One of the most common questions we hear from clients seeking a utility patent is, “How long does this process take?” (The other common question is, “How much will this cost?”)
Venjuris attorney Robert McGee, has worked on a substantial number of patents since joining the firm, and intends to take the patent bar later this year. He said, when it comes to the question of duration, the best answer he can give is, “It depends.”
How Long to Expect
For a typical utility patent (invention), McGee said it’s typical for the patent process to take between 18 months and 3 years between the time the patent application is filed (full application, not a provisional one) and when the United States Patent and Trademark Office (USPTO) grants the patent.
There are exceptions to this rule. If a client is willing to pay the extra fee for expedited processing, their patent could be issued in less than a year. There are also special circumstances where the USPTO will move a new patent application to the front of the line, such as, the applicant is in poor health or over age 65, or if the patent is related to a renewable energy source.
There are also exceptions in the opposite direction. McGee said he knows of at least one patent that took 10 years from the day the application was filed until it was granted. (That was a complicated situation that involved the USPTO appeals process.)
What Takes So Long?
A substantial part of the patent application process is waiting. It can sometimes take a year or more after you submit a patent application, for an examiner at the USPTO to review it and send a response – usually an Office Action. Much of that has to do with the USPTO’s backlog. There are only so many applications they can review in a day.
An Office Action is a communication from the USPTO where the examiner rejects some or all parts of your application, often because the examiner suspects that the scope of your desired patent is too broad in light of existing inventions. If the USPTO issues an Office Action, you have up 6 months to respond. Usually you will either argue that the rejection is incorrect or draft changes which narrow the scope of the patent. Depending on your patent attorney’s workload and the content of the Office Action, it can take the full 6 month to craft and submit an effective response.
Office Actions: Extend the Process and but Maximize Protection
Office Actions may seem problematic on their face, but they are actually a good thing in the patent process. If you don’t get an Office Action, you likely could have written your patent more broadly and expanded the scope of your patent. Once you submit a patent application, you can’t add to its scope; it can only be limited. That’s why you want your patent to afford you the most protection for your invention as possible, and make the USPTO force you to chisel it back if necessary.
Everyone who submit a utility patent application should expect to receive at least one Office Action. While Office Actions are viewed favorably overall, they do add to the patent application process. Once you submit your response to the Office Action, it may take the examiner another 4-12 months to review and either accept the revisions or issue another Office Action or similar communication to you.
When it comes to applying for utility patent, a suitable rule of thumb is “Submit and wait (but not with bated breath).” Applying for patent is a process, not an event. If you need any help with your patents or other intellectual property, please send us a message. We have lawyers licensed in Arizona, Connecticut, and New York, and we can handle federal intellectual property matters in any U.S. state and assist with international matters. We would be happy to discuss your patent ideas and the expected fees based on your specific situation. For even more information, be sure to connect with us on Facebook.
Post written and edited by social media attorney Ruth Carter.