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What Happens After I Submit My Patent Application?
Mark Levy

As many thousands of inventors have discovered, getting a patent application prepared and off to the US Patent and Trademark Office (USPTO) marks just the opening act of the great patent dance.

Of all patent applications received by the USPTO, over 90 percent are initially rejected. So getting a rejection the first time around is probably to be expected, or even normal. But knowing what happens to your patent application after you submit it, you'll be better prepared - technically and psychologically - to succeed in the end, as most inventors do.

Following is what to expect.

It's Official: Getting The Receipt

Postcard Receipt

Hopefully you submitted your patent application electronically. A return email is sent to you immediately and includes the date your application was received and its newly assigned application (serial) number.

Official Filing Receipt

Some weeks or months after submitting your application, the USPTO sends you the official filing receipt. It includes filing date, serial number, your name and any co-inventor names, your address, exact title of the application, and the assigned examiner group.

Upon getting the receipt, double-check it. While the USPTO does try to avoid mistakes, they happen. So review the receipt with care and immediately report any errors to the USPTO.

Note: Only when the USPTO receives your patent application do you have the right to use the phrases Patent Pending or Patent Applied For concerning your invention.

Oh, Those Office Actions

After six months to a year, most likely you'll receive what's known as an official action explaining why the USPTO is allowing or rejecting your application. To many, a first action rejecting their beloved invention is devastating. Some inventors are even mistakenly inclined to abandon their inventions without even replying.

Contrary to popular opinion, getting an office action rejecting one or more claims is a good thing! In fact, if you prepared the patent application and it issues the first time through, then have yourself fired. Just kidding. But, my point is you want to have a trial-by-fire negotiation.

Why? Because if your patent is allowed right away, you may never find out how broad your patent claims could have been had you negotiated office actions. By going in with conservative claims that get you a patent right away, you may end up with a patent that is indeed valid, but toothless.

Presuming you've prepared the patent application yourself, you have the right to handle office actions yourself. The trick is taking great care to reply to each USPTO objection and rejection, fix all technical errors, and get as aggressive as you need to while defending your invention on its merits.

Five Classifications of Rejections

Almost all patent application rejections are rooted in any one, or combination, of the following classifications based on Title 35 of the United States Code covering patents:

1) Restriction - This happens when the USPTO asserts you have at least two inventions in one application, which as we know must claim no more than one invention. The USPTO may even say you have three or more inventions, and I've seen as many as 10 inventions cited in one restriction requirement! Typically, the USPTO will ask you which one to proceed with - i.e., which invention you're restricted to - and you'll have the chance to refile divisional applications on the others.

2) Non-patentable subject matter - Includes perpetual motion machines, laws of nature, printed matter. (For more on this, see my previous article, Is My Idea Patentable?)

3) Existing patent or invention - This means the idea's been patented already, or it's appeared in a prior publication at anytime, anyplace in any language. When the examiner uses this, it's sometimes called a 'killer reference,' which by itself can invalidate some or everything you're claiming. If you filed more than one claim, the USPTO may say some are "anticipated under Section 102" and then cite existing patents. Section 102 rejections also cover disclosures or offers for sale made over a year prior to filing the application. Rejections under this section tend to be the most difficult to get around.

4) Obviousness - Probably 80 percent of all rejections fall under this class. What the examiner is saying is it would have been obvious to develop your invention or product had you known about the references cited showing parts of your idea.

However, since examiners must use subjectivity to come to conclusions of obviousness, rejections in this class often can be negotiated away. Lack of motivation is an argument you can make. For example, say it's the year 1901 and you've invented a windshield for the automobile. Then say the Patent Office rejected it with a printed brochure for a living room window. It's obvious, the examiner says, to put that into an automobile. A defense would be there's no motivation for someone to put windshields in cars because in 1901, they go only 3 miles per hour. With no danger of wind or bugs at that speed, there's also no motivation for making an automobile with glass.

Further, if the examiner cites a standard 1900 automobile patent against you, you can also argue there's no suggestion in either the living room window brochure or the automobile patent to combine windows and cars.

5) Inadequate disclosure or improper claims language - A common error the USPTO gets very picky about is incorrect grammar - specifically, antecedent-based language. For example, in our fictitious windshield patent application you ultimately want to state your invention is "an automobile, having four tires, with said glass being disposed in front of the driver." If, however, you never mentioned glass before that clause, you can't write "said glass" as the first reference. Technical problems under this category are relatively easy to correct in your reply.

Enduring the Process

When you're sent an office action, usually you have three months to respond, or one month if it's a restriction requirement. Upon replying the first time, you have about a 50-50 chance of getting your patent allowed. If after responding to their first office action, the examiner's answer is still no, he or she will tell you why in a second office action that will probably be labeled "final." As with the first office action, you have three months to reply.

Even when the USPTO says the action is final, that doesn't mean it is. Following are avenues for appealing USPTO rejections:

Patent Trial and Appeal Board - As your first stop, this Appeals Board will assign three new examiners to review your case. Should the Board find in your favor, your claims must be allowed. However, only a third of all cases heard by this Board reverse the examiner in favor of the inventor.

Court of Appeals for the Federal Circuit (CAFC) - If the Appeal Board upholds the examiner, your next appeal option is going to the CAFC. If the CAFC reverses both the examiner and Appeal Board, then your patent claims must be allowed. However, only a third of the cases making it this far favor the inventor.

U.S. Supreme Court - Should your case be rejected by the examiner, Appeal Board, and the CAFC, your final option is the U.S. Supreme Court. While the high court has made some spectacular reverses on patent law, it actually hears very few patent cases.

When Your Patent Application Flies

No matter how many office actions or appeals you endure, the best outcome is when the USPTO issues your patent. They inform you of this in a "Notice of Allowance" which in effect states your patent claims are valid. Plus it's a chance for them to gently remind you to pay the issue fee ($445 for a micro entity as of this article's publish date).

Sometime after you pay the issue fee, the USPTO will send an "Issue Notification" containing your patent issue date and coveted patent number. After the patent issues, it's just a matter of paying maintenance fees due at 4, 8 and 12 years to keep the patent enforceable during its 20-year lifespan.

Successfully steering an invention all the way to a patent is one reason inventors seem to generate a sense of awe. It takes a certain feistiness to make it happen. If you can invent something from your dream world and see it all the way to a patent in the real world ... well, the sky's no limit.

For more information:

- USPTO Manual of Patent Examining Procedure - www.uspto.gov/web/offices/pac/mpep/index.html
- Patent Trial and Appeal Board, Frequently Asked Questions - www.uspto.gov/ebc/efs_faq.htm
- General patent legislation - www.uspto.gov/web/patents/legis.htm




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