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A step-by-step overview of what happens after a patent application is filed

A step-by-step overview of what happens after a patent application is filed

Once a patent application is filed, you may not be quite sure what to expect, or how to plan your go-to-market strategy based on the expectation that your IP is protected. Quite a lot of confusion exists about the process of applying for, and trying to obtain a patent through the United States Patent & Trademark Office (USPTO). Most inventors understand that a patent application detailing his or her invention must be submitted to the USPTO. But what happens next can get complicated because although each patent application must start at the same place (filing a patent application), it is highly likely that each will take quite a different path to conclusion.

What happens while the patent application is “patent pending”?

Upon filing of your patent application, it will be deemed “patent pending.” In the meantime, one of two things can generally occur: the USPTO places the patent application in a queue for examination – a wait that often takes many months or years; or after the wait, a USPTO Examiner examines the filed patent application to determine whether the patent application is patentable, thereby worthy of a granted patent.

Rejections of patent applications are common

In contrast with many other governmental filings, patent applications often involve a long, arduous back-and-forth process – sometimes spanning years – between a registered USPTO patent attorney, representing an inventor, and a Patent Examiner. It is rarely as simple as apply, and get allowed or rejected. As many as 95% of patent applications in some fields may get rejected at some point, so the path is not always linear..

Why does it take so long for a patent to be approved?

Why is the patent process (typically referred to as “patent prosecution”) so long and complicated? By definition, each granted patent should be unique from any other idea previously presented in another patent or other form of publication. Therefore, each patent application will have subject matter with its own particular nuances that are examined by the USPTO. As a result, the USPTO has to examine each patent application according to its own particular minutia, which may vary vastly to that of a different patent application.

USPTO has to ensure that each patent application complies with a whole host of requirements (ranging from the way the text is written to the way the drawings are drawn). For example, one patent application for one invention may be rejected based on language that is indefinite (i.e., not clear) under 35 U.S.C. 112(b), while another patent application for a different invention may be rejected as being “anticipated” (i.e., previously conceived in an identical form by another inventor) under 35 U.S.C. 102(a).

How do patent examiners work?

Patent Examiners are human beings, who will ultimately look at patent applications quite differently from one to the other. Although Patent Examiners are supposed to use the Manual of Patent Examining Procedure (MPEP) issued by the USPTO in deciding what rejections to use for patent applications, the MPEP is subject to interpretation. In the example above, one Examiner may not find particular language in a patent application clear, whereas a different Examiner would find such language to be quite comprehensible.

In case you are wondering “which Examiner will be reviewing my application?” there is no way of knowing ahead of time what Patent Examiner will be examining a particular patent application. As of 2014, the blog patentlyo reports that the USPTO had close to 9,000 Patent Examiners. Therefore, trying to craft a patent application toward the MPEP approach of a particular Examiner would be an exercise in futility.

First office action contains the initial rejections

Upon being assigned to an Examiner of a particular art unit within a particular technology center at the USPTO, the Examiner will typically send what is referred to as a First Office Action; this document will outline the Examiner’s initial rejections of the patent application. But contrary to intuition, rejections in the patent world are far from the end; rather, they are typically the start of the back-and-forth process between the registered USPTO patent attorney and the Patent Examiner.

Prior art is a common reason for initial rejection

As a typical example, a Patent Examiner will search for prior art (publications of your idea, or something close to your idea, by other people). If the Patent Examiner finds some prior art, he or she will typically issue a rejection of your patent application, and outline the reasons for that rejection in the First Office Action. In particular, the Patent Examiner is supposed to outline how the claims (the section describing what you want to prevent people from copying) in your patent application match up to the prior art he or she found; this is what is referred to as demonstrating how your claims “read on the prior art.”

A lot of patent applicants get frustrated when going through a First Office Action. For instance, a typical reaction is “[t]his prior art is completely different than my invention.” And patent applicants are often correct in a real-world sense, but Patent Examiners are given quite a bit of leeway by the MPEP during patent examination. A Patent Examiner is allowed to construe a patent claim according to its “broadest reasonable interpretation” (BRI). As a result, a Patent Examiner is permitted to stretch a patent claim to read on a prior art reference if the claim language can be reasonably considered to be so broad that it extends well beyond the scope of the invention contemplated by the inventor to a prior art reference that is just so completely different to the inventor.

Response to a first office action

As previously mentioned, receiving a first Office Action is quite commonplace – it is basically the norm, but it also marks the starting point for the back-and-forth between the registered USPTO registered patent attorney, or patent agent, representing the inventor and the Patent Examiner.
The patent attorney may prepare a Response (akin to a legal brief) to the First Office Action. The Response is supposed to answer each and every one of the Patent Examiner’s rejections, and explain why the rejections should be withdrawn.

Strategies for response to a first office action

The attorney may employ a number of different strategies in the Response. First, and foremost, an analysis should be performed to determine if the Patent Examiner is even correct. Although the Patent Examiner is permitted to use BRI, the First Office Action still has the burden of providing what is called a “prima facie” case that each and every claim element of your invention can indeed be found in the prior art. If not, the patent attorney can outline in the Response, via arguments, why the prior art does not “teach” your claimed invention.

Second, your patent lawyer may employ the tactic of what is referred to as “amending the claims.” This basically involves narrowing the language of the patent claims to exclude the subject matter taught by the prior art reference(s). Maybe the Examiner was correct in asserting that the claims-as-filed were too overreaching, to the point that they extended way beyond what the inventor even contemplated as his or her invention. And such recognition may not be apparent to the inventor until being made aware of such prior art by the Examiner. Accordingly, the patent attorney may amend the patent claims to narrow them to distinguish over the prior art cited by the Patent Examiner, while still being broad enough to encompass the invention contemplated by the inventor(s).

Also, a hybrid approach may be taken. It is not uncommon for a Response to have both arguments and claim amendments. Specifically, your attorney may find that the Examiner has drawn the correct conclusion on some of the patent claims, thereby necessitating amendment, but that other patent claims may be distinguished over the prior art via arguments.

Request an interview with the patent examiner

Finally, the attorney may request an interview with the Patent Examiner after the mailing of the First Office Action. Such interviews, which may be conducted telephonically or in-person, allow the attorney to get a better understanding of why the Examiner rejected the patent claims, and that may help the attorney in preparing the written Response to the First Office Action. There is no golden rule about the efficacy of interviews. Sometimes the dynamic between the attorney and the Patent Examiner is far more effective via an interview than on paper, which leads to a productive interview. In other instances, the attorney and the Examiner may simply communicate better on paper than through an interview. The decision of whether or not to request an interview may be an important decision for the patent attorney to make, and may affect how quickly or slowly a patent is granted.

A final office action usually comes after the first

After your patent lawyer files the Response to the First Office Action, the Patent Examiner will typically place the Response in his or her queue. Upon reviewing the Response (typically weeks or months later), the Patent Examiner may or may not be persuaded. If the Patent Examiner is not persuaded by the arguments and amendments submitted in the Response the Patent Examiner can issue a second Office Action, which is typically referred to as a Final Office Action. The term “final” is a bit of a misnomer – this is not your final chance to convince the Examiner; there can be plenty of Office Actions after a Final Office Action. Without getting into all of the minutia as to why a First Office Action is “non-final” and a Second Office Action is typically “final,” the most practical distinction is that a Non-Final Office Action does not require an additional filing fee, whereas a Final Office Action requires an additional filing fee and paperwork entitled a Request for Continued Examination (“RCE”). Further, a Patent Examiner is not required to participate in an interview after a Final Office Action, yet many Examiners will try to work with applicant’s representative even after a Final Office Action.

Response to a final office action

Other than the additional fees and paperwork, a Response to a Final Office Action is very similar to a Response to a Non-Final Office Action. Your patent attorney may make arguments and/or amendments to try to persuade the Patent Examiner to withdraw his or her rejections.

On the flip side, the Patent Examiner may not have maintained the rejections presented in the First Office Action because the Patent Examiner was persuaded by the arguments and amendments presented in the Response to the First Office Action. And the Examiner could allow the patent application based on that alone. However, what often happens, especially when the Response to the First Office Action had claim amendments, is that the Examiner conducts more prior art searching and tries to find additional prior art with which to reject the patent application. In essence, the Examiner may literally say that all of the previous rejections are withdrawn, but then issue completely new rejections in the Final Office Action. Although it is often frustrating for patent applicants, that is the reality of patent prosecution.

Accordingly, a cycle may occur such as, for example, non-final Office Action, final Office Action, non-final Office Action, … .This back-and-forth cycle may last until the patent application is allowed by the Examiner, or until the patent applicant abandons the patent application.

Appeal of an examiner’s rejections of your patent application

Sometimes there is simply no progress to be made between the lawyer for the applicant and a Patent Examiner. This may occur later on in patent prosecution after multiple attempts by the patent attorney to persuade the Patent Examiner, or even earlier on in the process. The patent applicant is permitted to appeal the decision of the Examiner to the USPTO’s Trial and Appeals Board (PTAB) after a second Office Action, which is typically a Final Office Action. If, and when, to file an Appeal to the PTAB is often a difficult question for a patent attorney. The goal with all patent applications is to work cooperatively with the Patent Examiner to address the rejections in any Office Actions. But sometimes there is too much of disconnect between the applicant’s interpretation and the Examiner’s interpretation to obtain any progress, at which time an Appeal may be the best option for the patent applicant.

In summary, obtaining a patent for your invention can be a long and complicated process. While it could be a linear process, but more often it’s a “dance” between your patent attorney and the patent examiner. This is why hiring an experienced patent attorney is crucial for the patent application process.

by Samuel K. Simpson
USPTO Registered Patent Attorney, Patent Ingenuity, P.C.

Samuel K. Simpson is a USPTO Registered Patent Attorney and the founder of Patent Ingenuity P.C. He holds a J.D. from The George Washington University Law School and has obtained over 100 granted patents.

Patent Ingenuity is a patent law firm based in Newport Beach, Silicon Valley, and Los Angeles, which has extensive experience in preparing Responses to Office Actions, as well as Appeals. A seasoned patent attorney at Patent Ingenuity can be available to provide you with guidance as to the best path forward to getting your patent application granted.

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