The Patent Examination Process
Inventors need to understand the examination process of a patent application going through the United States Patent and Trademark Office (USPTO). The process begins with the filing of a patent application and hopefully ends with the issuance of a granted patent; however, that is not always the final outcome. It would be reasonable to think that the examination process should only take a few months, but the truth is that the patent office has quite a backlog of pending patent applications and the process could take a long time. The Office of Initial Patent Examination usually reviews the applications fairly quickly, but once the application is assigned to an examiner it could take years for the application to be examined. Some art units take less time than others, but biomedical, electrical, and business method related art units take the longest.
Office of Initial Patent Examination
This is the first place that a patent application goes in the USPTO. This office is primarily concerned with reviewing the components of the patent application to ensure that all of the components of the application are completed. If some component of the application is missing or is improperly prepared, this office will request the proper information or components from the patent applicant. This office will typically assign the patent a serial number as well.
Once the patent application has cleared the Office of Initial Patent Examination, it is assigned to an art unit depending on the technology the invention is primarily concerned with. The application is usually assigned to an examiner shortly after being assigned to an art unit.
The USPTO will treat any non-provisional patent application as confidential until the patent application is published. This usually happens 18 months after filing the application. For a fee, the publication can be moved to either an earlier or later date depending on the desires of the inventor. Additionally, an inventor may request that an application not be published until the patent issues, so long as the inventor is not pursuing international protection. A patent attorney, agent, or the inventor himself may get information on the status of the application from the patent office if requested during the confidential period, but typically no one else can. Many attorneys or agents may be registered users of the Private Patent Application Information Retrieval (PAIR) System, which allows the attorney to view the patent office’s internal records and keep track of what happens to the patent application. Once the patent application is published, it is available to the public. The public may search a database containing patent publications or the Public PAIR System, which allows anyone to track what happens to the application regardless of their association with the inventor.
One of the first things that an examiner may try to determine is the number of inventions claimed in the application. By law, a patent can only have one claimed invention. If the examiner determines that there is really more than one claimed invention in the application, he or she will request that the inventor restrict the application to only one. The inventor can file a separate patent application for the other inventions while still keeping the original filing date. When the examiner is satisfied that there is only one invention in each application, he or she will review the application to determine if the claimed invention is patentable.
A patent rejection can mean that the examiner has found some reference or combination of references that he or she feels describes the claims of the patent application or renders the claimed invention obvious. Examiners may reject claims even when the claims are novel if they simply misunderstand the invention, which is why hiring a patent attorney or agent is a good idea. If this should happen, an inventor should not worry about receiving an initial rejection. A skilled patent attorney or agent may be able to modify the claims of the application slightly or present arguments to the examiner to get around the rejection. An attorney will usually involve the inventor before responding to the rejection. Sometimes only a few of the claims will be rejected while other claims are allowed by the examiner. In such a case the patent application will not grant until the attorney can get all of the claims allowed by either amending the claims or persuasively arguing with the examiner. If the examiner does not accept the amendments or arguments, he or she may issue a final rejection. Although it sounds final, the inventor still has several options: 1) file another application depending from (meaning linked to) the old application and try to present the invention in such a way that the examiner will allow the application; 2) amend the claims or argue with the examiner again, but if the examiner still does not accept the inventor’s position the application will become abandoned; 3) agree with the examiner and give up on the patent application; or 4) file a request for continued examination and a fee to keep the examination going. In addition to rejections, an examiner may issue one or more objections to the application. An “objection” on a patent application means that there is a format issue, which is usually easier to take care of.
Allowance of the patent application means that the patent application is accepted, and in due time will become a granted patent. The application will not become a granted patent until an issue fee is paid, and even then it may take six months before the patent office officially issues the patent.
A granted patent will generally expire 20 years after the filing date of the patent application. This means that part of the term of the patent application will be consumed while it is still pending in the patent office. Before 1995, patent law said that the term of a patent would be 17 years from the issue date of the patent. Since there were some problems with inventors trying to extend the life of their patents by extending the time period that the applications were pending in the patent office, it was changed to 20 years from the filing date of the patent application to encourage inventors to push their applications through the patent office instead of creating more work for them. A patent owner must also pay maintenance fees in order to keep the patent alive. Maintenance fees are currently due at 4½, 7½, and 11½ years after the patent grants. Fees are subject to change every year, so it is important to keep up-to-date with the fee schedule provided by the patent office.
Patent Term Adjustment
Due to the backlog of pending patents in the patent office and their shortage of patent examiners, a patent application may not be reviewed for at least a year. Some art units, such as those involved with electronics, biomedical, and business technologies are averaging close to a five year wait before a patent examiner reviews their patent applications. If a patent is granted, it will expire 20 years from the filing date of the patent application. If the patent office takes longer than three years to examine and grant a patent, the term of the patent may be adjusted accordingly. In some ways it may be beneficial to the inventor to have a long wait since the life of his patent will be extended. In other situations, this may hurt the inventor because investors or potential licensees may want to see if the patent application grants before they pay royalties to the inventor.
The website for the USPTO includes a flow chart corresponding to the above information with links that explain the many decisions that need to be made throughout the patenting process. While perusing this webpage you may find it informative to also check out the information linked to the statistics. Tis page has information pertaining to the length of time it takes to prosecute a patent application depending on the type of application or the art unit to which it will be assigned. Such information may also be found on the Patents Dashboard on the USPTO website.
As you can see, the patenting process is complicated and there are many decisions to be made during the life of a patent application continuing through to the patent. The information above only grazes the surface of this complicated process. A registered patent attorney/agent is skilled in maneuvering through this maze of information and paperwork and can be a very important asset for an inventor. The patent attorney can make the difference between being awarded a patent and being refused a patent.