What happens after you file a patent application?

After filing a patent application, entrepreneurs often ask “what happens now?”  This phase of the patent application process is called the “prosecution phase.” The typical steps that occur in the prosecution phase include:

1. Receive an Office Action. 

After filing, the patent application will go into a queue at the USPTO and will be assigned to a patent examiner.  The patent application will typically be formally examined about 1-1.5 years after the filing date.  The patent examiner will perform their own patent search to identify the closest patents that they can find.  Thereafter, in a majority of the applications, the patent examiner will draft an Office Action document which initially rejects the claims of the patent application based on the closest patents.  The USPTO will notify the patent attorney of the Office Action, who then notifies the inventor of the Office Action.

2. Respond to the Office Action. 

The Office Action will typically require a response document be filed within 3-months from the mailing date of the Office Action.  The patent attorney can review the Office Action and prepare the response document that responds to the examiner’s rejections.  In the response document, the claims are often amended such that the claims recite subject matter that is not taught by the patents cited by the patent examiner.  Further, arguments are submitted that explain why the claims should be allowed over the cited patents.  The patent attorney will forward the response document to the inventor for their review and feedback.  After receiving the inventor’s authorization to file the response document, the patent attorney will do so and will then forward the filed response document to the inventor for their records.

3. Receive a Notice of Allowance. 

If the patent examiner agrees that the claims recite subject matter that is not taught or suggested by the cited patents, the examiner can issue a Notice of Allowance.  The Notice of Allowance indicates that the pending claims are allowable over the cited patents.  The USPTO will notify the patent attorney of the Notice of Allowance, who then notifies the inventor of the Notice of Allowance.

4. File issue fee transmittal.

The Notice of Allowance will require an issue fee transmittal be filed within three months of the Notice of Allowance mailing date.  The patent attorney can prepare and file the issue fee transmittal and pay the required USPTO issue fee.  Further, the patent attorney will forward the filed issue fee transmittal to the inventor for their records.

5. Receive issued patent. 

After the issue fee transmittal is filed and the USPTO issue fee is paid, the USPTO will typically issue a patent within 1-2 months.  The USPTO will notify the patent attorney that the patent has been issued.  Afterward, the patent attorney will forward the issued patent to the inventor for their records.

As one can see, there are several steps in the prosecution phase of a patent application. Also, you have a much higher probability of obtaining an issued patent if the prosecution phase is handled by an experienced patent attorney.

If you have a product that you are interested in protecting, please contact us at 248-853-1422.