The patenting process begins with the filing of a patent application that a patent applicant submits at a patent office such as the United States Patent and Trademark Office (USPTO) in the United States (US), where a patent application generally includes detailed descriptions, claims, drawings, and an abstract. After filing the patent application, it is assigned a filing date and a patent application number. The USPTO checks for the completeness of the patent application and issues a filing receipt to confirm that USPTO has received the patent application. Then, the USPTO assigns the patent application to a patent examiner who will examine the patent application to determine whether it deserves a patent.
In the first step, the a patent applicaiton submits the patent application to the USPTO which begins the examination process by conducting a preliminary review of the paperwork submitted. We called this step “pre-examination.” Pre-examination focuses on ensuring that the patent application contains all the necessary parts, paperwork, and fees. It does not yet look at the details of the invention submitted. If there are any issues with the paperwork and fees submitted, the USPTO will issue a notice of informality and ask the patent applicant to fix the issues. Only after all paperwork and fees are in order will the USPTO assign the patent application to a patent examiner for examination of the invention details.
Once the patent application reaches it turn to be examiner, the USPTO assigned patent examiner performs a patent search to find existing similar inventions called prior art. The examiner’s goal is to look for similar inventions to determine whether the patent applicant’s invention is different enough from existing inventions. To be different enough from existing inventions to be awarded a patent, the invention must meet the patentability requirements of being novel and nonobvious. If the examiner believes the invention is novel and nonobvious when compared to the prior art, the examiner will approve the patent application by issuing a Notice of Allowance. However, and more commonly, the examiner will want to discuss with the patent applicant why the applied for invention deserves a patent. To do this, the examiner issues a letter to the patent applicant called an “Office Action”. In the Office Action, the examiner lists out the prior art found and reasons why the examiner believes the applied for invention may not be different enough to deserve a patent. The examiner invites the patent examiner to respond back in writing and argue for approval.
A simplified flowchart of the patent examination process at the USPTO is as follows:
The first office action is usually the Non-Final Office Action, inviting the patent applicant to reply with arguments to try and convince the examiner to approve the patent application. The patent applicant’s response may include amendments to the patent application claims to possibly claim different parts of the inventions in hopes that changing what is claimed will convince the examiner to approve the patent. Or, the response may include arguments as to why the invention is novel and nonobvious when compared to the examiner’s found prior art. If the patent examiner is convinced by the patent applicant’s reply, the patent examiner will approve the patent application by issuing a Notice of Allowance. If the patent examiner is not convinced by the patent applicant’s reply, the examiner will issue a second office action which is usually a Final Office Action.
If the patent examiner issues a Final Office Action, the applicant has several options, including (a) filing of an appeal, where the decision for patentability will be made by the Patent Trial and Appeal Board (PTAB); (b) filing a request for continued examination (RCE), where the applicant continues discussion with the patent examiner; (c) requesting examiner interview, where the applicant may request to discuss with the examiner by phone, online, or in person to try and convince the examiner to approve the patent application; and (d) abandonment of the patent application, if the patent applicant decides to no longer pursue the patent.
Back-and-forth with the patent examiner in the form of responses sent by the patent applicant and office actions sent by the patent examiner may continue numerous rounds until the examiner is satisfied and issues a Notice of Allowance, or the applicant decides to abandon the application and the examiner then issues a Notice of Abandonment. If the patent applicant receives a Notice of Allowance, the applicant makes payment of the required issue fees, and the patent is granted and published at the USPTO.
The patent examination process at the USPTO is designed to evaluate the patentability of inventions while ensuring compliance with legal standards. The USPTO holds the responsibility to grant patents only for those inventions that are novel and nonobvious when compared to existing inventions. As the patent examination process has numerous steps, it is recommended to work with an experienced patent attorney or patent agent in filing a patent application and in responding to USPTO office actions.
