Michael J. Foycik Jr., Esq.

One of the important but little-discussed subjects for inventors is what happens after filing of a Utility Patent Application.  Here's a brief guide.

Initially, the US Patent Office studies the application papers for formalities.  These formalities include such things as the signed forms, whether the drawings are sufficiently formal, whether specification required information is provided, and so on.  If any problems are found, a Notice is sent to the applicant, and a period for response may be set for those problems that can be corrected.  

The next stage is the patent examination itself.  This is where the patent examiner takes up the application for study.  Usually the patent examiner is an expert in the subject matter of the application.  The examiner will search the prior patent art, including patent publications, to locate the most relevant references to the invention as described in the claims.  The result of this will be a first Office Action, which is usually a statement of objections and rejections, but can sometimes be a first action allowance.

The applicant can respond to the first Office Action, and is normally given a set period of time to do this.  The response can include changes to the specification, drawings, and/or claims.  Such changes are usually to overcome objections and/or rejections, and to further emphasize the novel features of the invention.  Additionally, the applicant can provide remarks in support of patentability.

Of course, many other things might occur beyond those described above.  Those are less common, and though important, are not discussed in detail herein for the sake of brevity.  A short and incomplete listing is: restriction requirements, election requirements, statutory double patenting rejections, and/or non-statutory subject matter rejections.

Following the applicant's above-mentioned response, the patent examiner can either allow the application, or issue a further rejection.  The further rejection is usually a “final” rejection, but the applicant can still respond within a set period of time.  The difference is, the examiner does not have to examine the response but can optionally do so, typically in order to allow to application. 

If the application is allowed, the patent office will send a Notice of Allowance and Issue Fee Due.  The Issue Fee due can vary greatly depending on the type of entity and other factors, but typically is higher in amount that the original filing fee.  Once that Issue Fee is paid, the application should issue a few months later as a U.S. Patent. 

If the application is not allowed, and is under a final rejection, there are still ways to continue.  One is by filing of an Appeal, and the other is by filing of a continuation application or a continuation-in-part application.  Those merit their own articles, and I plan to discuss them in greater detail in future articles.