Patent Prosecution

After a patent application is filed with the U.S. Patent and Trademark Office, the application is classified by technology area and assigned to an examiner for examination. The examiner will review the applications assigned to her in the order in which they were received (in limited circumstances, it is possible to receive expedited handling). In most cases, a patent application will be picked up for examination between twelve and twenty-four months after filing. Typically, the examination of a patent application will include the following steps:

Provisional Applications | Patent Index | Issuance

First Office Action

The job of the patent examiner is to determine whether or not a patent application complies with the legal requirements for patentability. In particular, the examiner is to evaluate whether the claims in a patent application are enabled by the application's specification, and whether the claims particularly point out and distinctly claim the invention. In addition, the examiner will conduct a search of United States patents and published applications, foreign patent documents, and available literature, to see if the claimed invention is new and nonobvious.

The result of this evaluation is then communicated by the examiner to the applicant or the applicant's attorney. In most cases, the result is an office action that rejects some or all of the patent claims in the patent application. Statistics show that over 85% of patent applications receive a first office action rejection, even though more than half of patent applications eventually become issued patents.

In some cases, a patent examiner will examine the claims of a patent application and decide that the applicant is attempting to claim two or more different inventions in this one application. Since patent applications are only allowed to be filed on a single invention, the patent office will issue a "restriction requirement" in this case. This document requires the applicant to select a single invention for further evaluation by the patent office. The other inventions may be made the subject of separate applications that, if filed while the first application is still pending, will be entitled to the benefit of the filing date of the first application. These separate applications are referred to as a "divisional applications."

Applicant's Amendment and Response

In responding to the first office action, the applicant's patent attorney will draft a response document that points out perceived errors in the office action. Frequently, this response document will include an amendment to the claims in order to clarify the invention and, in some cases, to narrow the claims so as to overcome the prior art cited in the office action. The response will also contain arguments as to how the pending claims are patentable in spite of the prior art references cited or the objections made.

In filing amendments, the patent attorney must be careful not to add "new matter" to the application. Under the Patent Act, all amendments to the claims, drawings, or written description of the invention must be consistent with the description of the invention as originally filed. Any matter involving a departure from or an addition to the original disclosure will be rejected as new matter. These types of additions are disallowed in order to prevent new inventions from being "piggy-backed" on to old patent applications.

In most cases, the deadline to respond to the first office action is three months after the office action was mailed. This deadline can be extended for up to three additional months. Each one month extension requires the payment of an additional fee, although the fees and extension requests do not need to be filed until the action office action response is filed. If no reply is filed to the office action before the six month deadline expires, 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. To revive an abandoned application, the applicant must file a petition and pay a petition fee. A proper response to the office action must also accompany the petition if the response had not been previously filed.

Final Rejection

After the response is filed by the applicant, and if all goes well, the patent office will allow the application. The allowance of an application is discussed in more detail on the patent issuance web page.

In some cases, the patent office is not persuaded by the applicant's response. Instead, the patent examiner either continues to reject the application on the same grounds identified in the first office action, or develops new reasons why the application still does not meet the legal requirements for patentability. The applicant is notified of this continued rejection through a second office action. In most cases, this second office action will be made "final." When an office action is final, the applicant's response is then limited. The applicant's choices are generally one of the following:

  • decide to abandon the application;
  • convince the Examiner to allow the application through a request for reconsideration;
  • appeal the final rejection; or
  • file a request for continued examination (or "RCE"), which will allow the examination to continue.

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 should 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.

The applicant may wish to appeal the examiner's rejection to the Patent Trial and Appeal Board (the "PTAB"). An appeal requires that a Notice of Appeal be filed along with an appeal fee. The applicant must also file a brief to support his/her position. An oral hearing may be held on the appeal. The time from filing a Notice of Appeal to receiving a decision from the PTAB is usually multiple years. If the decision of the PTAB 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, the applicant can decide to continue prosecution of the patent application in front of the patent examiner. To do this, a request for continued examination is filed along with a response to the final office action. The patent office will then take up the evaluation of this patent application and can either allow the application or issue yet another office action. By filing multiple RCEs, it is possible that a single patent application can receive five or more office actions before eventually be allowed and becoming an issued patent.