|| Correspondence with the Patent and Trademark Office
bout six months to a year after a complete patent application has been filed, a Patent Examiner at the Patent Office performs a prior art search. After reviewing the prior art, the examiner prepares an "Office Action" explaining the reasons for allowing or disallowing claims of the application based on the prior art references.
The attorney receives copies of the references
cited in the Office Action and studies them in preparation for filing a response.
Copies of the office action and references are also forwarded to the client
in order to obtain the inventor's comments. The inventor's comments are always
helpful because he is in a unique position to help the attorney understand the
drawbacks of the devices disclosed in the prior art references.
In responding to the office action, it is sometimes necessary to obtain the inventor's signature on additional papers. Accordingly, it is important that the inventor provide his attorney with his current address and telephone number at all times. If the inventor has moved and the attorney cannot reach him to discuss the references cited by the Examiner, or if the inventor cannot be found to sign essential documents, costly delays and loss of patent rights may result.
If the inventor desires to prosecute the application further, the attorney prepares a document which is usually referred to as a "Response." This document may amend the claims to better distinguish them over the references cited by the Examiner. It may amend the application to comply with the Examiner's editorial taste. It almost always includes a discussion of the differences between the references cited by the Examiner and the applicant's invention. In appropriate cases it includes a legal argument setting forth the law as to why this particular application should be allowed.
The time period set for response to the Office Action is usually three months. Extensions of time to file the response can be obtained by paying appropriate fees to the Patent Office. In no case, however, can a response be filed later than six months from the date of the Office Action.
The attorney and the Examiner continue to
exchange "actions" and "responses" of this nature, and may conduct oral conferences,
until the application is either allowed or "finally rejected", which commonly
occurs on the second Office Action. The total prosecution time of the application
after the filing of the original application is on an average, about
two years, although the time may range anywhere from one to three years or more.
Most of that time lapse is spent awaiting actions by the Patent and Trademark
The correspondence with the Patent Office
in routine cases costs approximately $1,840-$2,890, the cost depending on the
number of responses filed and the complexity of the case. In more complicated
cases in which affidavits and other evidence must be submitted, the cost can
be as much as $3,000 or more. However, in the majority of cases, the cost of
correspondence is $1,800-$2,800, payable at the time that the attorney begins
to work on the response.