Patent Prosecution: The Patent Application Series

In this ‘Patent Application Series,’ I’ll be discussing patent prosecution.   I’ll explain what it is, what to know before filing, and why it is an important process.

What Patent Prosecution is:

Patent prosecution has two definitions in the world of Intellectual Property.  In a general sense, patent prosecution refers to the plaintiff’s side of litigation in  a suit involving patent infringement. For this discussion, patent prosecution is the process that involves the filing of a patent application and the exchanges between the applicant/attorney and the examiner at the patent office regarding the merit of the patent application.  For an attorney to assist an inventor (applicant) with filing and prosecuting a patent application, the attorney must be a patent prosecutor, i.e. they must be licensed in the state in which they practice law, in addition to being licensed to practice law before the United State Patent and Trademark Office (USPTO).

What to Know Before Filing:

Filing a patent application does not guarantee a patent will be issued on the invention as it was filed.   In most cases, when the patent is finally allowed, the issued patent differs greatly from the application as it was initially filed.  All of the changes the application undergoes to become a patent worthy of issuance, take place during patent prosecution. The majority of patent applications filed with the USPTO are eventually issued as formal U.S. Patents, but the process is generally a long one that can end in a number of ways.

The first step in the process is filing the patent application with the USPTO.  Once filed, the application is reviewed for its adherence to the filing-formalities required by the patent office.  This review takes place during the pre-examination phase. If the formalities required by the patent office are not met, the patent office will issue a request for the application to be revised, before it can be formally examined.  After an application passes the pre-examination phase, it is placed in a que with other patent applications to await formal examination by a USPTO patent examiner.

After the pre-examination phase, the USPTO will issue a “First-Action Prediction.”  This informal notice can be viewed, along with the application, online via the Patent-Application-Information-Retrieval (PAIR) system.  This notice lets the applicant/attorney know an approximate timeline for when the USPTO expects the first Office Action to be issued. Generally, the timeline for examination is between 12-24 months from the application filing date.  That is not a misprint…it should be expected that the patent application will be on hold for possibly two years.

Once the patent application is assigned to an examiner, that examiner takes up the effort of reviewing and scrutinizing the application for its adherence to the legal requirements for patentability.  The patent examiner will study the as-filed application and scour the USPTO system for related prior art (previously published U.S. applications, issued U.S. patents, issued foreign patents, and any available non-patent literature). After a thorough review, the examiner writes up their findings in a first “Office Action.”  In the Office Action, the examiner explains any objections they have to the application’s adherence to filing formalities and any rejections they have to the claimed invention.

In rare instances, if an examiner finds no conflicts with the application as it was originally filed, they will issue a “First Action Allowance.”  If the application meets all requirements for patentability, but the application does not satisfy all formality requirements, the examiner can instead issue an “Ex-Parte Quayle Action.” This action gives the applicant a time-period for amending the application to meet the formality requirements, before the examiner will issue a formal “Notice of Allowance.”

The majority of patent applications receive a First or “Non-Final Office Action” that explains the examiner’s objections/rejections.  This notice will generally give the applicant three-months within which they can reply with a revised description of the invention, drawings, or claims.  The reply deadline can be extended with a “Request for Extension of Time.” A fee for each additional month will also be required at the time the reply to the “Office Action” is filed. The request with the associated fee can extend the time period for reply for up to three additional months, making the total opportunity for reply six-months from the mailing date of the “Office Action.”

In some cases, the examiner will determine that more than one invention is described in a single patent application and they will issue a “Restriction/Election Requirement.”  Only one invention can be described in an application and examined. In this instance, the applicant must restrict/elect which of the inventions they would like the examiner to review for patentability.  The applicant also has the opportunity to re-file the additional invention(s) as separate applications. If the separated application(s) are filed while the original application is pending (before it is issued or abandoned), the application(s) can be filed as divisionals of the original application.  Filing a Divisional patent application would allow the application(s) to claim the same filing date as the original application.

In reply to the first or “Non-Final Office Action,” the applicant/patent attorney must draft a formal reply to the examiner’s rejections.  An applicant/attorney has the option to argue against the examiner’s rejections or make amendments in the attempt to overcome the examiner’s rejections.  It is important to note that under the Patent Action, amendments can not be used to add new matter to the application.

If the response to the “Office Action” overcomes the examiner’s rejections and places the patent application in condition for allowance, the examiner will issue a “Notice of Allowance.”  Otherwise, the examiner will issue a second “Office Action” that either restates the original objection on the same grounds or cites new reasons that the application does not meet patentability requirements.  In most cases, the second “Office Action” is final, which means that patent prosecution closes and the applicant’s options for replying are limited.

After receiving a “Final Office Action,” the applicant/patent attorney have the option to abandon the application, file a “Request for Reconsideration,” file a “Notice of Appeal,” or file a “Request to Continue Examination” (RCE).  To abandon the application, the applicant can either file a direct request or simply allow the application to lapse for non-response to the “Office Action.” To file a “Request for Reconsideration,” in order to request the examiner to reconsider the previous rejections, would require filing an argument and/or amendment.  The argument/amendment would need to place the application in condition for allowance, otherwise the application could be abandoned should the examiner find the response unsatisfactory. To avoid abandonment in this manner and to maintain the right to appeal, a “Notice of Appeal” should be filed before the six-month “Office Action” response deadline. To appeal the examiner’s rejection, a “Notice of Appeal,” the required fee, and an Appeal Brief must be filed with the Patent Trial and Appeal Board (PTAB) .  The time period to expect a decision from the PTAB is usually two or more years. If the PTAB decision is adverse, an appeal to the Court of Appeals for the Federal Circuit can be made, or a civil action against the USPTO Commissioner can be filed in the U.S. District Court.

Before filing an appeal, the suggested course of action is likely to be filing a “Request for Continued Examination” (RCE).  With this request, a response to the “Final Office Action” is filed with a fee. The examiner will review the response and will either issue a “Notice of Allowance,” or issue a new “Non-Final Office Action.”  If the examiner does not accept the response to the “Non-Final Office Action” and instead issues another “Final Office Action,” additional RCEs can be filed to continue prosecution. It is possible for a single patent application to receive numerous Office Actions and file multiple amendments in response before the application is finally issued as a patent.

Why Patent Prosecution is an Important Process:

The patent prosecution process allows the entire patent system to work.  Through patent prosecution, both the examiner and the applicant gain an understanding of the claimed invention and how it compares to other potentially similar inventions.  Without a rigorous review of every patent application, the system couldn’t be relied on to issue new, useful and non-obvious U.S. patents. Where would we be without patents…?

Don’t leave a matter as important as your intellectual property to chance.  Willing help in the form of an experienced legal team is here and just a call away.  We a Charleston patent attorney, a Greenville patent attorney, and a Knoxville patent attorney, each with specialized expertise patent law.  Please contact us if you are interested in filing a patent application or in learning more about the patent application process.