What Happens After I File a Patent Application?

The period of time after filing a patent application is called Patent Prosecution. This is the time that your attorney (on your behalf) negotiates with an Examiner at the U.S. Patent Office. 

After a patent application is filed, it waits to be examined by the Patent Examiner, who is a technical content expert but not an attorney. The Patent Examiner does a patent search to see if anything predating your filing date is the same thing as the technology described in the written out patent claims in the application (novelty) or if any combination of references found discloses all of the elements described in the claims (obviousness). The Examiner will also determine whether the application is claiming technology that can be patented in the first place (statutory subject matter).

After the Patent Examiner reviews the art (references), 95% of the time he or she will reject one or more claims in an Office Action, which are the numbered paragraphs at the end of a patent document that describe what we intend to keep other companies from copying. This high rate of initial rejection is the product of various factors, the largest being simply that the Examiners get the same credit whether they say yes or no, but saying no is safer than saying yes. This rejection does not mean you will not get a patent, but it simply is an invitation to start negotiating.

We (your attorneys) then will review the arguments made by the Examiner in the Office Action and the art (or references), and send you a letter outlining our position and how we recommend we begin the negotiation and the estimated cost to prepare the response along with a copy of the Office Action. You would then authorize us to proceed or not at that point. 

How long the back and forth negotiation process will take with the Examiner is difficult to predict because we cannot presently know what the Examiner will choose to cite in rejection, nor the character of the Examiner we will be dealing with. Some Examiners are more difficult to work with than others. There is usually not much typically gained in dragging the process out much more beyond 2-3 responses because by then usually we either have an agreement with the Examiner or an indication it is time to go over the Examiner’s head and appeal.

When we reach an agreement with the Examiner, a notice of allowance of your application is issued and we then need to pay an issue fee after which the patent is granted. Maintenance fees are then due 3.5 years, 7.5 years, and 11.5 years after the issue date of the patent. The cost of the maintenance fees are set by the USPTO and may be updated yearly. Following payment of the 11.5-year fee, the patent then lasts until approximately 20 years from the filing date of the non-provisional application.