Patent Prosecution

Executive summary:

After Filing, patent applications in the Patent and Trademark Office are classified by technology area and assigned for examination. A Patent Office examiner will review the application in the order in which it was received (in limited circumstances, it is possible to receive expedited handling). The examination consists of a study of the application for compliance with the legal requirements, and a search through United States patents, prior foreign patent documents, and available literature, to see if the claimed invention is new and unobvious. A decision is reached by the examiner based on the results of this search. Typically, the examination will include the following steps:

First Office Action:

The first formal correspondence from the Patent and Trademark Office concerning the patentability of the invention is in the form of a first "office action," which is normally mailed to the applicant's patent attorney. This is generally received about nine months after the application was filed, although the actual time can vary considerably depending upon the technical field of the invention.

The first office action will usually contain reasons for any adverse action, objection, or additional requirements. If the invention is not considered patentable subject matter, the claims will be rejected. If a patent is rejected, it is generally because the claims are not new in comparison to the prior art, or because the improvements made over the prior art are obvious. It is not uncommon for some or all of the claims to be rejected on the first action by the examiner; relatively few applications are allowed as filed.

If two or more inventions are claimed in a single application, and are regarded by the Office to be of such a nature that a single patent should not be issued for both of them, the applicant will be required to limit the application to one of the inventions. The other invention may be made the subject of a separate application which, if filed while the first application is still pending, will be entitled to the benefit of the filing date of the first application. This separate application is referred to as a "divisional application."

Applicant's Amendment and Response:

In responding to the first office action, the applicant's patent attorney will draft an amendment and response. This document will request reconsideration and will specifically address the perceived errors in the examiner's office action. Frequently, the document will include an amendment to the claims in order to clarify the invention and to overcome the prior art cited in the first office action. In addition to the amendment, the document may contain arguments as to how the amended claims are patentable in view of the prior references cited or the objections made.

In filing amendments, the patent attorney must be careful not to add "new matter" to the applications. Under the Patent Act, all amendments to the drawings or specifications must conform to part of the application as originally filed. Any matter involving a departure from or an addition to the original disclosure will be rejected as new matter. Typically, the new matter which an applicant would like to add includes new descriptions of how the invention works, or further clarification of the type of materials and components utilized. These types of additions are disallowed in order to prevent new inventions from being "piggy-backed" on to old patent applications.

The response of an applicant to an action by the Office must be made before a prescribed deadline. Typically, the deadline is set three months after the office action was mailed, and can be extended one month at a time up to six months. Each one month extension requires the payment of an additional fee. If no reply to the office action is received before the six month deadline, the application is considered abandoned. However, if it can be shown that the failure to prosecute the application was unavoidable or unintentional, the application may be revived by the Commissioner. The revival requires a petition to the Commissioner, and a fee for the petition, which should be filed without delay. The proper response must also accompany the petition if the response had not been previously filed.

Final Rejection:

After response by the applicant, the application will be reconsidered, and the applicant will be notified if claims are rejected, or objections or requirements made, in the same manner as after the first examination. This second office action is usually made "final." In making such final rejection, the examiner repeats or states all grounds of rejection considered applicable to the claims in the application. The alternative to a final rejection is the allowance of the application, which is discussed on the patent issuance web page.

When an office action is final, the applicant's response is then limited. The applicant's choices are generally one of the following:

In responding to the final office action, the applicant must remember that a six month deadline will be established, just as in the first office action. If the applicant, in consultation with her/his attorney, believes the invention is not patentable, the application should be abandoned. Alternatively, the applicant may request reconsideration from the Examiner, but such a request must be made early and must include arguments or amendments which place the application in position for an allowance. The applicant must then wait for a response to the request for reconsideration, but the applicant cannot allow more than six months from the date of final rejection to pass.

The applicant may wish to appeal the examiner's rejection to the Board of Patent Appeals and Interferences in the Patent and Trademark Office. The Board of Patent Appeals and Interferences consists of the Commissioner of Patents and Trademarks, the Deputy Commissioner, the Assistant Commissioners, and the examiners-in-chief, but normally each appeal is heard by only three members. An appeal fee is required and the applicant must file a brief to support his/her position. An oral hearing will be held if requested upon payment of the specified fee.

If the decision of the Board of Patent Appeals and Interferences is adverse to the applicant, an appeal may be taken to the Court of Appeals for the Federal Circuit or a civil action may be filed against the Commissioner in the United States District Court for the District of Columbia. The Court of Appeals for the Federal Circuit will review the record made in the Office and may affirm or reverse the office's action. In a civil action, the applicant may present testimony in court, and the court will render a decision.

As an alternative to an appeal, in situations where an applicant desires consideration of different claims or further evidence, a continuing patent application may be filed. The new application requires a filing fee and should submit the claims and evidence for which consideration is desired. If it is properly filed before expiration of the six month period specified in the final office action, the applicant will be entitled to the earlier filing date for subject matter common to both applications. Under recently adopted changes to the patent rules, some continuing patent applications will keep the same filing date and serial number as the original application.