually include the reasons for rejection. It will also include a summary of conclusions from the Patent Examiner. It will typically set a three month response time. All office actions must respond within six months of the date of mailing or the case will be abandoned.
A first rejection (also known as a “first office action”) is a response by a patent examiner to a USPTO patent application. This is the first substantive communication sent by the examiner to the applicant. It outlines any issues or deficiencies with the patent application that need to be addressed in order for the application to move forward.
The examiner can raise objections during the first rejection.
- Failure to comply with formal requirements such as proper naming, proper drawings and proper claims format.
- Certain claims may be rejected due to prior art references over issues such as Obviousness and Novelty under 35 U.S.C. 102 and 103.
- Insufficient written description, enablement and best mode as required by 35 U.S.C. 112.
The applicant must reply to the first rejection within a specified time period, usually 3 months and no more than 6 months. This includes either amending the application to correct the deficiencies or arguing against the rejections. The applicant can request to meet with the examiner in order to discuss the issues and possible solutions.
The applicant must address each ground of rejection when responding to the office action. While 102-103 rejections are the most common in Office Actions, there are also other types such as double patenting rejections.
The PTO may withdraw or abandon the application if the applicants fail to respond. The examiner will issue a notice to allowance if the applicant addresses all deficiencies that overcome her rejections. After payment of the issue fee, the patent will be granted.
The examiner can also issue a second office action (the final office action) if the applicant fails to address the deficiencies
What is a Drawing Objection?
Drawing objections are a problem or deficiency in the drawings that have been identified by a patent examiner as part of the examination. Drawings play an important role in a patent application. They provide a visual representation that helps the examiner to understand the invention and its claimed features.
Drawing objections can arise for many reasons:
- Insufficient clarity: Drawings may not accurately and clearly depict the invention or may miss important details.
- Inconsistency in description: It is possible that the drawings do not correspond with the description of the invention.
- Inadequate views
- Incomplete or incorrect information. The drawings could contain inaccurate information such as incorrect dimensions or missing information such as cross-sectional views.
The patent examiner may raise a drawing objection. To have the patent application processed, the applicant must reply and address the issue. The application may be rejected if the applicant fails to address or respond to the objection.
What is a Section 112 Rejection?
A Section 112 rejection refers to a rejection that was issued by a patent examiner in the course of the examination at the United States Patent and Trademark Office. It is a rejection that has been based on 35 U.S.C. 112, which outlines the requirements for the patent application’s written description, enablement and best mode.
There are many reasons why a Section 112 rejection may occur, including:
- Insufficient description in writing: A patent application may not include enough information about the invention that a skilled person in the art can use it.
- Inadequate Enablement: A patent application details might not allow a skilled person in the art to create and use the invention. This could be because it doesn’t provide enough detail, or because the steps aren’t feasible.
- Disclosure of the best method of execution: A patent application may not disclose the best way to execute the invention that is known to the inventor at the time it was filed.
To overcome rejection, the applicant might need to amend the description and/or the claims or to make other modifications to the application. The application can be abandoned if the applicant fails to address them.
What is a Section 102 Rejection?
A Section 102 rejection refers to a rejection that was issued by a patent examiner in the course of the examination at the United States Patent and Trademark Office. It is a rejection that has been based on 35 U.S.C. 102 and requires that each element of the claimed invention must be found within the four corners of a reference patent such as another patent.
The applicant must prove that the claimed invention is novel over the prior art cited in the examiner’s rejection of Section 102. This can be done by arguing that the prior art does not disclose or teach every element of the claimed invention, or that the prior art is missing important distinctions recited in the claims that make the claimed invention novel.
You may be able to overcome a Section 102 rejection if you show that the prior art reference does not provide enough information or guidance for someone skilled in the arts to make or use your claimed invention.
It is crucial to present clearly and concisely the arguments and evidence supporting the patentability and overcoming the Section 102 rejection in any case. A patent agent or attorney can help applicants prepare a strong response and improve their chances of success.
What is a Section 103 Rejection?
A Section 103 rejection refers to a rejection that was issued by a patent examiner in the course of the examination at the United States Patent and Trademark Office.
The examiner can use Section 103 rejections when the claimed invention is obvious to a person with ordinary skill in the art. The rejection can be based upon the combination of prior art reference or the modification of a single reference.
To respond, the applicant may be required to present arguments or other evidence to show that the claimed invention is non-obvious in view of the prior art cited by the examiner. To argue for non-obviousness, you can use the Graham factors which are a list of considerations noted by the Supreme Court and used by the United States Patent and Trademark Office to determine whether an invention falls within 35 U.S.C. SS 103. Graham factors are:
- The prior art’s scope and content.
- Differences between the claimed inventions and the prior art
- The average skill level in the field.
- Secondary considerations include commercial success, long-held but unsolved problems, and the failure of others.
You must address each factor and present evidence and arguments to support your claim. These are the steps you should follow:
- Examine the prior art. Carefully examine the prior art cited to determine its scope.
- Identify the differences in the claimed invention from the prior art. Describe the reasons for these differences.
- Show evidence of ordinary skill and explain why the claimed invention is not obvious to someone with this level of skill.
- Secondary considerations: You should address any secondary considerations that can support non-obviousness such as long-felt, unsolved problems, or failure of others.
- Clear and concise arguments: Present your argument clearly and concisely, emphasizing the most important points.
You can present arguments and evidence to prove that your claimed invention is not obvious over the prior art to overcome a Section 103 rejection based upon the argument that prior art references cannot be properly combined or fail to work when combined. These are the steps you should follow:
- Read the rejection carefully. This will help you understand the objections of the examiner and the prior art that was cited by him.
- Examine the prior art references. Evaluate the references to prior art cited by an examiner to determine if they can be combined or not.
- Arguments and evidence: The claimant’s invention must be presented with evidence and arguments to prove that it is not obvious over the prior art. It may be necessary to show that prior art references cannot be combined properly, that they do not function together, or that the claimed invention contains additional elements or a unique combination that makes it non-obvious.
- Consider changing the claims: You may need to amend the claims if necessary in order to distinguish the claimed invention from prior art and render the invention non-obvious.
How to Respond to Rejections
The applicant must respond to each objection or rejection raised by the examiner should be addressed in the reply. The reply must also include evidence and arguments supporting the patentability of invention. These are the steps to take:
- Examine the rejection carefully. This will help you understand the reasons for the rejection. Note any concerns or questions you may have and highlight the important points.
- Examine the cited prior art. This will help you to identify any arguments that could support non-obviousness, such as inoperability of the suggested combination, etc.
- Prepare arguments and amends: Prepare arguments to address all objections and rejections of the examiner. Your arguments should explain clearly why your invention is new and not obvious, and why it meets the requirements of the patent law.
- Write a response. Your response should be concise, clear, and well-organized.
Responding to an office action can be complicated and time-consuming. It is essential to consider all options before you respond. A patent agent or attorney can help you craft a strong response and improve your chances of success.
What happens after you respond to the first office action?
After receiving a response to the initial office action in a patent filing with the United States Patent and Trademark Office, (USPTO), an examiner will review the response and take into consideration the arguments and modifications made by the applicant.
The examiner will decide whether to accept the application and issue either a notice of allowance or a new office action with additional objections, rejections, based on the responses. The applicant will need to pay any issue fees and maintenance fees if the application is granted.
The applicant can respond to a new office action issued by the examiner by either filing amendments, arguments or new evidence or by taking additional actions such as a Request for Continued Examination (RCE), or appealing to the Patent Trial and Appeal Board.
The examination process can be complicated and time-consuming. It is crucial that applicants carefully consider all options before responding to any office actions. A patent agent or attorney can assist applicants in the examination process and improve their chances of success.
How a Patent Examiner earns points for working on an Application and why this affects your next move!
The United States Patent and Trademark Office has a performance assessment system to assess the performance of patent examiners. This system was created to encourage examiners to work efficiently, effectively, and reward those who perform well.
Working on patent applications is one way that a patent examiner can earn point under the USPTO’s performance evaluation system. Examiners are awarded points for:
- Examining patent applications. This is the main way that examiners can earn points under USPTO’s performance assessment system. The complexity of an application and how long it takes to process determine the number of points that can be earned.
- Performance goals: Examiners who meet the USPTO’s performance goals can earn extra points. This could include completing a specific number of applications in a given time or being extremely accurate in their work.
- Participating in professional and training development: Examiners may also earn points for participating in training or professional development opportunities. This allows them to keep up to date with patent law and improve their skills as examiners.
Examiners earn points under the USPTO’s performance evaluation system. These points are used to assess their performance and determine eligibility for bonuses, promotions, or other incentives. This system was created to give examiners a clear understanding of how they perform and encourage them to work efficiently. You should understand that the examiners do not get many points for reviewing an after final rejection response. Thus, you will likely get an advisory action but that should not deter you from trying to get allowance after a final rejection.
What happens when a final rejection is made?
A final rejection indicates that the examiner has made a final decision that the claimed invention is not eligible to be granted a patent. After the applicant has had the opportunity to respond to any of the earlier rejections of the patent applications, and after the examiner has reviewed the applicant’s arguments, the final rejection is issued.
The final rejection usually repeats the reasons stated in the first office action for not granting patent. It may also use new references if your claims have been amended to show that the claimed invention is novel or non-obvious over the prior art relied on in the first action.
An after-final response can be used to address rejection. The examiner may grant allowance if the case is very close. The examiner can also send an advisory action to inform you that the case is not permitted. You have the right to appeal. To give the examiner a little more time to work on your case, you might file the after-final response along with an AFCP request which provides the examiner with some additional points for the work. As stated above, examiners do not get many points for reviewing an after final rejection response and you will likely get an advisory action but that should not deter you from trying to get allowance after a final rejection.
Benefits of AFCP Request
The After Final Consideration Pilot Program 2.0 (AFCP2.0) is a program offered to applicants by the United States Patent and Trademark Office. It allows them to request continued examination of a Patent Application after a final rejection. The AFCP 2.0 program has many advantages.
- Faster Examination: The AFCP2.0 program allows for a quicker examination than other post-final options such as filing a Request for Continued Examination or appealing to the Patent Trial and Appeal Board.
- Increased Chance of Allowance This can increase the chance of granting an allowance.
- Lower costs: An AFCP 2.0 request can be filed for a lower cost than an RCE or appeal.
- Improved communication: The AFCP 2.0 program allows for better communication between the applicant (and the examiner). The examiner can provide feedback on applicant’s arguments and evidence and the applicant can respond promptly.
- Streamlined Process This process is more informal and takes less time than appeals or RCEs.
The AFCP 2.0 program is a quicker, more cost-effective, and simpler option for applicants who want to overturn final rejections of their patent applications. It is important to consider each case’s specific circumstances before deciding whether you want to file an AFCP2.0 request.
A final rejection of a patent application gives the applicant the right to appeal to the Patent Trial and Appeal Board or request that the examiner continue examination. An applicant can also amend the application to correct any deficiencies and submit it again for examination with an RCE.
The patent application can be withdrawn or abandoned if the final rejection is not appealed. Sometimes, the applicant can file a continuation patent application with revised or different claims.
Final rejections can be very frustrating and time-consuming in the patent examination process. It is crucial that applicants carefully evaluate their options before responding. A patent agent or attorney can assist applicants in the examination process and improve their chances of success.
RCE V Appeal
Two options for dealing with final rejections and advisory notices include: 1) an Appeal and 2) a Request for Continued Examination (RCE).
A Request for Continued Examination is a request to the examiner to continue examination of a patent applicant after a final rejection. A Request for Continued Examination (RCE) allows the applicant to provide additional arguments or evidence to try to overcome the final rejection.
An Appeal is a request for the Patent Trial and Appeal Board to review a decision of the examiner. Typically, an appeal is used by the applicant if he believes the examiner made an error in rejecting the application.
An RCE is generally faster and cheaper than an appeal. It allows the applicant to continue working alongside the examiner to resolve any issues. After paying the RCE fees, the case will be reset. The next office action will then be the first. You can repeat this process until you receive an allowance or your case is abandoned. If the applicant feels that the examiner made an error and that her opinions cannot be changed, appeals may be necessary.
You may wish to consider the pre-appeal option if you decide to appeal. Pre-appeal requests are a request for reconsideration to an examiner before you file an appeal with Patent Trial and Appeal Board (PTAB). A pre-appeal request has the following advantages:
- Chance to resolve issues prior to appeal: Pre-appeal requests allow you to address any issues with your examiner before you proceed to the more complicated and time-consuming appeal process.
- Avoidance of appeal fees
- Communication with the examiner can be improved: A pre-appeal request may provide an opportunity to improve communication with them, which will allow for a more focused discussion and productive resolution of the issues.
- A quicker resolution: Avoiding the appeal process can lead to a faster resolution.
- A better understanding of the examiner’s position is possible by making a pre-appeal inquiry. This will give you a better understanding about the examiner’s situation and what will be required to overcome objections. It makes it easier to write a more effective reply.
Pre-appeal requests can be a way to work with the examiner to resolve any issues and avoid lengthy appeals. However, you still have the right to appeal, if necessary.
What is an Appeal Brief?
An appeal brief is a written argument that is submitted to the Patent Trial and Appeal Board, (PTAB), as part of an appeal against a decision of an examiner during an examination of a patent applicant. The following are the components of an appeal brief:
- Introduction: This brief introduction explains the background and purpose behind the appeal.
- Statement of Jurisdiction: This is a statement that the PTAB is competent to hear the appeal.
- Summary of relevant facts: This summary summarizes the pertinent facts of the case. It includes a brief overview about the technology and the history behind the examination of this application.
- Statement of Issues (Statement of Issues): Clear and concise description of the appealed issues, as well as the specific rejections being challenged.
- Arguments: The applicant’s clear and concise explanation of why the rejects were made by the examiner. This section can include references to case law or other authorities as well as any additional evidence that supports the applicant’s position.
- Conclusion: A brief summary of the appeal’s arguments and a request to be relieved, such as a reversal or remand of case to examiner for further consideration.
- Appendices: Additional documents or evidence supporting the arguments made in the appeal short, such as expert reports or declarations or portions of the file history.
Appeal briefs should be well-organized and concisely written. They should also make compelling arguments as to why rejects were made by the examiner. It is crucial to address all issues raised by the examiner, and to make a convincing argument why the rejections should be reversed.