US Patent Process

Provisional Filing in India First Filing in India Request for a foreign filing permit

Filing in US**12 months*

6 weeks

Publishing (18 months)Early publication can be filed

Examination Report Non- final office action- due

within 3 months Final Office Action- due within 2

month

Examiner decision (grant/refusal)

US Patent Process

Was the filing a complete or a provisional?

File the complete specification (12 months)

Provisional

Complete

Important Deadlines

Filing patent application (either no claim of foreign priority or under Paris Convention)

Due within one year from public disclosure, offer for sale, provisional filing date, or foreign priority date under the Paris Convention.

Filing U.S. National Stage patent application (under the national stage of the PCT)

Due within 30 months from the earliest priority date.

Information Disclosure Statement (IDS)1.Generally before mailing of the first Office Action on

the merits 2. Within 3 months from the date the prior art was cited in a corresponding foreign application. 3. At the time of National-Phase filing

AssignmentAt any time during patent application

pendency OR even after issuance.

Certified Priority Document (Assuming application was filed under Paris Convention)

Before patent issues.

Preliminary Amendment Before first Office Action

Response to Notice of Missing Parts Due within two months from the Notice of

Missing Parts. Extension fees can be paid if filed after two months.

Notice of PublicationReceive 18 months from the earliest priority/filing

date.

Response to Election of Species or Restriction Requirement

Due within one month from the Notice. Extension fees can be paid if filed after one month.

Non-final Office Action on the merits No timing. It typically happens approximately 2-

4 years after filing the application.

Amendment or response to Non-final Office Action

Due within 3 months from the Office Action. Extension fees can be paid if filed after 3 months.

File a divisional, continuation, or continuation-in-part application

Must be filed while parent application is still pending (i.e., prior to abandonment or payment of issue fee of the parent application)

Certified Priority Document (Assuming application was filed under Paris Convention)

Before patent issues.

Final Office Action No timing. It typically happens approximately 3-9

months after filing the amendment.

Amendment or response to Final Office ActionPreferably due within 2 months from the date of the

Final Office Action.

File Request for Continued Examination (RCE)Due within 3 months from the Final Office Action

date. Extension fees can be paid if filed after 3 months.

Notice of Allowance; pay issue feeDue within 3 months from the Notice of Allowance.

Timing cannot be extended.

Maintenance FeesMaintenance fees are due at three intervals after

issuance in order to keep the patent active.

3½ years after issuanceDue between 3 and 3½ years after issuance. If

paid between 3½ to 4 years after issuance, then government surcharge is due

7½ years after issuance Due between 7 and 7½ years after issuance. If

paid between 7½ to 8 years after issuance, then government surcharge is due

11½ years after issuanceDue between 11 and 11½ years after issuance. If

paid between 11½ to 12 years after issuance, then government surcharge is due

Important stepsOffice of Initial Patent Examination

This is the first place that a patent application goes to in the U.S. Patent Office.  This office is primarily concerned with reviewing the components of the patent application to ensure that all of the components of the application are completed.  If some component of the application is missing or is improperly prepared, this office will request the proper information or components from the patent applicant.  This office will typically assign the patent a serial number as well.

Art Unit Once the patent application has cleared the

Office of Initial Patent Examination, it is assigned to an art unit depending on the technology the invention is primarily concerned with.  The application is usually assigned to an examiner shortly after being assigned to an art unit.

Patent Examination

One of the first things that an examiner may try to determine is the number of inventions claimed in the application.  By law, a patent can only have one claimed invention.  If the examiner determines that there is really more than one claimed invention in the application, he will request that the inventor restrict the application to only one. When the examiner is satisfied that there is only one invention in each application, he will review the application to determine if the claimed invention is patentable. 

RejectionA patent rejection can mean that the

examiner has found some reference that he feels describes the claims of the patent application. 

Sometimes only a few of the claims will be rejected while other claims are allowed by the examiner. The only way out is amending the claims or persuasively arguing with the examiner. 

.

If the examiner does not accept the amendments or arguments, he may issue a final rejection on the case. The inventor still has several options :1) file another application depending from (meaning linked to) the old application and try to present the invention in such a way that the examiner will allow the application; 2) amend the claims or argue with the examiner again, but if the examiner still doesn’t accept the inventor’s position the application will become abandoned; 3) agree with the examiner and give up on the patent application or 4) file a request and a fee to keep the examination going. 

Notice of allowancePatents give inventors the exclusive right to

make, use or sell their invention for 20 years after the patent is approved. When the U.S. Patent Office issues a notice of allowance for a patent, it means that the government has decided your patent is a genuinely new invention and intends to grants you a patent.Issue fees are drew generally within three months of the Notice of Allowance.

Information disclosure statement

An information disclosure statement (often abbreviated as IDS) refers to a submission of relevant background art or information to the United States Patent and Trademark Office (USPTO) by an applicant for a patent during the patent prosecution process. There is a duty on all patent applicants to disclose prior art or background information that may be relevant to the patentability of the applicant's invention

Advisory ActionAfter filing a response to a final office action, the

examiner may issue an advisory action that either continues the rejection or hopefully indicates agreement to allow some or all of the claims (if all the claims will be allowed, a notice of allowability will issue instead).

Request for Continued Examination (RCE)A request for continued examination (RCE) is a

request by an inventor for continued prosecution after the patent office has issued a "final" rejection. An RCE is not considered a continuing patent application - rather, prosecution of the pending application is reopened. The inventor pays an additional filing fee and continues to argue his case with the patent examiner.

Apply to utility or plant applications filed (a) on or after June 8, 1995, or international applications filed. The request for continued examination provisions do not apply to: (1) a provisional application; (2) an application for a utility or plant patent (a) before June 8, 1995; (3) an international application (4) an application for a design patent; or (5) a patent under re-examination.

An applicant may obtain continued examination of an application by filing a submission and the fee set forth in 37 CFR 1.17(e) prior to the earliest of: (1) the date a patent is granted (but after payment of the issue fee only if a petition under 37 CFR 1.313 is granted); (2) abandonment of the application; or (3) the date applicant seeks court review of a decision by the Board of Patent Appeals and Interferences (unless the court action is terminated).

An applicant cannot request continued examination of an application until after the prosecution in the application is closed.

Notice of allowanceIf, on examination, it appears that the applicant is

entitled to a patent under the law, a notice of allowance will be sent to the applicant. The notice of allowance shall specify a sum constituting the issue fee which must be paid within three months from the date of mailing of the notice of allowance to avoid abandonment of the application. The sum specified in the notice of allowance may also include the publication fee, in which case the issue fee and publication fee must both be paid within three months from the date of mailing of the notice of allowance to avoid abandonment of the application. This three-month period is not extendable.

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