The process to obtain a utility patent can be confusing for non-lawyers. While not all aspects (like international filings, applications made special, expedited examination, etc.) are covered, this post attempts to simplify a rather complicated process.
For patent protection in the US, an applicant can file a provisional utility patent application, a non-provisional utility patent application, or a design patent application. This post describes the process for utility applications. The difference between a utility and design patent is provided here.
In case a provisional application is filed, the application is not examined by the patent office until a non-provisional application is filed claiming a priority date of the filing date of the provisional application. If a provisional application is not filed, then the filing date of the non-provisional application becomes the application’s priority date.
Once a non-provisional application is filed, the total time to obtain a patent can be approximately 2-4 years. 18 months after filing of an application to which priority is claimed, the patent application is published by the patent office. As of writing this post, approximately 1.5 – 2 years after filing the non-provisional application, the application is examined and a first non-final office action rejection is issued. Office Action rejections seem to become the “norm” as more than 99% of all utility non-provisional applications filed would result in some form of rejection. The rejection will outline the reasons why the examiner believes the claims cannot be patented. In most situations, however, the examiner’s concerns can be addressed by making amendments to the claims.
After reviewing the submitted amendments, the examiner would may either allow the claims or may issue a first final office action rejection if they are not satisfied with the amendments submitted, or if the examiner found other references that prohibits patentability of the claims.
After a final office action rejection, a request for continued examination (RCE) can be filed if more amendments are made, or the matter can be appealed to the Patent Trial and Appeal Board (PTAB). In most cases, a first RCE would be recommended by almost every patent attorney. This is because the appeal process can be very lengthy and expensive.
An RCE resets the office action rejections, and if the examiner is still not satisfied with the amendments, another non-final office action rejection is issued. In effect, an RCE allows the applicant to take “another bite of the apple,” as the office action issuing cycle is repeated. As of writing this post, government fee for filing a first RCE is $600 for a small entity. Government fee for any subsequent RCE is $800 for a small entity.
Instead of an RCE, after a final rejection is issued, Applicant can also file amendments under the After-Final Consideration Pilot Program 2.0 (AFCP 2.0). There is no government fee for filing amendments under the AFCP 2.0. However, this can only be done under a limited circumstances and will be discussed in another post.
As you may have noticed, the government fee needs to be paid at each RCE. Also, attorney legal fee may vary for an office action as there is usually no way to predict in advance the complexity of the rejection listed in an office action. Therefore, to avoid potential issues in future, a good application should have a well written description with as much detail as possible. This will not only help in “fleshing out” your invention, but may also help in reducing the over all cost and time required to obtain a patent (as it can potentially lower the number of office actions issued in your matter).
That is why it is really important to choose a patent attorney or agent who will draft a detailed disclosure of your invention. Needless to say, the longer the disclosure (with more details), the more time is required to prepare the application.
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