Patent Prosecution

"What’s this is I hear about costs and tasks after I file my patent application?"

Sorry, but it’s true.  There are still plenty of expenses to come after your patent application is filed.  To give you an idea of where those expenses crop up, we’ve written out the phases of a patent application.

"Patent Pending"

You hear the term “patent pending” all the time, and you see it on all sorts of products.  When placed on a product, “patent pending” means there is a patent application on file with the Patent Office that is still awaiting final judgment.  To make matters more confusing, the application can be a provisional application.  that means it might not

From the moment your application is filed (whether it be provisional or non-provisional), you have "patent pending" status.  During this phase, you have some business decisions to make as to how to use your patent pending status. 

At the Patent Office, your application is waiting in line for examination.  It could take as long as three years to When your application was submitted to the Patent Office, they reviewed it and made a determination about which art area should examine it.   Once the application is directed to that particular art area, it is put in a cue for examination.  Depending on how fast the art area is moving, it could be 1-3 years before your application before your application lands on an examiner’s desk.

Patent Examination

Getting a patent is a little like getting a job, in that you may have to go through several rounds of rejection before you finally have your patent. 

The examiner is going to make a decision about whether or not your invention deserves a patent.  More precisely, the examiner is going to decide if your claims deserve a patent — if what is claimed represents something new, novel and non-obvious.  Though the examiner has several criteria to use in the examination, the biggest one is research.  The examiners will search far and wide for any prior art that appears similar to your application, and if they find it, they will put together a rejection.

Non-Final Rejection

The first rejection that comes down is called the Non-Final Rejection.  The Patent Office is nice enough to give you a chance to revise your claims without charging a fee. The last time we checked 90% of utility patent application received non-final rejections, so you should not feel left out if your application is rejected on the first go-round.

But here is where things can start costing money.  If you are using a registered practitioner (which we think is always smart), you will need to pay your practitioner to write a response to the examiner’s objection.  The response is most often in the form of amended claims with remarks, and it can take one or more days to write.  This is where we get into the patent prosecution side of things.

Final Rejection

After you respond to the non-final rejection, the Patent Office may still reject your application. This is called the final rejection, though it is not necessarily final.

If you receive a final rejection, you can still make more responses by filing a Request for Continued Examination (RCE).  This request has a $465 government fee. Your response is similar to the non-final rejection.  It’s about refining the claims to the point that the examiner will allow something (anything!).

The patent office will examine your amended claims and either accept them or do another non-final rejection, which you can then respond to again.

Beyond Rejection

We hate to take the narrative in this direction, but many applications just can’t get allowed no matter how many times you send them back to the Patent Office.  Prosecution can continue and continue and continue. Patent applications have gone all the way to the Supreme Court.  Every step of the fight costs money.  As mentioned above, it is always hoped that you can get your patent with as little pain as possible.