Once you file a patent application, you can claim that you have a patent pending on your invention. You will generally get a filing receipt with a serial number for your patent application. One important thing to note with the filing receipt is your license to file a foreign patent application, which can be important if filing a PCT or an international patent application is part of your plan.
The USPTO will generally review your patent application for completeness. If anything is missing, the USPTO may send you a notice to file missing parts or a notice of omitted items. Common things that may be missed include declarations or oaths of inventorship, certain pages of the patent application, drawings, or certain fees that have not been paid.
Once the missing items are provided, the patent application waits in line for its turn to be examined. Typically, it takes about two and a half to three years to hear from the USPTO, unless the application qualifies for accelerated examination or the application is submitted under the fast track examination program.
The application may be scheduled to be published 18 months from the filing of the application or from the filing of the first patent application, such as a parent application or a provisional application.
Once the examiner examines the application, the examiner’s decision is typically reported on a correspondence to the applicant called a “non-final office action.” The non-final office action will typically list the claims that are pending and indicate which of the claims have been allowed or approved, if any, and which of the claims have been rejected. Most of the time, patent claims are rejected in the first round of examination.
The applicant will be given three months from the mailing date of the non-final office action to respond. The applicant may be given to up to three months’ extension to respond, but the applicant has to pay extension of time fees when the response is submitted. The applicant has to address every rejection either by making changes to the rejected claims, by providing legal arguments why the rejection is not valid, or both.
After the applicant responds to the non-final office action, the examiner goes through the applicant’s response and determines whether the applicant has overcome the rejections. If the examiner is not convinced with the applicant’s response, the Examiner will issue a final office action.
The applicant will again be given three months from the mailing date of the final office action to respond. The deadline can be extended up to three months with the payment extension of time fees. The examiner may give an advisory opinion indicating whether the applicant’s response to the final office action has overcome all the rejections. If any of the rejections have not been overcome, the applicant can file an appeal or a request for continued examination. By filing a request for continued examination, the applicant may get one or more rounds of examination.