The Road to Patent Registration – Part II

The road to patent registration can be long and confusing – especially for a first-time inventor. In Part I, we reviewed the first five steps:

Step 1: What type of intellectual property provides the best protection for your situation?
Step 2: Do you even need a patent?
Step 3: Is your invention is patentable?
Step 4: What type of patent you need?
Step 5: What are some of the initial application issues?

It Part II below, we broadly review of the next three major steps in the journey to patent registration.

Step 6: Office Actions – Working with the USPTO

“Waiting…” by Stephanus Riosetiawan from Flickr

Shortly after filing your patent application, the United States Patent and Trademark Office (USPTO) will review your application for procedural deficiencies. If anything is procedurally missing or defective about your application, the USPTO will issue an “Office Action.” For example, if you did not submit a declaration, the USPTO will notify you of this error and give you a time frame to fix it (with a surcharge, of course). The USPTO will issue an official “Filing Receipt,” which reflects the basic information about your patent application.  If there is anything wrong with the Filing Receipt, now is the time to fix it.

Next, the USPTO will review your application for patentability. On average, it takes about eighteen months for the USPTO to issue this first substantive “Office Action,” but this time frame can vary widely depending on what art group your application is in. Your patent’s art group will be listed on your filing receipt.

In the first substantive Office Action, the Examiner will review your patent claims for a variety of issues, including (1) “enablement,” (2) “novelty,” and (3) “non-obviousness.” If the Examiner finds issue with these or any other issues, they will outline each problem in the Office Action. As before with the Filing Receipt, you will be given a specific time (usually 3 months) in which to respond to the Office Action. In the Response, you can present arguments as to why the Examiner is wrong and/or amend your application to overcome any stated issues. If you fail to submit a Response on time, your application will be deemed “abandoned.”

If you respond to the Office Action but fail to completely overcome the pending rejection, you will likely receive a “Final Office Action.” In general, when facing a Final Office Action, your options are to (1) appeal to the Patent Trial and Appeal Board or (2) file a request for continued examination (RCE) to continue trying to persuade the Examiner to allow your claims.

Step 7: Receive your Notice of Allowance

“Jumping for Joy” by kilgarron from Flickr

If you persuade the Examiner to allow your claims, the Examiner will issue a Notice of Allowance. In addition to informing you that your patent can granted, the Notice of Allowance will itemize the issue fee and its due date. Failure to pay the issue fee by the due date will result in abandonment of the patent application.

Once the issue fee is paid, the USPTO typically issues the patent in about four weeks. You should receive notice of the “issue date,” which is important if you are going to file a continuation, continuation-in-part, or divisional application. You must file it prior to the issue date in order to claim priority. Otherwise, the newly issued patent will be considered prior art against any new filing – even if it is filed by the same inventor.

Step 8: Maintain your Patent

After your patent issues, you must maintain it to enforce your patent rights for the full 20-year term. To do so, you must pay three periodic maintenance fees, due at 3.5, 7.5, and 11.5 years after the patent issue date. If the maintenance fees are not timely paid, your patent will automatically expire and become unenforceable.

You can check the status and payment windows for maintaining your patent by accessing the USPTO payment portal, using your patent application number and patent registration number, available on almost any communication from the USPTO, or by locating your patent via Google’s patent search engine.

If during the life of the patent any change in ownership occurs, you can record an assignment or other related ownership transaction via the PTO recordation portal.

If you need more information about filing for or obtaining patent, please send us a message. Our attorneys have over 100 years of combined experience and are licensed in Arizona, Connecticut, and New York. We can handle federal intellectual property matters in any U.S. state and assist with international matters. For even more information, sure to connect with us on Facebook.

Post by patent attorney Joseph Meaney, edited by social media attorney Ruth Carter.

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