Updated: January 20, 2022
The following is a summary of the examination process at the United States Patent and Trademark Office (USPTO). For a summary of the process from the point of conception of the invention and how it relates to your product launch in general, read How to successfully navigate the patent process from invention to patent granted?
Side Note: After you conduct your novelty search (i.e., prior art search) and research the marketability and profitability of your invention (all these are optional but may be useful), you need to decide whether you want to further pursue getting a patent for your invention. If you decide to get a patent, then you need to decide whether to seek a utility or design patent and whether to file a provisional or nonprovisional utility patent application. Be aware that you do not need to conduct a novelty search, nor do you need to build a prototype to file the provisional patent application. You can file the nonprovisional patent application right after you think of your idea. Speak with your patent attorney as to whether the novelty search and/or provisional patent applications are recommended. A patent attorney does not need to sign a confidentiality agreement.
With this out of the way, let’s begin to understand the USTPO’s process of examining your patent application.[cmtoc_table_of_contents]
Step 1A of the examination process: File a provisional patent application
Establishing a priority date
If you filed a provisional patent application to secure patent pending status on your invention, then you are now patent pending. Congratulations!
In about one or two months, you will receive an official filing receipt. The examination process (i.e., patent prosecution) on your patent application has now officially started. The official filing receipt will confirm whether you received patent pending status for your invention on the filing date of your provisional patent application. The filing date is your priority date and is of utmost importance. The priority date determines what is and is not prior art against your patent application. It also determines who gets a patent if there are two inventors that filed their own patent application on the same invention.
Warning: What a provisional patent application cannot give you
Oftentimes, inventors get the impression that the provisional patent application does not need to include a comprehensive description of the invention as one would include in a nonprovisional patent application. Nothing could be further from the truth. When you file the corresponding nonprovisional patent application, the examination process includes a review of the contents of the provisional patent application.
The original purpose of the provisional patent application was to provide a lower-cost option for securing patent pendency. It was not created so that you could skimp on the details of the invention yet receive full patent pendency for all of the details of your invention, even if you don’t include the information in the provisional patent application. Absolutely not. You will only receive patent pendency for the information provided within the provisional patent application.
I agree that the provisional patent application is a lower-cost option. However, it is not a cheap option. It is not a poor man’s option to secure patent pendency. I’ve written about it here where I discuss the Misconceptions about Provisional Patent Applications.
The USPTO does not examine the provisional patent application in the sense of whether your invention is novel and nonobvious. No patent examiner will examine the provisional patent application to see if the invention described in it is worthy of a patent. They only check for the formalities and do not read the patent application. They will also assign a serial number to your application, which you will use to identify the patent application if and when there is a need to correspond with the patent office.
The provisional patent application remains pending for one year. After one year, it is automatically abandoned. A corresponding nonprovisional patent application may be filed at any time before the one-year time period is over to maintain both pendency of your invention as well as the priority date of the provisional patent application. If no nonprovisional patent application is filed, then the priority date established by the provisional patent application is lost.
Step 1B of the examination process: File a nonprovisional patent application
As I already indicated, you don’t have to file a provisional patent application to establish patent pendency. You can go straight into a nonprovisional patent application to establish the patent pendency of the invention without ever filing a provisional patent application.
A nonprovisional patent application is needed to maintain the priority date of the provisional patent application
If you did file a provisional patent application first, then you must file a corresponding nonprovisional patent application within one year after filing the provisional. You must do this to maintain the priority date of the provisional patent application. If not, the examination process ends for your patent application. If you want to get the patent sooner than later, you can file a nonprovisional patent application well before the one-year time period is over.
Cost to file the nonprovisional from a comprehensive provisional patent application
If the provisional patent application was prepared as a comprehensive disclosure of your patent application, then the cost to upgrade and file the nonprovisional patent application should be significantly less than the cost to prepare the provisional patent application. Read more about patent costs here.
Many times what I find is that inventors have an inexpensive provisional patent application prepared and filed. The cost to upgrade to a comprehensive nonprovisional patent application from this type of provisional patent application can be costly. The work done in preparing the provisional patent application cannot be carried over to the nonprovisional patent application if the provisional patent application was poorly done. Also, be aware that you might not be allowed to prepare and file a more comprehensive nonprovisional patent application in cases where you had sold your product before you filed the provisional. Talk to your patent attorney about this before you spend your money to prepare a comprehensive or skimpy nonprovisional patent application.
If you do have a skimpy provisional patent application prepared and also file that application as a nonprovisional patent application, then in my experience, the examination process tends to be very expensive and the quality of the resulting patent of low quality as well because of the increased amount of argumentation that needs to happen with the examiner.
New serial number and the queue for examination
Once the nonprovisional patent application is filed, a new serial number is assigned to the nonprovisional patent application. The serial number and the filing date of the nonprovisional patent application are important because this information must be referenced when corresponding with the patent office during the examination process.
Upon the filing of the nonprovisional patent application, it enters the line or queue for examination. Nonprovisional patent applications are normally examined on a first-filed, first-served basis. Normally, you will have to wait about one to three years before receiving your first office action on the merits of the invention, that is, whether the invention is novel and nonobvious in light of existing technology and public knowledge as of the priority date.
If you want to shorten the one0 to the three-year time period for your nonprovisional patent application to work its way through the queue, you can file an expedite request (a.k.a. a Track One request) at the time of filing of the nonprovisional patent application. The expedited request will speed up the examination process by putting your patent application in the front of the line. I’ve been receiving initial office actions in about 4 to 6 months after filing a prioritized examination request. While the expedite request is a pay-for-service option, your application can be expedited without payment of any fee if one of the inventors is at least 65 years old. This request is made by a Petition to Make Special based on age.
Step 2 of the examination process: Receive filing receipt
A filing receipt is mailed for a provisional or a nonprovisional patent application about one or two months after the filing of the respective provisional and nonprovisional patent application. The filing receipt confirms start of the examination process. See the Sample filing receipt.
Check accuracy of the filing receipt
You should check to make sure that the information on the official filing receipt is accurate. Sometimes, the USPTO makes an error or the forms filed with the patent application are filled out incorrectly. These errors should be corrected to minimize problems when you enforce your patent.
Sample filing receipt
A sample of the official filing receipt for the provisional patent application shows other important information such as:
- Names of the listed inventors
- Whether a foreign filing license was granted
The USPTO checks whether the provisional patent application meets the formalities of a provisional patent application. For example, they will check to see if there is some form of written text describing the invention. However, they don’t check whether the invention was described accurately. You have to make sure that a comprehensive description of your invention is in the provisional patent application before you file. You should double-check your patent attorney’s work, as you know your invention best.
Step 3 of the examination process: Submit prior-art references via an Information Disclosure Statement (IDS)
Duty to submit known prior-art references
Throughout the entire examination process, you and everyone else who was responsible for the patent application has a duty to disclose information that might cause the patent office to reject the application for patent. The prior-art information is compiled and submitted in an Information Disclosure Statement (IDS). See sample IDS. Your patent attorney, the inventors, and everyone else involved in the patent application has this duty. If this duty is breached through the failure to inform the patent office about material information that an examiner would have wanted to know when examining your patent application, then charges of inequitable conduct can be made and the patent can be unenforceable.
Costs for an IDS
Patent attorneys normally charge a nominal fee for the submission of the IDS. Depending on when the IDS is submitted to the patent office, you may also incur a surcharge from the USPTO. If you want to minimize fees, submit it as early as possible because the USPTO does not add a surcharge to submissions made within three months of the filing date.
Step 4 of the examination process: Receive an office action
Many inventors make the mistake of abandoning the patent application after receiving the office action without any significant response back to the examiner. They cut the examination process short too soon without giving the attorney a chance to advocate their position before the examiner. An office action is simply a written document prepared by an examiner that indicates the reasons they are rejecting the patent application. See Sample Nonfinal Office Action.
Why did my application get rejected? Did my patent attorney make a mistake in conducting a novelty search?
No. A majority of patent applications are initially rejected. A part of the reason is, in my opinion, due to the employment structure of the Patent Office. Another reason is that patent applications are usually designed to be on the broader side. When we receive the rejection, the claims are then narrowed to get around the prior art and hopefully convince the examiner that the claims are allowable. Lastly, even if you conducted a novelty search, the search is not a guarantee and not all prior art references are discovered during a novelty search.
Common reasons for rejection of a patent application
The most common reasons for rejecting a patent application are novelty (Section 102) and non-obviousness (Section 103). Novelty simply refers to whether the claimed invention is new. Non-obviousness simply requires that the claimed invention not be an obvious variant of what is already known.
Another reason may be that the invention is not eligible for patent protection under Section 101 or that there is an issue with the written description of the patent application under Section 112. Section 101 rejections are very difficult to overcome. With respect to Section 112 rejections, the difficulty of overcoming these rejections depends on the strength of the examiner’s arguments.
Other rejections may be for reasons of formalities. These are technically referred to as objections, not rejections. They have to do with the form of the patent application. For example, do the drawings have a sufficient border? Are their lines clear and dark? Do all of the figures have corresponding figure descriptions? The Office of Initial Patent Examination should have identified these types of objections right after the nonprovisional patent application was filed. Sometimes, they miss it. These are generally easy to fix.
Should I abandon the patent application after the initial rejection?
The decision to abandon a patent application is dependent on:
- The strength of the examiner’s rejection, and
- Whether the product you are selling is selling poorly or selling very well.
If the product is not selling very well and you decide to close up shop, then you will also generally want to abandon the patent application regardless of the strength of the examiner’s arguments. If the product is selling very well, then spending extra time preparing arguments even if the strength of the examiner’s arguments is strong may be worth it.
In general, the most significant mistake that I see inventors make is to abandon the patent application solely based on the fact that they received a rejection. They do not budget for time and money to review the patent application and the rejection in order to see if the examiner made a cogent argument in rejecting the application.
The rejection stated in the office action is simply the perspective of the patent examiner. It is not a final ruling. I agree that it is significant because to get the patent you have to convince the examiner that the technology or invention is worthy of a patent. However, at the least, an inventor should have a patent attorney review the strength of the arguments and see if there are good counter-arguments or things that could be done to change the examiner’s mind and secure the patent.
Step 5 of the examination process: Consult with your patent attorney to decide the strength of rejection
The examination process must include your patent counsel because he or she will guide and explain to you what is and isn’t important in the office action. The strength of the examiner’s arguments is difficult if not impossible to determine by a non-patent attorney. It requires an understanding of the current state of the law and years of current experience with many different cases so that the patent attorney understands the trends when applicable.
To determine the strength of the examiner’s arguments, a thorough reading of the cited prior art references must be made. Based on the specific invention, the current state of the law, and the current practices of the USPTO, the patent attorney can give you an indication of whether good arguments might exist to secure a patent.
Step 6 of the examination process: Responding to an office action
The office action – response to the office action cycle is all part of the examination process. At first, it might seem chaotic and unfair. However, after you go through the examination process a few times, you begin to understand how all of the moving parts work. My recommendation is to be patient and find good patent counsel.
New information to make a new decision
A response to the office action should specify why the examiner should reverse his or her decision to reject the application for patent. More particularly, the goal is to give the examiner new information so that they can make a new decision. I’m not merely convincing the examiner to change their mind which is generally difficult to do. The USPTO publishes a Manual of Patent Examining Procedure to help examiners and patent practitioners to examine and respond to office actions.
Related article: How to respond to an office action?
Written argumentation and claim amendments
The response normally includes written argumentation and amendments to the claims of the patent application which narrow the scope of the claims. By presenting arguments and narrowing the scope of the claims, the goal is to convince the examiner to allow the case so that the patent can be granted.
Related article: How to write a claim?
Telephonic interview with the examiner
Yes, you can have a telephonic interview with the examiner. To talk to the examiner costs a bit more than just preparing a written response. However, the benefit of the back and forth discussion of the examiner on the call is significantly more valuable than the cost to conduct the interview. You can have an in-person interview. However, a telephonic interview is cost-efficient and still very beneficial. To initiate the interview, you have to fill out an Applicant Initiated Interview Request form. After the interview, the examiner will provide an Applicant Initiated Interview Summary.
Related article: Tips on interviews with examiners
Step 7A of the examination process: Patent Grant
If you are successful in convincing the examiner of the uniqueness of the invention, then you will receive a Notice of Allowance. Upon patent grant, the examination process has formally ended for that patent application. You must pay the issue fee to have the patent granted. You must also pay three maintenance fees to prevent the expiry of the patent at 3 ½, 7 ½, and 11 ½ year marks after issuance.
After your patent grant, you can also enforce your patent rights against others in litigation. Your patent could also be attacked by alleged infringers with various post-grant proceedings at the USPTO. One of these proceedings is referred to as an inter-partes review.
Step 7B of the examination process: Appeal decision of the examiner
If you are unsuccessful in securing the patent, then you will eventually receive a Final Office Action. After that, you have the option to file an appeal to the Patent Trial and Appeal Board (PTAB) to adjudicate whether the examiner or you are correct as to the patentability of the invention. Throughout this period, the examination process continues.
Related article: Submitting new evidence in an appeal to PTAB
Step 7C of the examination process: Abandon the patent application
If your business is not doing well, then most inventors will request the abandonment of their patent application.
Step 8 of the examination process: Strengthening your patent portfolio
Once your first patent is secured, you need to decide whether you would want to broaden the scope of patent protection more than what has already been allowed. This can be done by filing a continuation patent application. This is a refiling of your original patent application but includes broader claims than what was already allowed. By serially filing continuation patent applications, you can attempt to broaden the claim coverage. Broader claims mean that competitors would have a more difficult time designing around your patent. Having multiple patents mean that competitors would have to consider all of your patents when trying to design around your patent portfolio, and not just one. You should seriously consider filing a continuation patent application, especially for keystone technology that your company depends on, or on technology that is a high-profit center for your business.