Getting a patent can take two or three years after you file your application. This process, which is known as patent prosecution, may become longer and more complicated if your patent faces opposition, or if the U.S. Patent and Trademark Office asks for more information. You can make the process smoother and more efficient by making sure to comply with technical and procedural rules.
During the process of examining a patent, the USPTO examiner will rely not only on patent laws but also on regulations known as the Patent Rules of Practice. Like other federal regulations, the Rules of Practice control how the agency applies the law. The laws and the regulations are contained in the Manual of Patent Examining Procedure. The USPTO examiner will refer regularly to this manual during the process of considering the application. It will provide guidance for virtually any conceivable situation that could arise. You may want to explore the MPEP as well so that you can anticipate an examiner’s response to certain features of your application. It is available on the USPTO website.
Steps in Patent Prosecution
Once the USPTO receives a patent application, it will catalog the application in its records and assign it to an examiner. The examiner will determine whether the claims in the application meet the requirements for patent protection. If the examiner accepts the claims, the patent will be granted. However, an examiner often will reject at least some claims in the first phase of the application.
If the examiner rejects a claim in your application, you can decide whether to abandon the claim and limit the patent to the other claims, or whether you want to try to preserve the claim. This involves amending the claim in response to the notification of rejection. The examiner will consider the amendment and decide whether to accept or reject it.
If everything goes well, the examiner eventually will issue a statement called a Notice of Allowance. This indicates that the claims in the application are eligible for patent protection. If the examiner rejects the application and sends the applicant a final office action, the applicant may be able to appeal the rejection. You can read more here about patent appeals.
Record-keeping can make the process of keeping track of your application much easier. You should keep the receipt and other automatic records related to your application. Applicants who file online will receive an Acknowledgment Receipt, while applicants who file through the mail will receive a stamped return postcard if they provided a postcard with the application.
On the Acknowledgment Receipt, you will find the application number (sometimes called the serial number), the confirmation number, and information about the parts of the application. On the postcard, you will find the date on which the USPTO received the application and the application number. You will need to use this information in any communications with the USPTO regarding your application.
Sometimes an applicant makes a simple mistake, such as forgetting to pay a fee or sign a form. They will receive a deficiency notice from the USPTO that will tell them about the further steps that they need to take to complete the application. The applicant must correct the deficiency and pay any required penalty fees before the application will be considered filed.