Patent Prosecution in the USPTO

Once an application is filed in the U.S. Patent Office, it is assigned to a government-employed patent attorney, known as an “Examiner,” within the appropriate technological field in the Patent Office. This Examiner will perform a search through previously-filed applications, issued patents, and publicly available products to determine whether the applicant’s claims are new and inventive.

After reviewing the application and these Patent Office search results, the Examiner prepares an “Office Action” explaining the reasons for allowing, or initially objecting to, the claims of the application in light of these search results. In rare cases, typically when the applicant provides its own list of prior art from the preliminary patentability search, the Examiner may allow the application to mature into a patent after this first examination.

More commonly, though, the Examiner will issue an Office Action placing the burden back on the applicant, and the inventor’s patent attorney, to justify the issuance of the patent over the discovered references. The patent attorney of record will receive this list of prior art references, retrieve same, and thoroughly study them in preparation for filing a response. Copies of the Office Action, the cited references, and a recommended course of action are then forwarded to the applicant. When the Examiner has cited technically detailed references against the pending application, the inventor is often requested to provide comments regarding the devices featured in the cited references to provide insight to the patent attorney on the strength or weakness of the Examiner’s findings.

The patent attorney’s access to the inventor is crucial during this period, as the inventor is in a unique position to understand the drawbacks of the cited references as related to the applied-for invention, and the manner in which the claimed invention improves upon the disclosures of the prior art. It is therefore important that the inventor keep our firm apprised of current contact information, including a mailing address, e-mail address, and telephone number, at all times. If the inventor has relocated and the attorney of record cannot reach him to discuss the Office Action, or if the inventor cannot be located in time to sign essential documents, costly delays and loss of patent rights may result.

Typically, the attorney, in cooperation with the inventor, will prepare a substantive memorandum for the Examiner’s review (known as an “Office Action Response”). The Response will normally include a discussion of the differences between the references cited by the Examiner and the applicant’s new invention, as well as legal argument setting forth the law as to why the particular application should be deemed allowable by the U.S. Patent Office. The Response may also set forth amendments to facilitate the allowance of the application into an issued U.S. Patent.

When an Office Action is issued, it has a federally-imposed deadline for response. The standard time period for a Response to an Office Action is three months, although extensions of time can be obtained by paying federal extension fees to the Patent Office. However, a response must always be filed within six months of the Action’s issuance, after which the application will be deemed abandoned if there is no response. Open communication between the inventor and patent attorney throughout the application process is therefore imperative to ensure that the federal deadlines are met properly.

The patent attorney and Examiner may continue to exchange Office Actions and Responses of this nature, and may even conduct oral conferences regarding the invention, until the application is allowed or abandoned. The total prosecution time of the application, from the time of filing until issuance or abandonment, typically requires sixteen to thirty-six months, although the time may vary due to the particular circumstances of each invention. Please note that the status of the application is “patent-pending” from the filing date throughout this entire prosecution period, during which the inventor’s rights are protected as being the inventor of record of his or her concept.

The prosecution phase of the application can range in cost from approximately $2,800 – $5,900, depending on the amount of correspondence with the Patent Office and the complexity of the case. In more complicated cases, the cost can be as much as $6,000 or more, but the majority of cases will remain on the lower end of the above scale. As is our firm’s policy, we will not engage in any substantive projects on the application, including a Response to the Office Action, without a clear discussion with the inventor on the upcoming estimated costs. Payment of the estimated cost is typically requested with the inventor’s authorization of the project to facilitate the efficient completion of the Response.

The Patent Office will also publish the application, including the submitted drawings and invention description, a year and a half after its filing. Although our firm maintains its strict confidentiality policy throughout the entire relationship with the applicant, the Patent Office will allow the public to review the filed application at this point on its online database.