The Third of Four Articles on the Patent Process

Fritz Klantschi

This is the third of four articles discussing the basics of filing a U.S. patent. The interaction between the patent applicant and the USPTO regarding the patentability of the application’s claims is referred to as patent prosecution and continues until either the applicant abandons the application or the USPTO declares the claims as patentable and issues a Notice of Allowance.

Upon receipt, the USPTO checks to ensure the filed non-provisional patent application is complete (appropriate fees paid, formalities review – determine if a specification, drawings, claims and oath/declaration are filed and conform to USPTO standards).  If complete, an Official Filing Receipt is issued which identifies the application number, filing date, and other relevant information.  The patent application is assigned to the appropriate technology group and is examined in the order it is received.  Because of the backlog at the USPTO, it may be one or two years before there is any substantive examination of the patent application.  At 18 months from the earliest filing date, the patent application is generally published.  If an applicant decides not to seek patent protection in foreign countries, the applicant can elect that the patent application not be published until the patent is granted.  A benefit of not having a patent application published is that others cannot review the patent application or the prosecution history until and only if the application matures into a patent.  A drawback to not publishing a patent application is that a patent holder may not seek damages for infringement prior to a patent being issued.  In certain situations, a patent holder may be awarded damages for infringement occurring prior to an application maturing as a patent when the published claims remain substantially unchanged and mature into a patent.

Review of the Application

Once an Examiner is assigned and has reviewed the contents of the application for all U.S. legal requirements, the Examiner will determine if the application is claiming more than one invention.  If more than one invention is claimed, the Examiner will issue a restriction requirement requiring the applicant to elect the invention to be examined.  If only one invention is claimed, or the applicant has elected one invention to examine (prosecute), the Examiner conducts a prior art search and generally issues a first Office Action.  In the examination phase, the initial burden is on the examiner since an applicant is entitled to a patent unless the requirements of U.S. law are not met.  A patent examiner will read and understand the invention as defined by the specification and drawings; determine whether the application is adequate to define the boundaries of the claimed invention; determine the scope of the claims; perform searches of existing technology (both patent and non-patent literature); and determine the patentability of the claimed invention.

In the first Office Action, the Examiner will identify if the invention is not adequately described and enabled, the claimed invention is not described in clear and definite terms, and whether the drawings comply with USPTO standards.  The Examiner will also identify if any claims contain patentable subject matter and identify any rejected claims and provide a basis for the rejection.  Claims are generally rejected as lacking novelty (where no aspect of the invention is new such that every element of the claimed invention is disclosed in a single prior art reference) or as obvious in view of the cited prior art. (An invention is obvious if the differences between the claimed invention and the prior art is such that the claimed subject matter as a whole would have been obvious to one of ordinary skill at the time the patent application was filed.)

An Examiner may also reject one or more claims for being directed to non-eligible patent subject matter (laws of nature, natural phenomena and abstract ideas – these terms include scientific principles, natural occurring phenomena, mental processes, and mathematical algorithms).  If the Examiner objects to the drawings or specification or has rejected one or more claims, the Examiner issues an Office Action. Typically, a response to an Office Action is due within 3 months of the mailing of the Office Action.  Time to submit a response can be extended with payment of the appropriate governmental fees to six months from the mailing of the Office Action.

Responding to an Office Action

Preparing a response to an Office Action includes an analysis of the grounds for rejection and the cited prior art.  The response may include claim amendments and arguments responding to each rejection of an independent claim.  It is important to consider whether the claims and arguments are consistent with the applicant’s objectives for the critical features of the invention seeking protection. Once a response is filed, the Examiner reviews the response, conducts a subsequent search and either agrees with the claim amendments and arguments presented with regards to patentability and issues a Notice of Allowance, or disagrees with the Applicant’s response and issues a Final Office Action.

If a Final Office Action is issued, a subsequent response is required to address the claim rejections.  If claim amendments are made in a response to a Final Office Action, the Examiner is likely to issue an Advisory Action stating the response will not be entered because the proposed amendments raise new issues that require further search, raise issue of new matter, are not deemed to place the application in better form for appeal, or present additional claims without cancelling a corresponding number of finally rejected claims.

A Request for Continued Examination (RCE) filed by the Applicant in response to an Advisory Action re-opens prosecution and the earlier-filed response to the Final Office Action is entered.  The RCE allows for continuing examination of the patent application.

An alternate approach to responding to a Final Office Action and/or an Advisory Action is to initiate an appeal process.

Notice of Allowance

A Notice of Allowance is issued when the examiner determines that the patent application is complete and meets all statutory requirements, including that all pending claims are deemed patentable in view of the prior art.  The applicant is required to pay an Issue Fee and ensure all formalities are completed, such as filing of an Oath and Declaration.  After the issue fee is paid, it may take another month or two before the USPTO issues a patent.  Prior to the issuance of the patent, an applicant has the opportunity to file continuation or divisional patent applications, claiming priority back to the originally-filed application.

It may take two or more years from the date the non-provisional application is filed to obtain a patent.  Statistics show that the average pendency for utility patent applications is 33 months as of November 2016.  This is dependent on the technology area of the patent application.  Generally, biotechnology and organic chemistry patent applications have a total pendency of two years, while mechanical engineering products have the longest pendency.  However, once a patent application (either a provisional or non-provisional patent application) has been filed, the applicant can claim “patent pending” with respect to their invention/product.

Term of the Patent

The term of a patent is 20 years from the date of the earliest filing.  Once a patent issues, the patent holder can enforce his rights and prevent others from manufacturing, importing, selling or offering for sale the patented technology without first obtaining a license from the patent holder.  The scope of the patented invention or the extent of protection is defined by the claims of the granted patent.  The patent holder must pay maintenance fees at 3.5, 7.5 and 11.5 years after the patent issues, to maintain the patent.

No infringement action may be started until the patent is issued. However, pre-grant protection is available which allows a patent owner to obtain reasonable royalty damages – the amount the infringer would have paid for a license- for certain infringing activities that occurred before the patent’s date of issuance. This right to obtain provisional damages requires a patent holder to show that (1) the infringing activities occurred after the publication of the patent application, (2) the patented claims are substantially identical to the claims in the published application, and (3) the infringer had “actual notice” of the published patent application.